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NAF NAF Distribution BV v. Stanley Au [2005] GENDND 1448 (16 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NAF NAF Distribution BV v. Stanley Au

Case No. D2005-0665

1. The Parties

The Complainant is NAF NAF Distribution BV, Amsterdam, the Netherlands, represented by Cabinet Lhermet La Bigne & Remy, France.

The Respondent is Stanley Au, Tai Po, Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name <chevign.com> is registered with GKG.Net, INC (formerly GK Group LLC).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2005. On June 24, 2005, the Center transmitted by email to GKG.NET, INC (formerly GK Group LLC) a request for registrar verification in connection with the domain name at issue. On June 24, 2005, GKG. Net, INC (formerly GK Group LLC) 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 June 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2005.

The Center appointed David Taylor as the sole panelist in this matter on August 2, 2005. 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 CHEVIGNON fashion brand was created in France in 1979. In 1994, the Complainant acquired Chevignon S.A., including its worldwide trade mark portfolio. According to the Complaint’s website at “www.nafnafgroup.com”, turnover relating to the CHEVIGNON brand was 42 million Euros in 2002, 20% of which came from sales outside of France. The Complainant’s website at “www.chevignon-hk.com” lists a number of CHEVIGNON shops and authorised dealers in Hong Kong SAR of China.

The Complainant has provided evidence of over 250 CHEVIGNON trade mark registrations in more than 80 countries, including 12 registrations in Hong Kong SAR of China in various different classes since 1989.

The Respondent, based in Hong Kong SAR of China, has registered the domain name <chevign.com> (the “Disputed Domain Name”).

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The Disputed Domain Name is confusingly similar to a trade mark in which the Complainant has rights.

A simple comparison of “Chevign” and “Chevignon” reveals a disturbing similitude between these two signs.

Strong resemblance results from the appropriation by the Disputed Domain Name of the whole distinctive root “chevign-”, which confers on the term “chevignon” most of its singularity. The Disputed Domain Name borrows 7 out of the 9 letters that form the word “chevignon” in the same order. The suppression of the two final letters is clearly insufficient to avoid confusion with the Complainant’s trade mark, as this does not change the overall impression of the word.

Any Internet user meaning to access a CHEVIGNON website could reasonably misspell it as “chevign” when typing the address. The likelihood of confusion is confirmed by the fact that when the word “chevign” is typed into the search engine Google, Google considers this to be a misspelling of the word “chevignon”. Such a misspelling is likely to divert Internet users (who are potential consumers of CHEVIGNON products) to the Respondent’s website. As a result they could be deceived into thinking that the Disputed Domain Name is associated with the Complainant.

(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Respondent is not known in business by the name “chevign” and nor does the Respondent own any trade marks or service marks for “chevign”. There is no evidence that the Respondent is making a non-commercial or fair use of the Disputed Domain Name or a use in connection with a good faith offering of goods and services. In fact, the Disputed Domain Name only directs the user to a webpage that indicates “You don’t have permission to access on this server”.

The Respondent has no connection or affiliation with the Complainant and has not received any licence or consent, express or implied, to use “chevignon” or “chevign” in a domain name or in any other manner.

(c) The Disputed Domain Name was registered and is being used in bad faith.

The Respondent deliberately reserved a domain name that is strikingly similar to a well-known distinctive trade mark. CHEVIGNON is a famous mark in the fashion field widely recognised by the public in many countries, including Hong Kong SAR of China. There are numerous CHEVIGNON shops and authorised dealers in Hong Kong SAR of China, 12 trade marks out of the hundreds worldwide have been registered with the Hong Kong Trade Marks Registry, and the Complainant owns numerous generic and national domain names such as <chevignon.com>, <chevignon.net>, <chevignon.cn> and <chevignon-hk.com>.

Therefore the Respondent could not conceivably ignore the Complainant’s well-known trade mark at the time of registration, and thus may only have acted in bad faith. Many former UDRP decisions have considered that conscious infringement of third party rights (and thus bad faith) can be established by the registration of a well-known trade mark as a domain name.

The Respondent provided false contact information to the registrar upon registration of the domain name. The Complainant sent a cease and desist letter to Respondent’s address in Hong Kong SAR of China that was returned unopened by the post. The Complainant’s representative then telephoned the telephone number given to the registrar and was informed by the person who answered the telephone that the Respondent’s address was in fact different than what is given in Registrar’s WHOIS information. However, two subsequent cease and desist letters sent to this address produced no response. The Respondent’s silence suggests bad faith because if the Respondent had registered the domain name in good faith, he would have replied to the cease and desist letters to claim his rights in relation to “chevign”.

The Disputed Domain Name does not resolve to an active website as only the message “Forbidden. You don’t have permission to access on this server” is displayed. Such passive holding is highly prejudicial to the Complainant as it frustrates internet users who will believe that they have been denied access to the Complainant’s website at “www.chevignon.com” and tarnishes the general reputation of the Complainant.

Given the wide reputation of the Complainant’s numerous CHEVIGNON trade marks, neither the registration nor the use of the Disputed Domain Name are justifiable, and are to be seen as a sign of the Respondent’s bad faith.

The Complainant therefore seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15 of the Rules states that the Panel shall decide a Complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In the case of default by a Party, Rule 14 states that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom at it considers appropriate. In this case the Respondent has not submitted any Response and consequently has not contested any of the contentions made by the Complainant. The Panel is therefore obliged to make its decision on the basis of the factual statements contained in the Complaint and the documents made available by the Complainant to support its contentions.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(iii) the domain name has been registered and is being used in bad faith.

Taking each of these issues in turn, the Panel decides as follows:

A. Identical or Confusingly Similar

Based on the detailed evidence put forward by the Complainant, the Panel finds that the Complainant has rights in the trade mark CHEVIGNON.

The Disputed Domain Name is clearly not identical to the Complainant’s trade mark, but whether or not it is confusingly similar is open to debate. In the context of the Policy it is well established that the gTLD suffix “.com” has no effect upon the issue of confusing similarity, and nor does the fact that some or all of the characters in the trade mark are sometimes represented in upper case letters whilst domain names are represented by lower case letters. The question of confusing similarity under the Policy therefore amounts to a consideration of whether the word “chevign” is confusingly similar to the word “chevignon”.

Numerous prior UDRP panels have held that if a domain name incorporates a Complainant’s trade mark in its entirety this is enough to establish confusing similarity, despite the addition of additional characters, see for example PepsiCo, Inc v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696, where over seventy domain names all containing the trade mark PEPSI and a generic term were found to be confusingly similar to the Complainant’s trade mark PEPSI.

Confusing similarity also commonly occurs when registrants try to capitalize on common typing errors made by Internet users, a phenomenon known as “typosquatting”. See for example Sharman License Holdings Limited v. IcedIt.com, WIPO Case No. D2004-0713, where one of the domain names transferred to the holder of the KAZAA trade mark was <jazaa.com> (the letters j and k being next to each other on keyboards intended for English speakers).

In addition, unscrupulous domain registrants may try to capture Internet users who simply do not know how to spell the particular name they are looking for, in particular users whose mother tongue is not English. See for example Yahoo! Inc v. David Murray, WIPO Case No. D2000-1013, where the name <yawho.com> was transferred to the owner of the trade mark YAHOO (“yawho” and “yahoo” being pronounced identically).

In this particular case, the Disputed Domain Name does not incorporate the Complainant’s trade mark in its entirety. Nor, to the Panel’s knowledge, does the Disputed Domain Name represent an obvious mistyping or a misspelling of the Complainant’s trade mark. Instead, the last two letters are simply missing.

The Complainant submits that there is a strong resemblance between “chevign” and “chevignon”, and asserts that any Internet user meaning to access a CHEVIGNON website could reasonably misspell “chevignon” as “chevign”. However, the Complainant does not supply any evidence to support this in the context of the Policy. For example, it could be that “chevignon” is commonly pronounced “chevign” in certain languages, thus leading to a common misspelling, but the Panel cannot know this. The Complainant asserts that the likelihood of confusion is confirmed by the fact that Google considers “chevign” to be a misspelling of the word “chevignon”. However, Google is an automatic search engine and, if anything, this result could aid internet users by redirecting them to click on the word “chevignon” instead, which then leads to the provision of links to the Complainant’s websites.

In certain situations the question of whether a domain name is confusingly similar to a trade mark may benefit from an examination of the surrounding circumstances, including the past conduct of the Respondent and any other domain names registered. Domain names representing slightly shorter versions of trade marks may indeed be confusingly similar to such marks in certain circumstances, see for example Microsoft Corporation v. microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548, where the domain name <microsof.com> was transferred to the owner of the MICROSOFT trade mark.

However, because the Panel rejects the Complainant’s Complaint upon the grounds of lack of registration and use in bad faith, it is not necessary for it to make a ruling on whether the Disputed Domain Name is confusingly similar to the Complainant’s trade mark.

B. Rights or Legitimate Interests

The second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name (Policy, paragraph 4(a)(ii)). The Policy (paragraph 4(c)) sets out various ways in which a Respondent may demonstrate rights or legitimate interests in the domain name, as follows:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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 non-commercial 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.”

The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has presented a clear prima facie showing of the Respondent’s lack of rights or legitimate interest in the domain name. As a result of its default, the Respondent has failed to rebut that showing.

The Panel therefore finds that the Respondent has no rights or legitimate interest in the Disputed Domain Name.

C. Registered and Used in Bad Faith

The third element that the Complainant must prove is that the Disputed Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)). The Policy (paragraph 4(b)) sets out various circumstances which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith, as follows:

“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 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 your web site or location or of a product or service on your web site or location.”

It should be noted at this point that although paragraphs (i) to (iii) above refer primarily to the act of registration of a domain name and paragraph (iv) refers to use, according to the wording of the Policy conduct falling into any one of these four circumstances is evidence of bad faith registration and use. The Complainant has provided no evidence that the Respondent’s conduct falls within any of the four circumstances referred to in the Policy and so it therefore follows that it is incumbent upon the Complainant to prove both registration and use in bad faith.

As far as registration is concerned, the Complainant contends that the Respondent must have been aware of the CHEVIGNON trade mark upon registration of the Disputed Domain Name, given the trade mark’s notoriety worldwide, including in Hong Kong SAR of China. The Complainant has supplied ample evidence of such notoriety, but no evidence that the Respondent had its CHEVIGNON trade mark in mind when it registered the Disputed Domain Name. The Complainant asserts that many previous decisions in accordance with the Policy support the fact that bad faith may be established by the registration of a well-known trade mark as a domain name. However, given that the Disputed Domain Name does not contain the CHEVIGNON trade mark in its entirety, the Panel does not feel that this argument carries much weight. Indeed, in the prior decision that the Complainant cites to support its argument, AT&T Corp v. LaPorte Holdings, Inc, WIPO Case No. 2004-1088, a domain name wholly incorporating the Complainant’s trade mark was transferred. The missing two letters mean that it is just not possible to assert with a reasonable degree of certainty that there is no possible legitimate use of the Disputed Domain Name except by the Complainant (for example, “Chevign” may be used as a family name, as revealed by the Complainant’s search of the internet, and indeed is also the name of a village in France).

The Complainant also cites the Respondent’s provision of false WHOIS information to the registrar as evidence of bad faith. However, upon closer examination by the Panel, the supposed “false” information is merely a shorter version of the Respondent’s correct address, which, in the Panel’s view, merely suggests a cavalier attitude towards filling in the registrar’s registration form, rather than a desire to supply incorrect details in an attempt to avoid detection. This is reinforced by the fact that the Complainant’s representative was able to obtain the Respondent’s correct details by telephoning the telephone number supplied as part of the WHOIS information. The additional details supplied over the telephone are no doubt correct as it appears that the Respondent personally signed for a copy of the Complaint, sent to him by FedEx by the Complainant in accordance with the Rules (as indicated by the Complainant in an email to the Center on June 28, 2005).

In addition the Complainant cites the Respondent’s failure to respond to its cease and desist letters as evidence of bad faith. Although such a lack of response could no doubt reinforce evidence of bad faith in certain circumstances, in the Panel’s opinion it is not something that is particularly telling in this particular case, especially given the fact that the Respondent’s mother tongue may not be English.

The Panel therefore concludes that the Complainant has not provided convincing enough evidence of registration of the Disputed Domain Name in bad faith. Strictly speaking it is therefore unnecessary to consider the question of bad faith use.

However, for the sake of completeness the Panel would add that in this case it also declines to find bad faith use. The Disputed Domain Name does not resolve to an active website and only the message “Forbidden. You don’t have permission to access on this server” is displayed. This raises the perennial question of whether bad faith use can in fact be inferred by passive holding of a domain name. The case most commonly cited with regard to passive bad faith use is that of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, where the panel agreed to transfer the name <telstra.org>, even though none of the circumstances in paragraph 4(b)(i)-(iv) of the Policy indicating evidence of bad faith registration and use were fulfilled, and, although the panel decided that registration was in bad faith, the domain name was not in actual fact being used. The panel ordered the transfer because of the particular circumstances of the case, taken as a whole, namely the strong reputation of the Complainant’s trade mark, the Respondent’s failure to provide any evidence of actual or contemplated good faith use, the Respondent’s active steps to conceal its true identity, the Respondent’s provision of false contact details and the fact that there could be no plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.

However, the above-mentioned panel emphasized that the question of passive bad faith use could not be considered in the abstract, and could only be answered in respect of the particular facts of a specific case. In this particular set of circumstances the Panel feels that the facts do not warrant a finding of bad faith use through passive holding as, although the Complainant’s trade mark does indeed have a very strong reputation, the Disputed Domain Name does not incorporate the trade mark in its entirety and it is possible to envisage a legitimate active use by someone other than the Complainant (although how implausible such a use may actually be in reality is another matter). In addition, the Panel is unconvinced that the Respondent deliberately provided false contact details in order to conceal his identity.

The Panel would no doubt find quite differently if the website associated with the Disputed Domain Name offers, for example, counterfeit CHEVIGNON goods for sale or links to competitor websites, or indeed the Respondent engages in a pattern of registering domain names which are truncated forms of well known trade marks, but this is not borne out by the present facts. It should not be forgotten that the Policy is intended to deal with cases of cybersquatting. In this case the Panel does not feel that enough evidence has been supplied to merit a finding in accordance with the strict wording of the Policy that the Disputed Domain Name has been registered and is being used in bad faith. While this Panel agrees that a respondent’s failure to explain its motives for registering a contested domain name will often give rise to adverse conclusions, the Panel in the end finds that the particular record of this case does not rise to that level.

7. Decision

For all the foregoing reasons, the Complaint is denied.

David Taylor
Sole Panelist

Dated: August 16, 2005