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Parfümerie Douglas GmbH v. Khatnani S.A. [2005] GENDND 199 (31 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Parfümerie Douglas GmbH v. Khatnani S.A.

Case No. D2005-0002

1. The Parties

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

The Respondent is Khatnani S.A., of Las Palmas, Canarias, Spain, represented by Vincente Gonzalez, Las Palmas, Canarias, Spain.

2. The Domain Name and Registrar

The disputed domain name is <douglasshops.com> and is registered with the Registrar Arsys Internet, S.L. dba NICLINE.COM.

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2005. On January 4, 2005, the Center acknowledged the receipt of the complaint to the Complainant. On January 4, 2005, the Center transmitted by email to Arsys Internet, S. L. dba NICLINE.COM a request for registrar verification in connection with the domain name at issue. On January 5, 2005, Arsys Internet, S. L. dba NICLINE.COM 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. On January 18, 2005, the Center notified the Complainant of the rules concerning the language of the administrative proceedings and requested the complaint to be filed in Spanish. On January 21, 2005, the Center received a copy (by email) of the complaint in Spanish and the respective hard copy on January 25, 2005. 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 January 27, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2005. The Respondent filed a response in the Spanish language to the Center on February 14, 2005. On March 4, 2005, the Center received a copy of the response in English.

The Center appointed António L. De Sampaio as the Sole Panelist in this matter on March 10, 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.

On March 17, 2005, the Complainant, Parfümerie Douglas GmbH, sent to the Center a supplemental filing commenting on the answer of the Respondent, Khatnani S.A. The Panel has the sole discretion to decide whether or not to consider supplemental filings under the Rules, paragraph 10(d). The Panel has, therefore, decided to accept the supplemental filing of the Complainant and to take it into consideration when rendering its decision.

The relevant notice, together with a copy of the supplemental filing, submitted by the Complainant, was first sent to the Respondent on March 17, 2005, and later resent twice to the Respondent. It appears from the Respondent’s e-mail of April 12, 2005 that the Respondent has received the Complainant’s Supplemental Filing.

Finally,

- Considering that the parties involved are on one side a German corporation and on the other side a Spanish corporation;

- Considering that the parties should be treated with equality and that both parties have filed submissions in English;

the Panel under what is established in Rules, paragraph 11 (a) of the Rules determines that the language of the proceedings should be English and, consequently, the decision is also being rendered in English.

4. Factual Background

A. The Complainant is the regular owner of the following Mark Registrations which administrative status was duly confirmed by the Panel and duly proved, being therefore, non-contested facts:

- German Mark Registration No. 356.001 “DOUGLAS” registered on February 15, 1926, for goods of International Class 3;

- German Mark Registration No. 30340933 “DOUGLAS”, registered on November 21, 2003 for goods and services belonging to the following International Classes: 3, 4, 8, 9, 14, 18, 20, 21, 24, 25, 28, 41 and 44.

- German Mark Registration No. 386.943 “PARFÜMERIE DOUGLAS”, registered on May 26, 1928, for goods of International Classes 3 and 5.

- German Mark Registration No. 1143675 “DOUGLAS” registered on July 26, 1989, for goods of the following International Classes: 3, 8, 9, 14, 18, 21, 24 and 25;

- German Mark Registration No. 30150808 “PARFÜRMERIE DOUGLAS”, registered on October 19, 2001, for the goods and services of the following International Classes: 3, 8, 9, 14, 18, 21, 24, 25, 41 and 42.

- International Mark Registration (Madrid System) No. 464.042 “PARFÜMERIE DOUGLAS” initially registered on October 3, 1981, for goods in International Classes 3 and 5 and presently with the following designations (territorial extensions):

- Under the Madrid Agreement: AT, BX, CH, CZ, DE, ES, FR, HR, HU, IT, MC, PL, PT, RU, SI, SK.

- Under the Madrid Protocol: FI, JP, NO, SE.

- International Mark Registration (Madrid System) No. IR563235 “DOUGLAS” (device – special lettering) initially registered on July 4, 1990, for the goods of the following International Classes: 3, 8, 9, 14, 18, 21, 24 and 25 and presently, with the following designations (territorial extensions):

- Under the Madrid Agreement: AL, AT, BA, BG, BX, BY, CH, CN, CZ, DE, EG, FR, HR, HU, IT, LI, LV, MC, MD, MK, PT, RO, RU, SI, SK, UA, YU.

- Under the Madrid protocol: FI, GB, GR, IE, JP, LT, NO, SE and SG.

- Community Mark Registration (European Union) No. 2698231 “PARFÜMERIE DOUGLAS” registered on September 23, 2003, for goods and services of the following International Classes 3, 8, 9, 14, 18, 21, 25, 41 and 44.

B. The Respondent is the regular owner of the following Business Signs Registrations (“Rotulo de Establecimiento”, in Spanish legal terminology), which administrative status were duly proved, being therefore non-contested facts:

- Spanish Business Sign Registration No. R0145007 “DOUGLAS” (word) intended to identify the “retail of perfumery”; this registration was renewed on April 11, 2003, for a period of SEVEN years covering the geographical area defined by the LOCAL COUNCIL of San Bartolome de Tirajana, Gran Canaria, Canarias, Spain;

- Spanish Business Sign Registration No. R0209484 “DOUGLAS” (word) intended to identify the “retail of perfumery and cosmetic products”; this registration was renewed on April 14, 2003, for a period of SEVEN years, covering the geographical area defined by the LOCAL COUNCIL of JANDIA PAJARA, Gran Canaria, Canarias, Spain.

5. Parties’ Contentions

A. Complainant

I. The Complainant, PARFÜMERIE DOUGLAS GmbH, argues that the domain name in dispute is identical or at least confusingly similar to several mark Registrations covering goods and services owned by the Complainant.

II. The Complainant operates a well-known chain of perfumery stores in Germany and all over the world, including Spain.

III. The Complainant uses the name “DOUGLAS”, since 1969.

IV. The Complainant is the owner, in various countries, of numerous Mark Registrations containing the name “DOUGLAS”, duly identified.

V. The domain name <douglasshops.com> is nearly identical to the Marks owned by the Complainant.

VI. The domain name <douglasshops.com> is dominated by the element “douglas”, since the element “shops” is only a description for a salesroom.

VII. In the Complainant’s opinion ,the Respondent has no rights or legitimate interests in respect of the domain name.

VIII. The Complainant contacted the Respondent, on September 24, 2004, explaining the situation and claiming that the domain name <douglasshops.com> infringes the Complainant’s rights namely its several mark registrations.

IX. Furthermore, the Complainant states that the Respondent has used the mark “Parfümerie Douglas” as an advertisement in its homepage.

X. Finally, the Complainant also states that the Respondent has used and infringed the typical “DOUGLAS” script (in special lettering) registered internationally as a Mark.

XI. As a consequence of all the foregoing, the Complainant is of the opinion that the domain name in dispute was registered and is being used in bad faith as it was registered exclusively for the purpose of exploiting the reputation of the Complainant under the mark “DOUGLAS”, specially for perfumeries and perfumery products.

XII. Furthermore, regarding the question of the registration and use of the domain name in bad faith, the Complainant refers to the following facts:

(i) The island of Gran Canaria has been for decades, and still is, a very strong and permanent tourist destination, in particular for German citizens.

(ii) Therefore, as an example of bad faith behaviour the Complainant refers to the Respondent’s use of its “DOUGLAS” mark (device – special lettering), namely through the representation of this mark in a store façade, in a Spanish resort, it’s use in the Respondent’s homepage where not only said mark device was affixed but where is also included the German word “parfümerie”.

B. Respondent

(a) The Respondent Khatnani Sociedad Anonimaclaims that it was established as a Spanish Corporation in 1986 when it initiated its commercial activity in Spain and continues it up to the present date.

(b) The Respondent claims that the founder of the corporation was Mr. Dharambas Khatnani Douglas, of Spanish nationality.

(c) The Respondent claims that it has been carrying out its commercial activity in Spain, on a continuous basis for almost twenty years under the distinctive sign “DOUGLAS”, which is the corporation’s founder second surname.

(d) The Respondent claims that it is the owner of the Spanish registered Business Signs (“Rotulos de Establecimiento”, in Spanish legal terminology) No. R0145007 “DOUGLAS” (word) and No. R0209484 “DOUGLAS” (word).

(e) Said Business Signs, registered before the Spanish Patents and Trademark Office are both in force and are both intended to identify the commercial establishments of the Respondent acting in the field of perfumery and perfumes.

(f) The Respondent indicates that the present dispute with the Complainant is by no means new.

(g) In fact, the Respondent refers specifically to the attempts made by the Complainant, since 1999, to register the corporate name “DOUGLAS SPAIN S.A.”, for the retail in the field of perfumes and cosmetics in Spain.

(h) The Respondent states that, as a consequence of its judicial interventions, it has successfully obtained the rejection of the final registration of the Complainant’s intended trading name “DOUGLAS SPAIN, S.A.”.

(i) The Respondent also refers to the judicial decisions whereby International Mark Registration No. 563.235 “DOUGLAS and logo”, was refused protection in Spain for goods of International Classes 24 and 25 on the grounds of confusion with other marks (not belonging to the Respondent Khatnani Sociedad Anonima).

(j) The Respondent sustains the opinion that the present case is not a domain name clash, but rather a clash between its domain name and Trademarks registered in Germany.

(k) The Respondent confirms that the Complainant has effectively attempted to challenge the Respondent on the internet, however, the Respondent adds that the registration of domain names is generally-speaking governed by the principle of “first come first served basis”.

(l) The Respondent refutes the conclusion of the Complainant that the domain name in dispute was registered and has been used in bad faith.

(m) The Respondent denies that its website mentions either the Complainant itself or any of its products.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Respondent is the owner of two Spanish registered Business Signs protecting the word “DOUGLAS” and intended to identify the commercial establishments of the Respondent in the field of perfumery, perfumes and cosmetics.

The Respondent registered the domain name <douglasshops.com> invoking the interest in said registration due to its ownership of said Spanish Business Signs registrations.

The Complainant is the owner of several “DOUGLAS” marks and “PARFUMERIE DOUGLAS” Marks, registered in Germany as well as in many different countries, and all of them intended to identify perfumery, perfumes and cosmetics.

Since the expression “shops” and “perfumerie” are common words – mere generic indications of places and goods, respectively - , the Panel concludes that the real confrontation is between “DOUGLAS” and “DOUGLAS”, which reverts to say that the signs are exactly identical – they are in fact the same.

In the present case, the opposed expressions may be considered totally identical. The Panel thus concludes that the disputed domain name is confusingly similar to the Complainant’s Trademarks.

B. Rights or Legitimate Interests

The Respondent carries out its commercial activities since 1986 in two establishments in the Gran Canaria Island, Canarias, Spain, and to this effect has registered two Spanish Business Signs composed by the expression “DOUGLAS” and intended to identify said places of commerce related to perfumes and cosmetics.

This type of Spanish registrations is restricted to the Councils areas – administrative local authorities – where the establishments are physically located.

In real terms, the commerce carried out by the Respondent may be considered as restricted to certain and precise local areas. However, such places of business are very strong tourist destinations, attracting mainly German citizens.

The Complainant carries out its business activities in Germany and in several other countries. As a consequence, it has registered several Marks “DOUGLAS” in as many as 40 (forty) States, including Spain, for goods of International Class 3, namely perfumes, perfumery and cosmetics.

The Complainant has also registered the Mark “PARFÜMERIE DOUGLAS” in Germany and also in 24 (twenty four) other countries, including Spain.

The legitimacy of the Respondent’s interests depends, totally, on the fact that the creation and, mainly, the use of the domain name does not conflict with any other Industrial Property prior rights of third parties.

In the present case, the conflict exists, and existed when the Respondent registered the disputed domain name, and, therefore, the Panel considers that the Respondent has no legitimate interests on the domain name <douglasshops.com>.

Although having considered very carefully the judicial decisions of Spanish Courts brought by the Respondent as enclosures to its response, the Panel has decided to advance no comments whatsoever on said interesting national Court sentences.

C. Registered and Used in Bad Faith

I. Registered in Bad Faith

Considering that as referred in the official documentation attached to the complaint the domain name <douglasshops.com> was created (registered) on May 9, 2003, by the Respondent.

Considering that both parties were deeply involved, as far as 1999, in a judicial court action in Spain about the Corporate Name Douglas Spain, S.A.

It is therefore clearly conclusive that the Respondent when creating (registering) the domain name in question was already perfectly aware not only of the existence of the Complainant itself but also of the Mark rights which will be infringed by said domain name, in Spain, in Germany and in many other jurisdictions.

Therefore, the Panel concludes that there was bad faith on registering the domain name <douglasshops.com>.

II. Used in Bad Faith

The Complainant has invoked and proved that the Respondent has formally advertised under “Parfümerie Douglas” on its homepage of “www.douglasshops.com”.

A representation of an excerpt showing the façade of a shop was joined to the complaint. The Panel was also able to directly confirm this through an Internet search.

Besides the mark infringement of a registered mark belonging to the Complainant there is an unacceptable behaviour by the Respondent on using the German wording “Parfümerie” in an establishment located in Spain.

The Respondent, in said representation of the façade, has used the expression “DOUGLAS” under the design version of the respective special lettering, corresponding exactly to a Mark, registered by the Complainant.

Therefore, it is evident that the domain name in question was registered and is used for the purpose of unduly exploiting the reputation of the Complainant, specially before the German speaking tourists.

Being so, the Panel also concludes that there is a bad faith use of the domain name <douglasshops.com>.

7. Decision

The Panel concludes and decides that the Complainant has proven each of the three elements of paragraph 4(a) of the Policy. The domain name in dispute and registered by the Respondent is confusingly similar to the mark registrations of the Complainant, the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent’s domain name has been registered and is being used in bad faith.

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 <douglasshops.com> be transferred to the Complainant.

António L. De Sampaio
Sole Panelist

Dated: March 31, 2005