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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Parfumerie Douglas GmbH v. Katz Global Domain Name Registration

Case No. D2006-1413

 

1. The Parties

The Complainant is Parfumerie Douglas GmbH, Hagen, Germany, represented by Harmsen.Utescher, Germany.

The Respondent is Katz Global Domain Name Registration, Singapore.

 

2. The Domain Name and Registrar

The disputed domain name <douglas-marketing.com> is registered with WebNIC.cc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2006. On November 8, 2006, the Center transmitted by email to WebNIC.cc a request for registrar verification in connection with the domain name at issue. On November 21, 2006, WebNIC.cc transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 November 22, 2006. In accordance with the Rules, Paragraph 5(a), the due date for Response was December 12, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2006.

The Center appointed Alistair Payne as the sole panelist in this matter on January 8, 2007. 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, Parfumerie Douglas, operates a chain of perfumery stores all over the world, including the U.S.A. The Complainant is the owner of numerous trademark registrations containing the name “douglas” in various countries. Annex 4 of the Complaint contains extracts of these trademarks, all of which are for the word mark DOUGLAS or include the term “douglas” in the mark (the “DOUGLAS Marks”). The earliest of the DOUGLAS Marks is a German trademark, DOUGLAS, which was registered in 1926.

The Respondent registered the Disputed Domain Name on September 25, 2006.

 

5. Parties’ Contentions

A. Complainant

The Complainant states that it has used the trade name DOUGLAS for many years and in addition, is the owner of numerous trademark registrations containing the name “douglas” in various countries.

The Complainant submits that the Disputed Domain Name is nearly identical to the aforementioned trademarks and trade name in which the Complainant owns rights. The Complainant further submits that the Disputed Domain Name, <douglas-marketing.com> is dominated by the element “douglas”, as the element “marketing” is merely descriptive for respective marketing activities for the goods and services offered under the trade name and trademark DOUGLAS. Therefore the distinctive components of the signs being compared are identical.

The Complainant asserts that the reservation and use of the Disputed Domain Name constitutes an infringement of the Complainant’s trademark and trade name rights. The website that is operated under the Disputed Domain Name incorporates the Complainant’s website which is operated under “www.douglas.de” by the use of a framing technique, as is apparent from a comparison of the printouts from the website operated under the Disputed Domain Name and from the Complainant’s website under “www.douglas.de”, Annex 5 of the Complaint. The Complainant submits that this use of the Complainant’s trademarks and trade name without authorisation by the Complainant alone constitutes an infringement of the Complainant’s rights, as the Respondent is not the owner of any trademark, trade name or other rights in the name “douglas”.

The Complainant states that it has been contacted by customers who were mislead by the content of the Respondent’s website. If the Internet user accesses the website under the Disputed Domain Name, a pop-up window opens with the enclosed offer of a Douglas voucher in an amount of Euro 100.00 that, according to the fine print, shall be collectible in every Douglas shop of the Complainant. Consumers are therefore led to the conclusion that the offer is an offer by the Complainant. However, the Complainant has nothing to do with this offer. To receive the voucher the customer has to reveal his contact details and the Complainant asserts that the Respondent’s objective is to collect as much customer data as possible for uses unknown to the Complainant. The Complainant therefore submits that the Respondent infringes the Complainant’s DOUGLAS trademarks and trade name.

The Complainant submits that both the registration and present use of the Disputed Domain Name constitute an infringement of the Complainant’s trademark and trade name rights. Furthermore the use of “douglas” as part of this domain name and the offer under this domain name evidence the intent in bad faith to profit from the DOUGLAS trademarks and their associated goodwill. The Complainant submits that it follows from the foregoing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, due to the fact that the Respondent has only used and infringed the trademark rights of the Complainant by using it, especially through the Disputed Domain Name.

B. Respondent

The Respondent did not reply to the Complaint.

 

6. Discussion and Findings

The Respondent has not filed a Response to the Complaint. 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.

Notwithstanding the fact that the Respondent has not filed a Response to the Complaint, it is still necessary for the Complainant, if it is to succeed in this Administrative Proceeding, to 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 or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

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

The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in Paragraph 4(a) of the Policy. The Panel also notes that pursuant to Paragraph 14(b) of the Rules, the Panel may draw such inferences as it consider appropriate in the absence of a Response from the Respondent.

A. Identical or Confusingly Similar

There are two separate elements that the Complainant must prove under Paragraph 4(a)(i) of the Policy. First, that the Complainant has rights in a trademark or service mark, and second, that the Disputed Domain Name is identical or confusingly similar to the trademark in which the Complainant has rights.

The Panel notes that the Complainant has provided evidence at Part V (A) of the Complaint that it is the proprietor of the DOUGLAS Marks. The earliest of the DOUGLAS Marks was registered on February 15, 1926. Accordingly the Complainant has established that it has rights in the DOUGLAS Marks.

The Disputed Domain Name is not identical to any of the DOUGLAS Marks. However, WIPO Administrative Panels have repeatedly held that where a domain name has been invented by a respondent by adding a descriptive or generic word to a distinctive mark, in which a complainant has rights, then such a domain name is to be considered confusingly similar to the complainant’s mark for the purposes of Paragraph 4(a)(i) of the Policy. See for example: Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028, Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131, ACCOR v. VVNW Inc., WIPO Case No. D2005-0026, Clad Holdings Corporation v. Administration Local, WIPO Case No. D2005-0124, Baccarat SA v. Web Domain Names, WIPO Case No. D2006-0038, Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, Rheem Manufacturing Company v. Domaincar c/o Pertshire Marketing and Domaincar, WIPO Case No. D2006-0502.

The Disputed Domain Name contains the key name and mark of the Complainant, DOUGLAS, and the central element of the Complainant’s DOUGLAS Marks. The Complainant asserts and the Panel accepts that <douglas-marketing.com> is dominated by the element “douglas”, as the element “marketing” is merely descriptive and does not distinguish the Disputed Domain Name. Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s DOUGLAS Marks.

Accordingly, the Panel finds that the Complaint fulfills Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The burden of proof rests with the Complainant to establish at least a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and it is then for the Respondent to rebut this assertion.

The Complainant asserts that the Respondent is not the owner of any trademark, trade name or any other rights in the name “Douglas”.

The Panel accepts that there is no relationship between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant nor has it otherwise obtained any authorisation to use the DOUGLAS Marks or apply for the Disputed Domain Name incorporating the DOUGLAS Marks. There is no evidence to suggest that the Respondent registered the Disputed Domain Name for a bona fide reason or has made a bona fide use of the Disputed Domain Name.

In the Panel’s view there is no evidence to suggest that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Respondent has never used the Disputed Domain Name for a bona fide offering of goods and services nor is there any indication of its intention to do so. The only evidence of use before the Panel, which has been provided by the Complainant, suggests that the Respondent uses the Disputed Domain Name to collect customer data, the purpose for which is not known. Neither is there evidence that the Respondent is commonly known by the Disputed Domain Name nor that there is a link between the Disputed Domain Name and any business name used by the Respondent. There is no evidence before the Panel that any of the circumstances set out in Paragraph 4(c) of the Policy apply. In the absence of a Response to the Complaint, the Panel infers that the Respondent has no legitimate right or interest in the Disputed Domain Name.

Accordingly, the Panel finds that the Complaint fulfills Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances, without limitation, any of which if found by the Panel to be present shall be evidence of the registration or subsequent use of the Disputed Domain Name in bad faith. The Panel notes that the Complainant need only prove one of the four grounds set out in Paragraph 4(b) of the Policy in order to succeed in demonstrating that the Respondent has registered the Disputed Domain Name in bad faith.

Paragraph 4(b)(iv) of the Policy provides that if by using the Disputed Domain Name, the Respondent has attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, this shall be evidence of the registration and use of the Disputed Domain Name in bad faith. The fact that the website operating under the Disputed Domain Name incorporates the Complainant’s website together with the pop-up window with the offer of a Douglas voucher would appear to indicate to the Panel that by its use of the Disputed Domain Name the Respondent has been attempting to confuse the consumer and divert the consumer to the Disputed Domain Name for the purpose of commercial gain. Although no specific evidence of commercial gain by the Respondent has been shown, the Panel infers on the balance of probabilities that the Respondent has been collecting personal data for such a purpose through the pop-up window offer. As the Respondent has offered no explanation, pursuant to Paragraph 14(b) of the Rules, the Panel is entitled to draw the inference that the Respondent is using the Disputed Domain Name in order to capitalise, for commercial gain, on the reputation of the Complainant.

Accordingly, the Panel finds that the Disputed Domain Name is being used intentionally by the Respondent to attract Internet users for commercial gain by creating a likelihood of confusion between the DOUGLAS Marks and the Disputed Domain Name, which is evidence of bad faith under Paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the Complaint fulfills Paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <douglas-marketing.com> is transferred to the Complainant.

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Alistair Payne
Sole Panelist

Dated: January 22, 2007