WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SA Designer Parfums Limited v. Arafat Bulachista

Case No. D2019-2939

1. The Parties

The Complainant is SA Designer Parfums Limited, United Kingdom, represented internally.

The Respondent is Arafat Bulachista, United States of America.

2. The Domain Name and Registrar

The disputed domain name <designerperfums.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2019. On November 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 2019, the Registrar transmitted by email to the Center its verification response:

(a) it is the Registrar for the disputed domain name;

(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;

(c) the Respondent registered the disputed domain name on April 5, 2019;

(d) the language of the registration agreement is English;

(e) the Registrar’s principal office is located in Mumbai, India; and

(f) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.

The Center verified that the Complaint satisfied the formal requirements of 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2019. On January 3, 2020, the Center informed the Parties that the delivery of the written notice to the Respondent’s address failed. Accordingly, the Center resent the written notice and granted the Respondent 10 additional days to respond. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2020.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 23, 2020. 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 a company incorporated in the United Kingdom. In July 2002, a special resolution of its members changed the Complainant’s name from Designer Parfums Limited to its current name.

Since then, it has been carrying on business under the trading name DESIGNER PARFUMS. It produces, markets and sells what it describes as high end perfumes and cosmetics. These products are produced under licence from internationally recognized “brands” such as Naomi Campbell, Jennifer Lopez, GHOST, Cerruti 1881, Ariana Grande and Playboy.

From the materials in the Complaint, it appears that the products are offered for sale to the public with the licensor’s name prominently displayed, such as “Naomi Campbell Cat Deluxe”. The Complainant’s name appears on the back of the packaging as the manufacturer. The Complaint also includes evidence showing that the Complainant uses “Designer Parfums” in a slightly stylized form as a form of header or logo on its letterhead and other corporate stationery. The Complainant is regularly referred to in media reports as “Designer Parfums”.

The Complainant registered the domain name <designerparfums.com> in June 2002 and, amongst other things, has been operating a website from that domain name. The website is very prominently and obviously headed “Designer Parfums™”.

In 2015, the Complainant’s turnover under its name “Designer Parfums” was GBP 28 million. The Complainant’s turnover has steadily increased each year since then. In its financial year ending in March 2019, the Complainant’s turnover was in excess of GBP 70 million.

The Complainant has registered the trademark DESIGNER PARFUMS:

(a) in the United Kingdom as Trademark No UK00003379450, which was registered from February 28, 2019; and

(b) European Union Trademark No. 018111428, which was filed on August 22, 2019.

Both trademarks are registered in International Class 35 respect of retailing services in relation to perfumery.

As noted above, the disputed domain name was registered by the Respondent on April 5, 2019.

It does not appear to resolve to an active website at this time.

However, the Complainant alleges that the disputed domain name has been used to solicit fraudulent orders from customers, or former customers, of the Complainant. At least one such customer placed and paid for an order for approximately EUR 145,000 worth of goods, but the goods were never delivered. Annex 10 to the Complaint includes evidence of an email chain, culminating in the issue of invoices by the alleged fraudster and the former customer’s confirmation of payment and non-delivery.

The email chain was initiated on May 23, 2019 by L.H. from the account “SA Parfums Ltd <[...]@arurbanenetworks.ec>". The email include a footer or signature block with address and contact details that appear largely to correspond with those of the Complainant. L.H. is the name of one of the Complainant’s employees but, according to the Complaint, that is not his email.

Subsequent communications were sent from and to an account “[...]@contractor.net”. Once again, the Complainant states that is not Mr H.’s email, nor any other of the Complainant’s employees.

In an email to this person on August 26, 2019, the former customer requested confirmation that contacts for various employees at the Complainant were still correct. After several emails, an email was sent on August 29, 2019, purporting to be from the Complainant’s head of IT Department, using an email address ending with the disputed domain name, which advised the former customer to use emails for the various employees all of which ended “[...]@designerperfums.com”. The name were in fact names of the Complainant’s employees, but they do not use those email addresses. The former customer then used those email contacts to negotiate and place his order.

5. Discussion and Findings

No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.

When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(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.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of the registered trademarks for DESIGNER PARFUMS identified in section 4 above.

The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11.

Disregarding the “.com” gTLD, the disputed domain name differs from the Complainant’s trademark by the substitution of the letter “e” for the letter “a” in the word “parfums”. This type of misspelling, often referred to as “typosquatting”, does not avoid a finding of confusing similarity. See e.g.WIPO Overview 3.0, section 1.9.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.

As summarised in section 4 above, the Complainant alleges that the disputed domain name is being used without its permission to defraud customers or former customers of the Complainant. This is a very serious allegation. The Respondent, however, has not sought to deny or contest that allegation. The Complainant has also provided evidence to support its allegation. In the absence of a denial or other explanation from the Respondent and bearing in mind the supporting evidence for the allegation, the Panel finds the allegation proved on the record in this proceeding.

It is well established that the unauthorised use of a disputed domain name for illegal activity such as that alleged here cannot confer rights or legitimate interests under the Policy. See e.g.WIPO Overview 3.0, section 2.13.

In the circumstances established by the record in this proceeding, therefore, the Panel finds the Complainant has established the second requirement under the Policy also.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

The use of the disputed domain name in the circumstances outlined in section 4 above plainly reveals knowledge of the Complainant and its trademark and the use of the disputed domain name to exploit its resemblance to the Complainant’s trademark.

That use commenced very shortly after the Respondent registered the disputed domain name. In those circumstances, it appears likely that the disputed domain name was registered for use in connection with that conduct.

Accordingly, the Panel finds that the disputed domain name has been both registered and used in bad faith under the Policy.

Accordingly, the Complainants have established all three requirements under the Policy.

6. 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 <designerperfums.com> be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: February 6, 2020