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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Christian Dior Couture Company v. 301 mozna bldg

Case No. D2008-0115

 

1. The Parties

The Complainant is Christian Dior Couture Company, Paris, France, represented by Cabinet Marc Sabatier, France.

The Respondent is 301 mozna bldg, Dubai, United Arab Emirates.

 

2. The Domain Names and Registrar

The disputed domain names are <diormobile.com> and <diorphone.com> and are registered with DomainPeople, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2008.

On January 28, 2008, the Center transmitted by email to DomainPeople, Inc. a request for registrar verification in connection with the domain names at issue.

On February 1, 2008, DomainPeople, Inc. transmitted by email to the Center its verification response confirming that:

(a) it is the registrar for the disputed domain names;

(b) the Respondent is listed as the registrant of the disputed domain names;

(c) the contact details for the administrative, billing, and technical contacts provided in the Complaint are correct;

(d) English is the designated language under the Registration Agreement for the disputed domain names; and

(e) the registration of the disputed domain names is subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy”).

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 14, 2008.

In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2008.

On February 18, 2008, March 2, 2008 and March 5, 2008, the Center received emails from one F. Amirkhani of Afzar Niroo Eng., Co. in response to the Complaint.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 18, 2008. 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 well-known fashion house.

In its Complaint the Complainant submitted an Annex of some 116 pages of trademarks registered around the world. Many, if not most, of these are for marks based on CHRISTIAN DIOR. In addition, however, appendix 4 includes details for the following specific registered trademarks:

– United Arab Emirates trademark DIOR n° 52437 filed on March 31, 2003 in class 35 (namely advertisings, gathering for account of third party of various products of clocks, watches);

– United Arab Emirates trademark DIOR n° 52438 filed on March 31, 2003 in class 38 (namely telecommunications, communications by computer terminals, transmitting information by data processing network world open or closed; information on telecommunication; connection network providing);

– United Arab Emirates trademark DIOR n° 52439 filed on March 31, 2003 in class 42 (namely telecommunication consultations, computer programming, services of supply connection for data processing network, telecommunications network);

– United Arab Emirates trademark DIOR n° 4759 filed on January 30, 1994 renewed on 2004 in class 24 (namely fabrics);

– United Arab Emirates trademark DIOR n° 4904 filed on February 6, 1994 renewed on 2004 in class 25 (namely clothings);

– United Arab Emirates trademark DIOR n° 4758 filed on January 30, 1994 renewed on 2004 in class 18 (namely leather, handbags, luggages);

– United Arab Emirates trademark DIOR n° 4637 filed on January 23, 1994 renewed on 2004 in class 14 (namely jewels);

– US’s trademark DIOR N° 1 923 564 of May 2, 1994 in classes 14, 18 (namely handbags);

– US’s trademark DIOR N° 1 848 630 of September 14, 1993 in class 25 (namely clothing);

– French trademark DIOR n° 03 3 209 310 filed on February 12, 2003 in classes 35, 38 and 42 (namely telecommunication services, telephone services, network world open or closed, telecommunication network);

– International trademark DIOR n° 811 074 filed on June 24, 2003 in classes 35, 38 and 42 (namely telecommunication services, telephone services, network world open or closed, telecommunication network).

The disputed domain names were registered on January 5, 2006. Each resolves to a “domain parking” website where there are links to a range of “related searches”.

 

5. Discussion and Findings

Mr. Amirkhani’s email to the Complainant, copied to the Center dated February 18, 2008 states that he is the owner of the disputed domain names and that Seirous Afifi is the registar who has forwarded the Complaint to him. This email was copied to Seirous Afifi’s email address provided in the WhoIs details. This email and the later email of March 5, 2008 also address the substance of the Complaint. In these circumstances, the Panel proceeds on the basis as asserted by Mr. Amirkhani that he is in fact the true registrant of the disputed domain names and Seirous Afifi has acted in some way as his agent to register the domain names using DomainPeople, Inc. as the registrar.

Accordingly, under paragraph 4(a) of the Policy the Complainant has the burden of proof in respect of the following three elements:

(i) The domain names are 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 names; and

(iii) The domain names have been registered and are being used in bad faith.

The Panel deals with each of these elements in turn.

A. Identical or Confusingly Similar

There are two parts to this inquiry: does the Complainant have trademark rights and, if so, are the disputed domain names identical or confusingly similar to it?

The Complainant has proved sufficiently for the purposes of this administrative proceeding ownership of at least the registered trademarks for DIOR set out in section 4 above. It is also, as already noted, very well-known internationally both by the name CHRISTIAN DIOR and DIOR. See e.g. Christian Dior Couture Company v. Domains by Proxy Inc and Sherif Hassanin, WIPO Case No. D2007-0850 and the earlier cases there cited.

The Respondent contends that his domain names are not confusingly similar because the Complainant’s trademarks are for DIOR or CHRISTIAN DIOR. His domain names, on the other hand, are for “diormobile” and “diorphone”, each as one word. The Respondent also states that in his mother tongue both terms mean “speaking phone”. Bearing in mind that the language of the registration agreements is English, the Panel will consider this aspect of the Respondent’s position in section B, below.

It is well established that the inclusion of the necessary gTLD (or ccTLD) can be disregarded for the purposes of the required comparison: see for example Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493.

Similarly, it is well established that a domain name does not avoid characterization as confusingly similar merely by the addition of a generic or descriptive term. Both the words “mobile” and “phone” are plain English words.

Viewing the disputed domain names as a whole, it is clear that the distinctive component is the word “dior”. For the many English- and French-language speakers, either as a first language or as a significant means of communication, the word “dior” is what identifies the type of “phone” or “mobile” goods or service compared to other types or brands of “phone” or “mobile”.

In these circumstances, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s registered trademarks identified in section 4 above and its well-known DIOR trademark.

B. Rights or Legitimate Interests

The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain names.

In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case.

It is common ground between the parties that the Respondent is not associated with the Complainant or authorised by it to use the name DIOR. This is sufficient to shift the onus to the Respondent.

Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

These are not an exhaustive enumeration of rights or legitimate interests, they are examples only.

The Respondent states that in his mother language both disputed domain names mean “speaking phone”. The Respondent does not indicate what his mother language is. Nor does the Respondent provide any documentary evidence, such as dictionary extracts, supporting this claim.

In the absence of some objective corroborative material, the Panel is not prepared to accept this claim on its bare face. The only evidence before the Panel about the Respondent’s location is a connection with the United Arab Emirates. The Complainant has trademarks for DIOR registered there including for telecommunications services. Thus, while the Complainant’s trademarks are registered there (and, for that matter in France and in other jurisdictions through the International Registration), the Respondent’s use of the domain name would seem likely to infringe.

In these circumstances, the Panel finds that the Complainant has established the second requirement under the Policy.

C. Registered and Used in Bad Faith

The third requirement that the Complainant must demonstrate to succeed is that the disputed domain names have been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:

“(b) Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”

The Complainant contends that its DIOR trademark is so well known around the world that the Respondent must have known about it when it registered the disputed domain names. The Complainant further contends that the Respondent is using the disputed domain names in fields covered by its trademark registrations by the “related search” links associated with the “parking” websites that the disputed domain names resolve to. The Complainant also argues that the Respondent has tried to conceal his identity to avoid detection.

The Respondent acknowledges that the Complainant’s trademarks DIOR and CHRISTIAN DIOR are well known all over the world. As noted above, he says that the domain names are distinguishable because they are all one word (which he says is descriptive). Further, he states that he has not planned to use the Complainant’s brands at all.

The Respondent contends that the websites that the domain names resolve to are just automatic parking pages adopted by the domain provider company. He points to some other uses of the DIOR brand name in domain names which he asserts are not related to the Complainant.

The central point here is that the disputed domain names were registered admittedly with knowledge of the Complainant’s trademarks, especially the DIOR trademark.

While the Respondent says he did not plan to use the Complainant’s brands at all, he does not explicitly indicate why he did register them. Nor has the Respondent advanced any explanation for why the domain names are still dormant or of steps taken to start using them. Rather, he contends that he should not be found to have registered and used the disputed domain names in bad faith because the domain names are inactive. Further, he contends that he has no interest in the Complainant’s products, which he characterizes as jewellery and shoes and not phones or mobiles.

It is not necessary for the Panel to make findings about whether or not the Respondent has arranged the “parking” of the disputed domain names or this was done automatically by the domain provider company. It is well established that there can be registration and use in bad faith even if the domain name is inactive: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. As in that case, the trademark rights here are very well known; furthermore, they are concededly so by the Respondent.

The Respondent also mistakes the nature of the Complainant’s rights. The Complainant’s trademarks are not limited to jewellery or shoes. They extend very much broader than that as a matter of both registration and under article 6bis of the Paris Convention. Moreover, the Complainant’s registrations expressly cover telecommunications related services which the Respondent at least implicitly suggests is his intended field of activity.

Having failed to sustain his claim that the disputed domain names were adopted purely for their descriptive character, the inference must follow that the disputed domain names were registered because of their potential to draw on, or cause confusion as to source with, the well-known DIOR trademarks.

The fact (if it be a fact) that there may be a few other users who may be using the Complainant’s trademark without permission on their websites does not avail the Respondent either. A person who infringes someone else’s trademark rights is not exonerated merely because there are other infringers unless, perhaps, the scale of the cumulative infringing activity is so great as to destroy the distinctive capacity of the trademark – a situation which would be nothing like the very limited allegations here.

In these circumstances, the Panel finds that the disputed domain names have been registered and used in bad faith.

 

6. 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 names, <diormobile.com> and <diorphone.com> be transferred to the Complainant.

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Warwick A. Rothnie
Sole Panelist

Dated: April 1, 2008