WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Graff Diamonds Limited v. Fariborz Saba

Case No. D2016-1143

1. The Parties

Complainant is Graff Diamonds Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), internally-represented.

Respondent is Fariborz Saba of Vernon, Canada.

2. The Domain Names and Registrar

The disputed domain names <graff-perfume.com> (the “Domain Name”) and <graff-perfume.net> (the “Additional Domain Name”) are registered with GoDaddy.com, LLC (the “Registrar”). Collectively, <graff-perfume.com> and <graff-perfume.net> are referred to herein as the “Domain Names”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2016. On June 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 9, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 12, 2016.

On July 12, 2016, counsel for Complainant sent an email to the Center requesting permission to add the Additional Domain Name to the proceeding, alleging that Respondent had transferred website content to the Additional Domain Name website. The Center replied to Complainant by email on July 12, 2016, acknowledging receipt of the message, copied to Respondent, alerting both parties that post-commencement amendments are not provided for in the Rules and that the amendment was subject to approval or rejection at the Panel’s discretion.

The Center appointed John C McElwaine as the sole panelist in this matter on July 15, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On July 15, 2016, the Center forwarded by email Complainant’s email request to the Panel. On July 22, 2016, the Panel issued Procedural Order No. 1, granting Complainant’s request to add the Additional Domain Name to this proceeding. The Order:

(i) requested the Center to obtain registrar verification for the Additional Domain Name from the concerned Registrar;

(ii) following registrar verification, requested the Center to notify Respondent that the Additional Domain Name had been added to the proceeding;

(iii) provided Respondent with an additional seven days to communicate whether it intended to make a Further Response in relation to the Additional Domain Name;

(iv) explained that if Respondent timely communicated intent to provide a Further Response in relation to the Additional Domain Name, the Panel would allow Respondent an additional twenty days from the issuance of the Order to provide a Further Response, and the Panel’s decision would be issued within ten days of receipt of the Further Response or the date the Further Response was due;

(v) explained that if Respondent did not timely communicate intent to provide a Further Response, the Panel would issue its decision within fourteen days of the issuance of Order; and

(vi) specified that any Further Response should only relate to the Additional Domain Name and not to the Domain Name involved in the proceeding.

On July 22, 2016, the Center provided the Panel with registrar verification for the Additional Domain Name from the Registrar confirming the Additional Domain Name was registered to Respondent. On July 22, 2016, the Center notified Respondent that the Additional Domain Name had been added to the proceeding.

The Panel’s decision to accept the amendment to include the Additional Domain Name, <graff-perfume.net>, was based on consideration of the following:

The Rules do not expressly provide for an amendment of this nature following the commencement of proceedings. However, when complainants have made such requests prior to Panel appointment, Panels have typically granted the requests. See Société Air France v. Spiral Matrix, WIPO Case No. D2005-1337 (granting Complainant’s request to add a domain name, when the request was made by email nearly two weeks prior to appointment, and issuing a procedural order requiring complainant to immediately amend the complaint, obtain registrar verification, and extending another twenty-day period to the respondent to reply); A & F Trademark, Inc, Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc., WIPO Case No. D2003-0172 (allowing the amendment of the Complaint to include an additional domain name after the filing of the Complaint); but see Department of Management Services, State of Florida v. Digi Real Estate Foundation, WIPO Case No. D2007-0547 (denying a request to amend after a Panel has been appointed for reasons of procedural equality); Archipelago Holdings LLC, v. Creative Genius Domain Sales, WIPO Case No. D2001-0729 (denying a request to amend because of the procedural delay such amendment would entail, but suggesting that earlier requests to amend might be granted); Société Air France v. Kristin Hirsch, Hirsch Company, WIPO Case No. D2008-1213 (adopting the reasoning of earlier courts and denying a request to amend that was received after Panel appointment).

Here, Complainant requested to amend its Complaint prior to the appointment of the Panel. Further, the Panel, upon considering the request, required the Center to provide identification of the registrant of the Additional Domain Name and notify the registrar of the dispute. Once Respondent was affirmatively identified as the registrant of the Additional Domain Name, the Panel notified Respondent by Order that it had an additional seven days to communicate a desire to submit a response to the Amended Complaint. However, despite the notice, Respondent did not communicate such a desire to the Panel, and the Panel, satisfied that procedural fairness had been served, opted to move forward and issue a decision on the merits of this proceeding concerning the Domain Names.

4. Factual Background

The Domain Name, <graff-perfume.com>, was registered by Respondent on June 27, 2015, and is hosted by Ravand Host. The Additional Domain Name, <graff-perfume.net>, was registered by Respondent on June 18, 2016, and is hosted by the same company. Respondent’s email indicated in the WhoIs for both Domain Names is also hosted by Ravand Host.

Complainant is a company incorporated in the United Kingdom, and is engaged in business internationally with offices in London and New York. Complainant is involved in the manufacture and distribution of jewelry, watches, and perfume throughout Europe, Africa, the United States of America, and Canada.

Complainant is the owner of the trademark GRAFF (the “GRAFF Mark”) in a number of classes, in a wide range of jurisdictions. Most relevant to this matter is Complainant’s International Registration of GRAFF in Class 03, registration number 1038541, registered on April 19, 2010. Additionally, a stylized mark GRAFF, written in all capitals in a wide-set font and underscored, is pending registration in Class 14 in Canada, application number 1,654,180.

Complainant provided annexes in its Complaint that included images of the website located at the Domain Name. Further, a website located at the Additional Domain Name was accessible at the time of this decision. Both websites appeared to be identical in design and function. Each was headlined by Complainant’s GRAFF Mark and included a professional advertisement-style image of Complainant’s perfume “Amber”, an advertorial description of “Amber”, and links to further images of Complainant’s perfume and prices.

5. Parties’ Contentions

A. Complainant

Regarding the first element of the Policy, Complainant contends that the Domain Names are confusingly similar to Complainant’s established GRAFF Mark. Complainant asserts that the Domain Names include Complainant’s GRAFF Mark and are making unlawful use of the GRAFF Mark in the content of the website. Complainant further asserts that the unlawful nature of Respondent’s use is exacerbated by Respondent’s alleged bad faith.

With respect to the second element of the Policy, Complainant asserts that Respondent has no connection whatsoever to Complainant’s business. Complainant further contends there is no evidence of Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in a bona fide offering of goods or services.

Finally, addressing the third element of the Policy, Complainant argues that the disputed Domain Names are being used in bad faith by Respondent. Complainant asserts that Respondent in this dispute is the same as in Graff Diamonds Limited v. Mohammad Afzali, Ravand Host, Ravand Dadeh Pardaz Co., WIPO Case No. D2015-0148, and is continuing bad faith efforts to obtain commercial gain by impersonating Complainant. To prove this theory, Complainant draws attention to the shared server, Respondent’s email address at the same server, and images “lifted” from the websites linked to earlier disputed domain names and used as the websites at the Domain Names before the Panel. Complainant asserts that Respondent is acting in bad faith by continuing to impersonate Complainant with the purpose of disrupting and/or distracting from Complainant’s business and intentionally attempting to attract Internet users to Respondent’s website for commercial gain by way of such impersonation.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Despite Respondent’s default, paragraph 4(a) of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with actual evidence demonstrating:

(i) The Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) The Domain Names have been registered and are being used in bad faith

Because of Respondent’s default, the Panel may accept as true the factual allegations stated within the Complaint, from which the Panel may draw appropriate inferences. See St. Tropez Acquisition Co. Limited. v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.

I. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.

Here, there is no question that Complainant owns the registered GRAFF Mark or that the Domain Names contain the GRAFF Mark. Further, the addition of the word “perfume” to the Domain Names does not serve to distinguish Respondent’s use of the GRAFF Mark, particularly because Complainant is widely-known to manufacture and sell perfume. See Graff Diamonds Limited v. Mohammed Afzali, Ravand Host, Ravand Dadeh Pardaz Co., supra.

Also, the addition of the generic Top-Level Domain (“gTLD”) “.com” or “.net” to a domain name typically does not avoid confusing similarity (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Thus, the gTLD “.com” or “.net” is without legal significance since use of a gTLD is technically required to operate the Domain Names.

Therefore, the Panel finds that Complainant has met its burden of showing that the Domain Names are confusingly similar to Complainant’s GRAFF Mark.

II. Rights or Legitimate Interests

Under the Policy paragraph 4(a)(ii), a complainant has the burden of establishing that a respondent has no right or legitimate interests in the disputed domain name. Complainant needs to make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the disputed Domain Names. If respondent fails to do so, Complainant can be deemed to have satisfied this burden under Policy paragraph 4(a)(ii). See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a/ Cupcake Party, WIPO Case No. D2000-1415.

Complainant contends that Respondent has no connection whatsoever to Complainant’s business and, therefore, Respondent can present no evidence of Respondent’s use of the Domain Names in connection with a bona fide offering of goods or services. Although properly notified by the Center, Respondent failed to submit any responses on this point to either Domain Name. The silence of Respondent may support a finding that it has no rights or legitimate interests in respect of the disputed domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-1017; Nordstrom, Inc. & NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.

Under paragraph 4(c) of the Policy, a respondent’s rights or legitimate interests to a domain name may be established by demonstrating any of the following three conditions: (i) before any notice to respondent of the dispute, respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel finds that Respondent has failed to show rights or legitimate interests generally, and also under any of the three conditions.

Under paragraph 4(c)(i) of the Policy, a panel may find that a respondent has rights or legitimate interests in a disputed domain name if the circumstances suggest that before any notice to it of the dispute, the respondent has used, or made demonstrable preparations to use, the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services. Although Respondent did not file a response, Complainant has established that Respondent has been using the Domain Names in connection with a website that, without any authorization or affiliation, purports to advertise Complainant’s branded products. If this use amounted to a bona fide offering of services pre-dating notice to Respondent of the dispute, then Complainant’s Complaint will fail under the second element of the Policy.

To address the issue of bona fide use, the Panel notes that the requirements set forth in Oki Data America, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”) may be analagous or instructive in its analysis for this case. Oki Data instructs that to be considered bona fide use, the offering must meet several requirements, including the following:

- Respondent must actually be offering the goods or services at issue;

- Respondent must use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;

- Respondent must take steps to prevent confusion by making clear in its use of the domain name that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant’s relationship with the trademark owner; i.e., it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, or that it is an authorized or exclusive agent; and

- Respondent does not corner the market in all domain names or deprive the trademark owner of reflecting its own mark in a domain name.

In this case, there is no evidence that Respondent is offering products of other third-parties from the website located at the Domain Names. With respect to Respondent actually offering GRAFF branded products, Complainant alleges only that Respondent has no connection whatsoever with the business of Complainant. The Panel finds that Respondent is not offering GRAFF branded products for sale and is only presenting images to make it pass-off the source of the website as being sponsored by or related to Complainant.

Moreover, Respondent has clearly not taken steps to prevent confusion by making clear in its use of the Domain Names that it is not the trademark owner. In fact, Respondent has created a website that is likely to cause confusion as to the source of the website. In particular, the websites at the Domain Names prominently displays a large version of the GRAFF Mark, along with images of Complaint’s perfume products. Such use cannot be deemed bona fide under the Policy.

In addition, Respondent failed to put forth any evidence that it is currently or ever was commonly known by the name reflected in the Domain Names as to establish a legitimate interest in the Domain Names under paragraph 4(c)(ii) of the Policy. When Respondent registered the Domain Name on June 27, 2015, Complainant had established rights in the GRAFF Mark. Additionally, Respondent’s clear knowledge of Complainant’s Mark, illustrated by Respondent’s use of Complainant’s actual products, offices, advertising photography, and price list, shows Respondent’s intent to capitalize from the use of the good will of Complainant’s Mark.

Lastly, Respondent is not making a legitimate noncommercial or fair use of the Domain Names under paragraph 4(c)(iii). Respondent is clearly impersonating Complainant to some unseen end.

Some panels have determined that the use of a domain name for a noncommercial purpose may be legitimate if such use does not materially obstruct access to a complainant’s website or confuse the public about the website of the trademark holder. Id. (citing Equality Charter School, Inc. v. Mona Davids / A Happy DreamHost Customer, WIPO Case No. D2011-1226 (citing, inter alia, Chelsea and Westminster Hospital NHS Foundation Trust v. Frank Redmond, WIPO Case No. D2007-1379; Wal-Mart Stores, Inc. v. Domains by Proxy, LLC / UFCW International Union, WIPO Case No. D2013-1304). Here, any reasonable Internet user reviewing either disputed Domain Name would likely interpret the website as being related to Complainant. Therefore, Respondent’s conduct poses a risk of confusing the public about the website of Complainant. Thus, Respondent’s use of Complainant’s Mark does not constitute fair use, and paragraph 4(c)(iii) is not applicable.

Accordingly, Complainant has made a prima facie showing of Respondent’s lack of any right or legitimate interest and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

III. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent has registered and is using the Domain Names in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.

Paragraph 4(b)(iv) of the Policy specifies that bad faith exists where a respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

Here, the Domain Names were registered with the Complainant in mind and used to direct users to a gallery of images displaying various professional photographs of Complainant’s “Amber” perfume, and a page displaying the price of the perfume. As noted in Graff Diamonds Limited v. Mohammed Afzali, Ravand Host, Ravand Dadeh Pardaz Co., supra,

“[t]he only reasonable assumption is that the Respondent has done this purely for the purpose of causing Internet users to conclude that by interacting with the Respondent’s website they are in fact interacting with a website of, or intimately associated with, the Complainant. The only conceivable reason for engaging in such behavior is to obtain some commercial advantage and/or disrupt the business of the Complainant. Furthermore, it is apparent that at the time of registering the disputed domain names that the Respondent was aware of the Complainant’s trademark and its reputation and can only have been motivated to register the disputed domain names for the purpose of appropriating the benefit of the Complainant’s reputation.”

This Panel agrees with and adopts the reasoning of the Panel in Graff Diamonds Limited v. Mohammed Afzali, Ravand Host, Ravand Dadeh Pardaz Co., supra. Therefore, the Panel finds that Respondent’s registration and use of the Domain Names was in bad faith as delineated by paragraph 4(b)(iv) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed Domain Names, <graff-perfume.com> and <graff-perfume.net>, be transferred to Complainant.

John C McElwaine
Sole Panelist
Date: August 5, 2016