WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Loris Azzaro B.V. v. WhoIs Agent, Whois Privacy Protection Service, Inc./ Eight Days, Robin Hills
Case No. D2014-0368
1. The Parties
The Complainant is Loris Azzaro B.V. of Apeldoorn, the Netherlands, represented by Tmark Conseils, France.
The Respondent is WhoIs Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America (“U.S.”) / Eight Days, Robin Hills of Middletown, Delaware, U.S..
2. The Domain Name and Registrar
The disputed domain name <pornazzaro.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2014. On March 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 12, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 14, 2014.
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 March 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2014.
The Center appointed Michael A.R. Bernasconi as the sole panelist in this matter on April 15, 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 following facts appear from the Complaint and its annexes, which have not been contested by the Respondent.
The Complainant is Loris Azzaro B.V., a company incorporated in The Netherlands, represented by Tmark Conseils, France. The Complainant is a company acting, inter alia, in the perfume field.
The Complainant owns numerous registered trademarks for AZZARO, including the following:
- French Trademark Registration AZZARO (Registration no. 1347241), dated June 17, 1976;
- International Trademark Registration AZZARO (Registration no. 431801), dated August 9, 1977;
- Canadian Trademark Registration AZZARO (Registration no. 323537), dated February 13, 1987;
- American Trademark Registration AZZARO (Registration no. 1560359), dated October 17, 1989;
- Brazilian Trademark Registration AZZARO (Registration no. 006827900), dated December 25, 1978;
(together, the “trademark”).
The disputed domain name was created on June 8, 2011. The disputed domain name was connected to a website displaying adult content, i.e. a sexually explicit forum, referred to on the website as “Italy’s number one porn forum” (“Forum porno numero uno in Italia”).
5. Parties’ Contentions
A. Complainant
The Complainant contends that it is one of the world leaders in the field of perfumes. The Complainant asserts that the trademark AZZARO has been intensively used worldwide and that it is well-known. In this respect, referring to evidence, the Complainant states that the first AZZARO perfume had been launched in the seventies. Further, the Complainant holds that since the launch of the AZZARO perfume, well-known celebrities have been used to promote these AZZARO perfumery goods. The Complainant states that to this extent, it owns many AZZARO trademarks worldwide, including in the U.S. where the Respondent seems, according to the Complainant, to be based, as well as in Italy, referring to the Respondent’s website being drafted and operated in Italian.
Identical or confusingly similar
The Complainant states that the above trademarks predate the Respondent’s registration of the disputed domain name, that they are in force and the exclusive property of the Complainant. The Complainant points out that the well-known trademark AZZARO is entirely reproduced in the disputed domain name. Referring to UDRP precedent, the Complainant contends that the addition of a generic term such as the word “porn” is not sufficient to avoid a likelihood of confusion. Therefore, the Complainant asserts that the disputed domain name is confusingly similar to the AZZARO trademark.
Rights or Legitimate interests
First, the Complainant states that the Respondent is not affiliated in any manner with the Complainant, and has never been authorized to use or register in any way the name “Azzarro”, including as a domain name. Further, the Complainant contends that the Respondent has never been known, commonly or otherwise, by the disputed domain name or by the trademark or by any name corresponding to it, prior to the registration of the disputed domain name.
In addition to this, the Complainant asserts that the Respondent is not making a noncommercial or a fair use of the disputed domain name. Rather, and referring to evidence, the Complainant holds that the Respondent clearly misleads consumers and diverts them from the Complainant’s real and official website “www.azzaroparis.com”, in order to create a commercial gain for itself by providing pornographic content (through webcam live chat, video downloading, pornographic forums, etc.) or by providing sponsored links to “partner” websites.
The Complainant contends that such use, which relies on exploiting Internet user confusion, does not constitute bona fide commercial use, sufficient to legitimize any rights and interests the Respondent might have in the disputed domain name. In consequence, the Complainant holds that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
Used and registered in bad faith
The Complainant states that the disputed domain name was created on June 8, 2011. The Complainant asserts that it was already extensively using its trademark AZZARO well before that date. Referring to evidence, the Complainant holds that the trademark AZZARO is well-known world-wide.
Further, the Complainant states that the Respondent has masked its identity, which, referring to Loris Azzaro BV v. Joao Jose Vasconcellos Jr.,WIPO Case No. D2013-1780, may be regarded as evidence of bad faith.
Moreover, the Complainant argues that the pornographic content of the Respondent’s website, as it existed when the Complaint was initiated, constitutes significant proof of bad faith. In this respect, the Complainant refers to UDRP precedent, stating that many prior decisions have supported this position, based on the concept of tarnishment.
Finally, the Complainant states that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).
Accordingly, the Complainant holds that the disputed domain name should be considered as having been registered and being used in bad faith by the Respondent.
Remedies Requested
The Complainant requests that the disputed domain name be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions. Pursuant to paragraph 14(a) of the Rules, the Panel will proceed to a decision on the Complaint in the absence of a Response from the Respondent. The Panel may draw negative inferences from the Respondent’s default where appropriate. However, this does not automatically result in a decision in favor of the Complainant (Cynthia Ann Crawford v. Julian S. Garcia,
WIPO Case No. D2012-2454).
6. Discussion and Findings
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) The disputed domain name is identical or confusingly similar to a trademark 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 Panel will proceed to determine whether the Complainant has discharged its burden of proof in respect of each of these three elements.
A. Identical or Confusingly Similar
The Complainant is the owner of several trademark registrations, containing, or comprised of the element “Azzaro”.
Previous UDRP panels have decided that the addition of a generic term such as the word "porn" or "porno" to a trademark is likely to result in confusion (see Research in Motion Limited v. Thomas J Buck/CSMJBS Enterprises - Private Registration,
WIPO Case No. D2008-1065, regarding the domain name <blackberryporn.net>; Polaroid Corporation v. Jay Strommen, WIPO Case No. D2005-1005, regarding the domain name <polaroidporn.com>; Caesars World v. Alaiksei Yahorau, WIPO Case No. D2004-0513, regarding the domain name <porncaesar.com>; Microsoft Corporation v. S.L. Mediawb, WIPO Case No. D2003-0538, regarding the domain name <msnporno.com>).
Since the entire trademark AZZARO is incorporated in the disputed domain name, the disputed domain name is confusingly similar to the Complainant’s trademarks. The addition of the generic term "porn" to the trademark AZZARO in the disputed domain name does not change this (see Research in Motion Limited v. Thomas J Buck/CSMJBS Enterprises - Private Registration, supra; Polaroid Corporation v. Jay Strommen, supra).
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must make out at least a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name (Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270). Once a prima facie case is made, the burden of production then shifts to the Respondent who must demonstrate its rights or legitimate interests to the Panel.
Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by the Respondent, which if found by the Panel to be proved based on its evaluation of all evidence presented, shall be demonstrative of the Respondent’s rights or legitimate interests to the disputed domain name for the purposes of Paragraph 4(a)(ii) of the Policy:
(i) Demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute;
(ii) An indication that the Respondent has been commonly known by the disputed domain name even if it has acquired no trademark rights; or
(iii) Legitimate noncommercial or fair use of the disputed domain name without intent to divert consumers or to tarnish the trademark.
It is generally regarded as prima facie evidence for a complainant to show that a disputed domain name is identical or confusingly similar to its trademark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its trademark, whether in the disputed domain name or otherwise (Roust Trading Limited v. AMG LLC,
WIPO Case No. D2007-1857).
There is no supporting evidence to suggest that the Respondent is commonly known by the disputed domain name or is operating a bona fide business (other than displaying sexually explicit content) through its website, or that it is affiliated with, or authorized by, the Complainant. Rather, it has remained uncontested that the Complainant has not authorized the Respondent to register or use its trademarks as part of the disputed domain name, and there is no evidence that the Respondent has been commonly known by the disputed domain name. The Panel considers that the Complainant has therefore made out a prima facie case.
The Respondent has failed to file a Response to the Complaint. It remains for the Panel to determine whether or not in this case the Respondent has no rights or legitimate interests in the disputed domain name as a consequence of its actions.
The Panel considers that the Complainant has established trademark rights and has substantial reputation in its AZZARO trademarks. The Respondent has provided no explanation for its use of the disputed domain name. Considering that it has registered the disputed domain name in 2011 only, the Panel infers that the Respondent was aware of the Complainant’s rights and expressly chose the disputed domain name for the purposes of attracting website traffic to its sexually explicit site.
Although, as other panels have held, adult sex sites which are not illegal may constitute a bona fide offering of goods and services (V&S Vin&Sprit AhB v. Giovanni Pastore,
WIPO Case No. D2002-0926), there is no indication in this case that there is any bona fide offering from the site and the Respondent has provided no such supporting evidence.
In these circumstances, considering the reputation of the Complainant’s trademark and the Panel’s inference that the Respondent chose this domain name purposefully, it is clear to the Panel that the Respondent has not rebutted the prima facie case and accordingly finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Policy requires a complainant to prove both registration and use of a domain name in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances, which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith, namely:
(i) Circumstances indicating that the respondent has registered or acquired the domain name primarily for purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly to the domain name; or
(ii) The respondent has registered the domain name in order to prevent the owner of the trade mark or service from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on the respondent’s web site or location.
The Complainant alleges that at the time the disputed domain name was created, the Complainant had already been extensively using its trademark AZZARO for a considerably long time. Further, the Complainant alleges that the trademark AZZARO has a well-known character world-wide. In addition to this, the Complainant argues that the fact that the Respondent has masked its identity further serves as evidence of bad faith. Moreover, the Complainant argues that the pornographic content of the Respondent’s website constitutes significant proof of bad faith, based on the concept of tarnishment. Finally, the Complainant states that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).
The Panel is of the opinion that the Complainant has put forward sufficient arguments to establish that the Respondent registered and uses the disputed domain name in bad faith, which have all remained uncontested.
The AZZARO trademarks predate the registration of the disputed domain name by up to more than 20 years. Therefore, it may be assumed that the Respondent was aware of the trademark when registering the disputed domain name. In addition to this, the Panel notes that the Respondent has not replied to the Complainant’s contentions, from which the Panel may make negative inferences.
The Panel further notes that the disputed domain name incorporates the entire trademark and is connected to a website where sexually explicit material is offered. Although the Respondent’s use in bad faith may not be as manifest as in other factual circumstances or in previous UDRP cases (see Research in Motion Limited v. Thomas J Buck/CSMJBS Enterprises - Private Registration,
WIPO Case No. D2008-1065; Six Continents Hotels, Inc. v. Seweryn Nowak,
WIPO Case No. D2003-0022; Oxygen Media, LLC. v. Primary Source,
WIPO Case No. D2000-0362; Ceasars World, Inc. v. Alaiksei Yahorau, WIPO Case No. D2004-0513), the Panel takes into account the reputation of the AZZARO trademarks, the combination of such trademarks with the word “porn” in the disputed domain name as well as the lack of any response provided by the Respondent, from which the Panel infers that the Respondent could not provide any evidence of a good faith use (Paris Hilton v. Turvill Consultants,
WIPO Case No. D2012-0965).
Overall, it is thus impossible for the Panel to conceive any good faith use of the disputed domain name.
The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(b)(iv) of the Policy and that accordingly, the disputed domain name was registered and is being used in bad faith under paragraph 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 <pornazzaro.com> be transferred to the Complainant.
Michael A.R. Bernasconi
Sole Panelist
Date: April 29, 2014
