WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Loris Azzaro BV v. Joao Jose Vasconcellos Jr

Case No. D2013-1780

1. The Parties

The Complainant is Loris Azzaro BV of Apeldoorn, Netherlands, represented by Tmark Conseils, France.

The Respondent is Joao Jose Vasconcellos Jr of Rio de Janeiro, Brazil.

2. The Domain Name and Registrar

The disputed domain name <azzaro.com> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2013. On October 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 21, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

As discussed at Section 4 below, this case involves the refiling of a previous complaint, the decision of which is recorded in Loris Azzaro BV, SARL v. Asterix and Mr De Vasconcellos, WIPO Case No. D2000-0608. On October 17, 2013, the Center emailed the Complainant, advising that the Complaint had been preliminarily accepted “on grounds that, prima facie, the refilling complainant has pleaded grounds which might justify entertaining the Complaint as a Refiled Complaint”. The Center advised that this preliminary determination was “expressly subject to any determination that the independent Panel may make on the issue of refiling”.

On October 25, 2013, the Center sent an email communication to the Complainant requesting it to confirm that a copy of the Complaint, including any annexes, together with the cover sheet, has been sent or transmitted to the Respondent as required by the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), paragraph 3(b)(xii). The Complainant confirmed this and filed an amended Complaint on October 31, 2013.

The Center verified that the Complaint together with the amended 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2013.

The Center appointed John Swinson as the sole panelist in this matter on December 2, 2013. 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.

4. Preliminary Matters

A. Decision in the first complaint: Loris Azzaro BV, SARL v. Asterix and Mr. De Vasconcellos, WIPO Case No. D2000-0608

In a decision dated September 4, 2000, the prior panel denied the complaint on the basis that there was not sufficient evidence before the prior panel in relation to bad faith use or registration. At the time of the prior complaint, the Disputed Domain Name resolved to a website that was “under construction”.

The panel held that the Complainant’s evidence was insufficient to clearly establish that the Respondent registered and was using the Disputed Domain Name in bad faith. Specifically, it found that the Complainant did not provide evidence to support the following assertions:

- the Respondent registered the Disputed Domain Name for the purpose of disrupting the Complainant’s business;

- the Respondent registered the Disputed Domain Name in order to prevent the Complainant from reflecting its Trade Mark in a corresponding domain name (there was no evidence of a pattern of such conduct); and

- the Respondent had intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of their website or location or of a product or service on their website or location (the Respondent was not commercially exploiting the Disputed Domain Name).

The panel in that decision concluded: “In light of the foregoing, the Administrative Panel decides that the Domain Name “azzaro.com” registered by Respondents is identical to the trademark of Complainant, that Respondents have no right or legitimate interest in respect of the Domain Name, but that Respondents’ Domain Name may not have been registered and may not be being used in bad faith.”

B. Rehearing of complaint

In its amended Complaint, the Complainant submitted that the Respondent in the current administrative proceeding is different from the respondents in the original complaint, and therefore the Complaint should not be considered a “refiled complaint”.

The Respondents in the original complaint were “Asterix and Mr De Vasconcellos”. The Respondent here is Joao Jose Vasconcellos Jr. The contact details for the Respondent “Mr De Vasconcellos” in the original complaint were as follows:

De Vasconcellos Jr, Joao Jose Personnal

Av Sernambetiba 3600 Bl 5 Apto 1602

Rio de Janeiro, RJ 22630-010

BR

Phone: 55 21 491 7035

Fax: 55 21 491 7035

Email: [email protected]

[email protected]

Accordingly, the Panel infers that “Mr De Vasconcellos” in the original complaint may be the same person as the Respondent to this Complaint, and that he has simply chosen to exclude his middle names from the details he provided to the Registrar.

Since the decision outlined at Section 4(A) above, there have been changes to the content of the website at the Disputed Domain Name. It now contains links to various websites that advertise and sell perfumes and cosmetics. Further, the Respondent has changed his registration details (the registrant is listed as “Personal”), making it difficult to determine his identity.

A “refiled complaint” is “a complaint respecting a domain name that was the subject of a previous UDRP complaint involving the same complainant and respondent who are involved in the subsequently filed complaint” (see The Trustees of the University of Pennsylvania v. Moniker Privacy Services, Motherboards.com, WIPO Case No. D2007-0757 and cases cited therein). Previous UDRP panels have held that a refiled complaint may only be allowed in “exceptional circumstances” (see, e.g.,Grove Broadcasting Co. Ltd.v. Telesystems Communications Limited, WIPO Case No. D2000-0703 and Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490). Panels have drawn a distinction between refiled complaints relating to (a) acts forming the basis of the original complaint and (b) acts occurring after to the decision on the original complaint. Here, the Complaint falls within the latter category. The Complainant argues that the Complaint should be accepted based on the change in the content of the Respondent’s website, and the steps the Respondent took to “cover his identity”.

The principles to apply when determining whether to accept a refiled complaint are outlined in The Trustees of the University of Pennsylvania v. Moniker Privacy Services, Motherboards.com, WIPO Case No. D2007-0757. They are as follows:

(i) the burden of establishing whether the refiled complaint should be accepted rests on the refiling complainant;

(ii) the refiling complainant’s burden is high; and

(iii) the grounds that allegedly justify acceptance of the refiled complaint should be clearly identified by the refiling complainant.

Where the refiled complaint concerns acts occurring after the original complaint and decision, the complainant must prove that the “refiled complaint constitutes a ‘new truly action’ under the Policy, and not just an application for readjudication of the previous complaint” (see The Trustees of the University of Pennsylvania v. Moniker Privacy Services, Motherboards.com, WIPO Case No. D2007-0757). Accordingly, the Complainant must independently prove all the elements of paragraph 4(a) of the Policy.

In this case, the new facts and circumstances outlined in the Complaint are relevant to the issue of the Respondent’s bad faith use of the Disputed Domain Name. As such, the Panel finds that the Complaint can be considered a “truly new action”. Moreover, a significant period of time has elapsed since the original complaint was filed, and the Respondent has made no submissions that this Complaint should not be considered accepted, and these are also factors that this Panel considers to be relevant to this issue. In view of the above, the Panel accepts the Complaint.

5. Factual Background

The Complainant is the company Loris Azzaro BV of the Netherlands. The Complainant is a world leader in the perfume field.

The Complainant owns numerous registered trade marks for “Azzaro”, or incorporating “Azzaro”, including the following:

- French registration for AZZARO (Registration No. 1347241), registered June 17, 1976;

- International registration for AZZARO (Registration No. 431801), registered August 9, 1977; and

- Brazilian registration for AZZARO (Registration No. 006827900), registered November 3, 1977,

(together, the “Trade Mark”).

The Respondent has not filed a Response and consequently little is known about the Respondent.

The Respondent registered the Disputed Domain Name with the Registrar on September 7, 1999.

The website at the Disputed Domain Name currently displays links to various websites. The majority of these websites advertise and sell perfumes and cosmetics, including what appear to be the products related to the Complainant. In the past, the Disputed Domain Name has resolved to a website that was “under construction”.

6. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions.

Identical or Confusingly Similar

The Disputed Domain Name is identical to the Trade Mark.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:

- the Respondent is not affiliated with the Complainant;

- the Complainant has not authorized the Respondent to use the Trade Mark; and

- the Respondent is not making a noncommerical or fair use of the Dispute Domain Name, nor is it using the Diputed Domain Name in connection with a bona fide offering of goods or services. The website that the Disputed Domain Name resolves to displays links to the websites advertising products which compete with the Complainant’s products.

Registered and Used in Bad Faith

The Complainant submits that the following evidence the Respondent’s bad faith:

- the Trade Mark is well known (at least in France);

- the Respondent has taken steps to “cover his identity”; and

- the website at the Disputed Domain Name displays sponsored links to websites offering competitive products (and the Respondent receives click-through revenue from these links).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

7. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

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

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.

A. Procedural Matters

The Respondent has failed to file a Response. This does not automatically result in a decision in favor of the Complainant (see e.g., Cynthia Ann Crawford v. Julian S. Garcia, WIPO Case No. D2012-2454). However, the Panel may draw appropriate inferences from the Respondent’s default.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to one of the Complainant’s trade marks.

The Disputed Domain Name is identical to the Trade Mark. The addition of generic Top-Level Domains (“gTLD”) (the “.com” suffix) can be disregarded when comparing the similarities between a domain name and a trade mark (see e.g., DEQ Systems Corp. v. Repenko, Andrey, WIPO Case No. D2013-1466).

Accordingly, the Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case for the following reasons:

- there is no evidence that the Respondent is commonly known by the Disputed Domain Name;

- there is no evidence that the Respondent has any connection with the Trade Mark and the Complainant has not licensed or otherwise permitted the Respondent to use the Trade Mark; and

- the Respondent has not used, and is not using, the Disputed Domain Name in connection with a bona fide offering of goods or services. The website that the Disputed Domain Name resolves to is commercial in nature. It is a “link farm” website which directs Internet users to goods of the Complainant’s competitors (such as Dolce Gabbana and Hugo Boss fragrances). This is not a fair commercial use of the Trade Mark, nor does it constitute a bona fide offering of goods or services.

The Respondent had the opportunity to demonstrate its rights or legitimate interests in respect of the Disputed Domain Name, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

Paragraph 4(b)(iv) of the Policy states that the following is evidence of registration and use of a domain name in bad faith: “by using the domain name, you have intentionally attempted to attract for commercial gain, Internet users to your website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location of a product or service on your website or location”. Thus, bad faith use as set out in paragraph 4(b)(iv) is sufficient to demonstrate bad faith registration and bad faith use for the purposes of the third element of the Policy.

The website operated by the Respondent at the Disputed Domain Name displays “click-through” links to websites selling the goods of the Complainant’s competitors. The Panel infers that some Internet users, once at the Respondent’s website will follow the provided links and “click-through” to these websites. The Respondent will earn “click-through” linking revenue as a result. It is well established that where a domain name is used to generate revenue in respect of “click-through” traffic, and that traffic has been attracted because of the association of the domain name with a complainant, such use amounts to use in bad faith (see, e.g., Incase Designs Corp. v. Juliane Kuefer, WIPO Case No. D2012-2020 and cases cited therein).

Additionally, the Panel infers that by changing his details to simply state “Personal” the Respondent is attempting to conceal his identity. This is further evidence of bad faith.

The Respondent had the opportunity to provide evidence of good faith use of the Disputed Domain Name but failed to do so. The Panel infers from this failure to respond that the Respondent could not provide any such evidence (see, e.g., Paris Hilton v. Turvill Consultants, WIPO Case No. D2012-0965 and cases cited therein).

In light of the above, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith as defined in paragraph 4(b)(iv) of the Policy.

8. 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 Name <azzaro.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: December 16, 2013