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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION Christian Dior Couture v. Carl Lim Case No. D2008-1038
1. The Parties The Complainant is Christian Dior Couture, Paris, France, represented by Cabinet Marc Sabatier, France. The Respondent is Carl Lim, Minnesota, United States of America.
2. The Domain Name and Registrar The disputed domain name <dior-bag.com> is registered with GoDaddy.com, Inc.
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2008. On July 10, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 10, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 8, 2008. The Center appointed Petter Rindforth as the sole panelist in this matter on August 14, 2008. 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. The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background The Complainant is the owner of the following trademarks: - International trademark DIOR No. 313 176 filed on May 13, 1966, in classes 14, 18, 23, 24, 25 and 26, inter alia, for bags - United States of America trademark DIOR No. 1 923 564 registered on October 3, 1995, in classes 14 and 18, for inter alia, bags - International trademark DIOR No 951 058 filed on August 24, 2007, in classes 9 and 38. This trademark designates the United States of America and spectacles and sunglasses in class 9 Copies of Certificates of registrations and printouts from the official trademark databases are provided as Annex 4 of the Complaint. A further list of the Complainant’s trademark registrations is provided as Annex 3 of the Complaint. The Complainant is also the holder of a number of domain name registrations, such as <dior-watches.com>, <dior-sunglasses.com>, and <diorbags.com>, registered prior to the disputed domain name. The disputed domain name was registered on September 28, 2005. No detailed information is provided about the Respondent’s business activities, apart from what is mentioned below by the Complainant.
5. Parties’ Contentions A. Complainant The Complainant states that <dior-bag.com> is composed with the Complainant’s trademark DIOR, registered by the Complainant all over the world (Annexes 3 and 4 of the Complaint) for – among other goods – hand bags and leather goods. The Complainant also points out the similarities between the Respondent’s domain name <dior-bag.com> and the Complainant’s domain name <diorbags.com>. The Complainant argues that it has a reputation throughout the world of fashion, and refers to previous UDRP decisions. The Complainant concludes that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that the public could believe that <dior-bag.com> belongs to the Complainant. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the domain name, as the Respondent has no license, contract or other authorization to register and use <dior-bag.com>, and the Respondent is not commonly known under the domain name. Finally, the Complainant states that the Respondent both registered and has used the disputed domain name in bad faith. The Complainant informs that it sent a warning letter to Respondent, without any reply. According to the Complainant, the trademark DIOR is so well-known throughout the world, that it is impossible to be ignorant about its existence. The disputed domain name is active and resolves to a website with presentations of the Complainant’s products and photos from DIOR fashion shows (printouts from the Respondent’s website provided as Annex 7 of the Complaint). The fact that the Respondent mentions at the website that he is not affiliated with the Complainant is of no importance since the site is selling the Complainant’s goods and the Respondent is obviously trying to take advantage of the goodwill of the Complainant which also creates a likelihood of confusion for the public. B. Respondent The Respondent did not file a Response or otherwise reply to the Complainant’s contentions.
6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove each of the following: (i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has established rights in the DIOR trademark in the United States of America and internationally. The relevant part of the disputed domain name for purposes of confusing similarity is “dior-bag”. This term consists of the Complainant’s trademark DIOR with the addition of the generic (in this context) word “bag”. As stated in many UDRP cases, the addition of a generic term does not necessarily distinguish a domain name from a trademark. The generic word may even add to the confusing similarity (see Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627, holding that “[t]he addition of the generic term ‘online’ … is not a distinguishing feature. In fact, in this case it seems to increase the likelihood of confusion because it is an apt term for Complainant’s online business”). In the present case, the word “bag” refers directly to one specific product of the Complainant. Accordingly, the Panel finds that the domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests The Respondent is apparently not an authorized agent or licensee of the Complainant and has no other permission from the Complainant to apply for any domain name incorporating the trademark DIOR. By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the domain name. The Respondent is using the domain name for a website selling presumably original products from the Complainant. However, the collateral trademark uses necessary to allow reselling, after market sale, customer support, etc., in connection with the Complainant’s products does not confer the right to use the trademark as a domain name without permission from the trademark owner (see Motorola Inc. v. NewGate Internet Inc., WIPO Case No. D2000-0079, holding that “The use of a mark as a domain name clearly goes further than what is required merely to resell products”). Moreover, the Panel notes that the Respondent also uses the website for commercial aims other than selling the Complainant’s goods and services, as there are images of and links to the Complainant’s competitors such as Prada and Gucci. Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name. C. Registered and Used in Bad Faith Although not supported by extensive evidence, the Complainant states that the DIOR mark is well-known. The Panel has no reason to doubt this, at least for Europe and the United States of America (the country of the Respondent). The evidence points clearly to the conclusion that Respondent not only had knowledge of the Complainant’s mark at the time of registration of the disputed domain name, but also registered the same with the Complainant in mind. The domain name consists of the Complainant’s trademark and a contextually generic word closely connected to the Complainant’s products. The disputed domain name is also almost identical to the <diorbags.com> domain name of the Complainant. The Panel concludes that the Respondent added the generic word “bag”, not in order to make a difference, but rather as a deliberate attempt to create a likelihood of confusion with the Complainant’s mark and services as to the source, sponsorship, affiliation, or endorsement of the website connected with the domain name. The domain name is used for a website selling the Complainant’s products, but also contains links to fashion goods produced by the Complainant’s competitors. It is the opinion of this Panel that the only intention of the Respondent in registering and using the domain name was, and is, to attract Internet users to the Respondent’s commercial website by using the goodwill connected to the Complainant’s trademark. Thus, the Panel concludes that the domain name was both registered and is being used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy.
7. Decision For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <dior-bag.com> be transferred to the Complainant. Petter Rindforth Dated: August 28, 2008
: https://internet-law.ru/intlaw/udrp/2008/d2008-1038.html
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