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Parfümerie Douglas GmbH v. Keyword Traffic [2005] GENDND 261 (7 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Parfümerie Douglas GmbH v. Keyword Traffic

Case No. D2005-0001

1. The Parties

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

The Respondent is Keyword Traffic, Blaine, Washington, United States of America.

2. The Domain Name and Registrar

The disputed domain name <douglasbeauty-douglas-parfuemerie.com> is registered with Intercosmos Media Group Inc d/b/a DIRECTNIC.COM.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2005. On January 4, 2005, the Center transmitted by email to Intercosmos Media Group Inc d/b/a DIRECTNIC.COM a request for registrar verification in connection with the domain name at issue. On January 4, 2005, Intercosmos Media Group Inc. d/b/a DIRECTNIC.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 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 January 18, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2005.

The Center appointed Isabelle Leroux as the sole panelist in this matter on February 21, 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 Complainant is a well-known company in the field of perfumery and has stores all over the world including the United States of America.

The Complaint owns in particular the following trademarks:

- The US trademark “DOUGLAS BEAUTY SYSTEM” no 2 785 243, filed on December 22, 1999, registered on November 25, 2003, for goods and services in classes 3, 5, 41 and 42;

- The US trademark “DOUGLAS” no 2 814 435 filed on May 31, 2000, registered on February 17, 2004, for goods and services in classes 3, 6, 9, 14, 18, 20, 21, 24, 25, 41 and 42;

- The US trademark “DOUGLAS BEAUTY ACADEMY” No. 2 607 332 filed on July 10, 2001, registered on August 13, 2002, for goods and services in classes 3, 41 and 42;

- The US trademark “PERFUMERY DOUGLAS” no 2 806 273, filed on June 20, 2002, registered on January 20, 2004, for goods and services in classes 3, 8, 9, 14, 18, 21, 24, 25, 41 and 44;

- The Community trademark “PERFUMERY DOUGLAS” no2 698 231, filed on May 15, 2002, registered on September 23, 2003, for goods and services in classes 3, 8, 9, 14, 18, 21, 24, 25, 41 and 44;

- The International trademark “PARFüMERIE DOUGLAS”, no WO464042, registered on October 3, 1981, for goods in classes 3 and 5.

The Respondent has registered on July 27, 2003, the domain name <douglasbeauty-douglas-parfuemerie.com>.

5. Parties’ Contentions

A. Complainant

Firstly, the Complainant submits that the domain name <douglasbeauty-douglas-parfuemerie.com> is confusingly similar to the trademarks in which the Complainant has rightS for the following reasons.

The Complainant operates a well-known chain of perfumery stores all over the world, including the United States of America.

The Complainant has used the name “Douglas” since 1969 and owns several trademarks containing the elements “Douglas”, “Parfümery Douglas” and “Douglas Beauty”.

The domain name <douglasbeauty-douglas-parfuemerie.com> is nearly identical to the trademarks owned by the Complainant.

The goods as shown on the web page are also identical since the Respondent has advertised several beauty and perfumery products on “www.douglasbeauty-douglas-parfuemerie.com”.

The print of the formal homepage “www.douglasbeauty-douglas-parfuemerie.com” reveals that the Respondent has advertised several beauty and perfumery products on this website.

Furthermore, the Complainant also submits that the Respondent has no rights or legitimate interests in respect of the domain name in dispute.

The Complainant submitted a letter to the Respondent explaining that the registration and use of the domain name <douglasbeauty-douglas-parfuemerie.com> infringes the Complainant’s rights.

The Respondent has not defended its position since he has not reacted to this letter. However, after receipt of such letter, the Respondent has deleted the former content on the website, so that the website connected to the domain name is not accessible at the present time.

Finally, the Complainant submits that the dispute domain name was registered and is being used in bad faith by the Respondent.

The domain name <douglasbeauty-douglas-parfuemerie.com> was registered exclusively for the purpose of exploiting the reputation of the Complainant especially under the trademarks “Douglas”, “Douglas Beauty” and “Parfümerie Douglas” for beauty and perfumery products.

It emerges from this fact that the domain name was registered and used in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:

“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it seems applicable.”

Paragraph 4(a) of the Policy states that, for a complaint to be granted, the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and

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

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

A. Identical or Confusingly Similar

The domain name <douglasbeauty-douglas-parfuemerie.com> is made up of the Complainant’s trademarks “DOUGLAS BEAUTY SYSTEM”, “DOUGLAS BEAUTY ACADEMY”, “DOUGLAS”, “PARFüMERIE DOUGLAS” and “PERFUMERIE DOUGLAS” on which the Complainant hold a number of valid registrations.

The disputed domain name is similar to the Complainant’s trademarks since it consists in the use of several identical and similar Complainant’s prior trademarks.

Furthermore, the repetition of the trademark “DOUGLAS” within the disputed domain name strengthens the likelihood of confusion between the disputed domain name and the Complainant’s prior trademarks since its has a distinctive character in respect with the products referred within the registration.

Though the disputed domain name is not identical to the trademarks owned by the Complainant, it is confusingly similar to the Complainant’s trademarks.

The Panel finds that the Complainant has proven that the domain name in dispute is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The Respondent of the disputed domain name has responded to the letter sent by the Complainant on October 11, 2004, and has not filed any Response to the Complaint filed. Consequently, the Respondent has not alleged any facts or elements to justify prior rights or legitimate interests of the said domain name.

The Complaint does not appear to have authorized the Respondent to use its trademarks “DOUGLAS BEAUTY SYSTEM”, “DOUGLAS BEAUTY ACADEMY”, “DOUGLAS”, “PARFüMERIE DOUGLAS” and “PERFUMERIE DOUGLAS” and in particular to register a domain name composed of the Complainant’s trademarks.

Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights and interests in a disputed domain name by showing:

(i) “before any notice to you of the dispute, your use of, or demonstrate preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and 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 marks 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 at issue”.

The Respondent chose not to file a Response demonstrating its rights and interests in the domain name in dispute.

Thus, the Panel concludes that the Respondent has no rights or legitimate interests, within the meaning of paragraph 4(a)(ii) and (c)(i-iii) of the Policy in respect of the disputed Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out that certain circumstances may, “in particular but without limitation”, be evidence of bad faith.

In that case, the Panels find that the Complainant’s trademarks are not only distinctive but also used in the United States where the Respondent is located.

The Respondent has not alleged any facts or elements to justify prior rights or legitimate interests in the said domain name.

Though the Complainant invokes the fact that the disputed domain name used to lead to a website promoting and advertising several beauty and perfumery products, such element will not be taken into account in the analysis of the bad faith.

As a matter of fact, the Panel finds that the Complainant does not bring sufficient elements proving that the disputed domain name used to lead to a website which promotes competitor’s websites.

Indeed, within the web pages provided by the Complainant as Annex 4, it is impossible to establish that the domain name <douglasbeauty-douglas-parfuemerie.com> used to lead to the print out provided.

Finally, the Panel agrees with the Complainant to find that at the date of the Complaint, the disputed domain name leads to a web page with no content.

And the absence of development of any website using the domain name in dispute or the absence of any other good faith use of the domain names are elements of the bad faith of the Respondent.

As a matter of fact, many Panels held that the “use in bad faith” is not limited to positive actions so that the passive holding of a domain name can constitute also another ground of use of a domain names in bad faith (see Telstra Corporation Limited v. Nuclear Marsmallows WIPO Case No. D2000-0003 and eBay Inc v. Sunho Hong WIPO Case No. D2000-1633; Revlon consumer Products Corporation v. Domain Manager, Page Up Communications, WIPO Case No. D2003-0602).

Thus, the Panel concludes that the disputed domain name was registered and is being used in bad faith.

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, <douglasbeauty-douglas-parfuemerie.com> be transferred to the Complainant.

Isabelle Leroux
Sole Panelist

Dated: March 7, 2005