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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Perfumania, Inc. v. Piotr Mentek

Case No. D2006-0316

 

1. The Parties

The Complainant is Perfumania, Inc., Sunrise, Florida, United States of America, represented by White & Case, LLP, United States of America.

The Respondent is Piotr Mentek, Pompano Beach, Florida, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <perfumenia.net> is registered with Melbourne IT trading as Internet Names Worldwide.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2006. On March 14, 2006, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. Melbourne IT 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 March 22, 2006. In accordance with the Rules, paragraph 5(a), the due date for a Response was April 11, 2006. The Response was filed with the Center on April 4, 2006.

The Center appointed Mark V.B. Partridge as the sole panelist in this matter on April 19, 2006. 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

Complainant operates a chain of discount fragrance stores in the United States, including 235 domestic stores.

Complainant owns the following United States Patent and Trademark Office trademark registrations:

(1) Registration No. 1,528, 912 for the mark PERFUMANIA, in class 42 for retail cosmetic and perfume store services, issued March 7, 1989.

(2) Registration No. 1,664,568 for the mark PERFUMANIA, in class 42 for retail cosmetic and perfume store services, issued November 12, 1991.

(3) Registration No. 2,643,313 for the mark PERFUMANIA.COM in class 35 for use in connection with wholesale and retail store services featuring perfume products, cosmetic products, hair and skin products, bath and body products and aroma therapy products, issued October 29, 2002.

(4) Registration No. 2,076,058 for the mark PERFUMANIA PLUS, in class 42 for use in connection with retail store services, issued July 1, 1997.

Complainant has registered and operated a web site at “www.perfumania.com” since 1999.

Respondent owns and operates a fragrance store under the name A&P Fragrances. On September 17, 2005, Respondent registered the domain name <perfumenia.net>. Respondent’s web site was initially used in a way that directly competed with Complainant’s business by selling fragrances to Internet consumers. Further, Respondent’s web site was modeled to look like Complainant’s site.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is virtually identical to Complainant’s registered trademarks, that the Respondent has no rights or legitimate interests in the domain name, and that the domain name was registered and used in bad faith in an intentional attempt to attract Internet users to Respondent’s web site for commercial gain through typo-squatting.

B. Respondent

Respondent claims that the contested domain name was not registered or used in bad faith, but was selected by an independent web site designer. Respondent claims he should not be responsible for the actions of the web site designer.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy enumerates three elements that must be established by Complainant to merit a finding that Respondent has engaged in an abusive domain name registration, and to obtain relief. These elements are:

1. Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

2. Respondent has no rights or legitimate interests in respect of the domain name; and

3. Respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has several US and global trademark registrations for PERFUMANIA. Complainant has continuously used the mark PERFUMANIA in commerce since 1987. The Respondent does not challenge Complainant’s rights to PERFUMANIA.

Respondent’s domain name only differs from Complainant’s site by one letter and a different gTLD (“.net” instead of “.com”). The changing of a letter does not create a sufficient distinction between the two sites. Estee Lauder Inc. v. estelauder.com, WIPO Case No. D2000-0869 (September 25, 2000). Typo-squatting has been well recognized as a practice that involves confusingly similar domain names. Dell Computer Corp v. Clinical Evaluations, WIPO Case No. D2002-0423 (June 30, 2002).

The fact that Respondent’s web site ends in “.net” and Complainant’s ends in “.com” is also an insufficient distinction to avoid confusion. Uniroyal Engineered Prods., Inc. v. Nauga Network Servs., WIPO Case No. D2000-0503 (July 18, 2000). A registrant’s choice of a different gTLD does not legitimize its use of another’s trademark. Awesome Kids LLC v. Selavy Communications, WIPO Case No. D2001-0210 (April 16, 2001).

The Panel finds that the domain name is confusingly similar to marks in which Complainant has rights.

A. Rights or Legitimate Interests

The Policy does not support the misappropriation of another’s mark to mislead Internet consumers. Complainant must show that Respondent has no legitimate interest in the domain name. Upon a prima facie showing that Respondent has no legitimate interest in the domain name the burden shifts to Respondent to prove that they in fact do have a legitimate interest through a showing of a bona fide offering of goods or services for sale or that Respondent was acting in good faith. Document Techs v. International Communications, WIPO Case No. D2000-0270 (June 6, 2000).

Respondent operates as A&P Fragrances and has not, until recently, held itself to be associated with the mark PERFUMENIA. The first time Respondent used “Perfumenia” was in its registration for the disputed domain name. Use of Complainant’s mark to deceive Internet users into believing they are accessing Complainant’s web site precludes a finding of bona fide use. Further, typo-squatting does not constitute a bona fide offering of goods or services. Network Solutions, LLC v. Lambright Publishing, WIPO Case No. 2005-0455 (June 6, 2005).

Respondent’s claim that the name was selected by its web site designer does nothing to establish rights or legitimate interests in the domain name.

The Panel finds that Respondent lacks any rights or legitimate interests in the domain name.

B. Registered and Used in Bad Faith

To demonstrate Respondent’s bad faith, Complainant submits evidence of Respondent’s efforts to divert Internet users seeking Complainant’s website by luring them to Respondent’s for commercial gain. Respondent’s website was modeled to look like Complainant’s site. Initially, Respondent’s site included material in the “About Us” section that was copied from Complainant’s site. Moreover, Respondent’s misspelling of Complainant’s mark to stay phonetically similar was done with the intent to divert traffic.

Respondent claims that it could not have acted in bad faith as it was unfamiliar with Complainant. Respondent, however, alleges that it searched Yahoo! in an effort to ensure <perfumenia.net> was available before adopting the domain name. A Yahoo! search of <perfumenia.net> currently gives search results littered with links and advertisements for Complainant’s site, not to mention that the Yahoo! search engine’s spell checker asks if the user meant to type Complainant’s mark “perfumania.” Thus, if Respondent had conducted the search it claims it conducted, it would have learned about Complainant’s mark. Further, Complainant and Respondent are both centered in Florida and are in direct competition with each other. These facts cast doubt on Respondent’s credibility.

Respondent also argues that it did not act in bad faith because it relied on its web site designer to select the name. Respondent, however, cannot avoid liability passing blame on to its agent. Respondent is responsible for the selection and use of the domain name, even if the task was delegated to an employee or agent.

Taking the record as a whole, the Panel concludes that Respondent registered and used the domain name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name, <perfumenia.net>, be transferred to the Complainant.

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Mark V.B. Partridge
Sole Panelist

Dated: May 16, 2006