WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Loris Azzaro B.V. v. Patrik Kana
Case No. D2013-2242
1. The Parties
The Complainant is Loris Azzaro B.V. of Apeldoorn, the Netherlands, represented by Tmark Conseils, France.
The Respondent is Patrik Kana of Maple Shade, New Jersey, United States of America (the “USA”).
2. The Domain Name and Registrar
The disputed domain name <azzaroperfume.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 26, 2013. On December 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 27, 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.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2014.
The Center appointed Eduardo Machado as the sole panelist in this matter on January 30, 2014. 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. Factual Background
The Complainant is the company Loris Azzaro B.V. of the Netherlands. The Complainant is one of the world leaders in the perfume field.
The Complainant owns numerous registered AZZARO trademarks, including in the USA where the Respondent seems to be domiciled:
- French registration for AZZARO (Registration No. 1347241), registered June 17, 1976;
- International registration for AZZARO (Registration No. 431801), registered August 9, 1977;
- Canadian registration for AZZARO (Registration No. 323537), registered February 13, 1987;
- US registration for AZZARO (Registration No. 1560359), registered October 17, 1989; and
- Brazilian registration for AZZARO (Registration No. 006827900), registered December 25, 1978.
There is no relation between the Respondent and the Complainant, and the Respondent is not a licensee of the Complainant, nor has it otherwise obtained an authorization to use the Complainant’s trademarks.
The disputed domain name was created on June 16, 2010.
5. Parties’ Contentions
A. Complainant
The Complainant basically makes the following submissions:
The disputed domain name is identical or at least confusingly similar to a trademark in which the Complainant has prior rights.
The word “perfume” is completely descriptive for perfumery.
The Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:
The Respondent is not affiliated in any manner to the Complainant;
The Complainant has not authorized the Respondent to use the name “Azzaro”, including as a domain name;
The Respondent is not making a noncommercial or fair use of the dispute domain name, nor is it using the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent clearly misleads the consumers and diverts them from the real and official Complainant’s website “www.azzaroparis.com” in order to create a commercial gain for himself.
The Complainant submits the following evidence in relation to the Respondent’s bad faith:
The trademark AZZARO has a well-known character in different countries, for example, in France and in the USA;
The website hosted under the disputed domain name displays sponsored links enabling the sale of goods identical to those covered by the Complainant’s trademark, and more particularly, links to the Complainant’s direct competitors’ goods.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. 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 trademark 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. 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 trademarks.
The Panel finds that the disputed domain name is, in fact, confusingly similar to the Complainant’s trademark AZZARO. The word “perfume” is descriptive for Complainant’s business.
It is well established that the generic Top-Level Domain (“gTLD”) (the “.com” suffix in this case) can be disregarded when comparing a domain name and a trademark (see, e.g.,DEQ Systems Corp. v. Repenko, Andrey,WIPO Case No. D2013-1466).
Therefore, the Complainant succeeds on the first element of the Policy.
B. 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:
The Respondent is not affiliated in any manner to the Complainant, and has never been authorized to use or register the term “Azzaro”, including as a domain name;
The Respondent has never been known by the disputed domain name or by the trademark AZZARO or by any name corresponding to it;
As well, according to the evidence provided by the Complainant, the Respondent is not making a noncommercial or a fair use of the disputed domain name, since it is used in relation with an unauthorized website, offering to sell cosmetics and perfume goods under the Complainant’s trademark and also directing to competitors’ goods.
The Panel finds that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, as it is misleading the consumers and diverting them from the Complainant’s official website “www.azzaroparis.com”, apparently in order to create a commercial gain for himself.
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.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and 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) may in appropriate circumstances be sufficient to demonstrate bad faith registration and bad faith use for the purposes of the third element of the Policy.
The Panel finds that the Respondent’s website displayed sponsored links enabling the sale of goods identical to those covered by the Complainant’s trademark. As well, the Panel finds that there is strong evidence supporting that the Respondent was using the disputed domain name incorporating the Complainant’s trademark in order to create a gain for himself from the diversion of Internet users.
The Respondent has failed to provide evidence of good faith in the registration and use of the disputed domain name.
In light of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) and 4(a)(iii) 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 name <azzaroperfume.com> be transferred to the Complainant.
Eduardo Machado
Sole Panelist
Date: February 13, 2014
