Davidoff &
Cie SA v. Paul Darnell o/b/o Cuban Cigars International
Claim Number: FA0105000097331
PARTIES
Complainant is Davidoff & Cie S.A., Geneva, Switzerland (“Complainant”) represented by Ralph Gauger, of Zuazo Gauger Maldonado & Asociados. Respondent is Paul Darnell o/b/o Cuban Cigars International, Malaga, Spain (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <davidoffcigars.net> registered with Register.com.
PANEL
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 30, 2001; the Forum received a hard copy of the Complaint on June 8, 2001.
On May 31, 2001, Register.com confirmed by e-mail to the Forum that the domain name <davidoffcigars.net> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 9, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@davidoffcigars.net by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On July 12, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant urges that the <davidoffcigars.net> domain name is confusingly similar to Complainant's various registered trademarks and that Respondent does not have any rights to or legitimate interests with respect to the <davidoffcigars.net> domain name. Complainant also contends that Respondent registered and used the domain name <davidoffcigars.net> in bad faith.
B. Respondent did not file a response in this proceeding.
FINDINGS
Complainant produces and sells tobacco products internationally. Complainant's products include some of the most famous cigars worldwide. Complainant has held numerous trademarks with respect to the production, promotion and distribution of its various tobacco products since as early as 1970. Each trademark is registered with the Spanish Office of Patents and Marks. In addition, Complainant’s sister company ZINO DAVIDOFF is owner of several more DAVIDOFF registrations currently in force.
Respondent registered the <davidoffcigars.net> domain name on April 25, 2000. Respondent uses the <davidoffcigars.net> domain name to sell Complainant's world-famous cigar products.
DISCUSSION
Paragraph
15(a) of the Rules instructs this Panel to “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 deems applicable.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has established rights to the DAVIDOFF mark through its multiple trademark registrations. The <davidoffcigars.net> domain name contains in its entirety the Complainant’s well-known DAVIDOFF mark and it is therefore confusingly similar to Complainant's mark. The combination with the generic description of Complainant's best-known product, cigars, does not affect the confusing similarity holding. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusingly similarity).
The Panel finds
that Complainant established rights in the DAVIDOFF mark and that the domain
name in issue is confusingly similar to Complainant’s DAVIDOFF mark. Policy ¶ 4(a)(i).
Complainant established it rights to and legitimate interests in the DAVIDOFF mark in the papers of this proceeding. Respondent has not come forward to demonstrate it has any rights to or legitimate interests in the mark that is contained in its entirety within the <davidoffcigars.net> domain name. When a Respondent fails to file a response in a proceeding that challenges a domain name, a presumption rises that the Respondent has no rights or legitimate interests with respect to the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). A Respondent’s failure to appear also permits the Panel to take as true all allegations set out by the Complainant. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
The record also permits the inference that Respondent is not commonly known by the DAVIDOFF mark and Respondent has not come forward in this proceeding to establish that it is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark or never applied for a license or permission from Complainant to use the trademarked name).
Respondent is using the <davidoffcigars.net> domain name to sell Complainant's product. This is not a legitimate noncommercial or fair use of the domain name as provided by Policy ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
In light of the above, Respondent has no rights or legitimate interests in the <davidoffcigars.net> domain name. See Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding “that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainant’s <THE BODY SHOP> trademark and service mark”).
Accordingly, the Panel finds that Complainant established that it has rights to and interests in the mark contained in its entirety within the disputed domain name and that Respondent has no such rights. Policy ¶ 4(a)(ii).
Complainant urges that Respondent acted in bad faith in registering and using Complainant’s registered mark in the domain name in issue. Respondent registered and used the <davidoffcigars.net> domain name to offer Complainant's product online. The record permits the inference that Respondent’s registration and use of the disputed domain names is likely to cause confusion and to deceive consumers into mistakenly believing that Respondent’s web sites and associated products and services are offered, authorized, sponsored by, or are otherwise connected, associated, or affiliated with Complainant. See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).
Based on the totality of the circumstances here and all of the above, the Panel finds that Respondent registered and used the domain name in issue in bad faith. Policy ¶ 4(a)(iii).
DECISION
Having established all three elements under the ICANN Policy, the Panel concludes that the requested relief should be granted. Accordingly, it is Ordered that the <davidoffcigars.net> domain name be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 23, 2001.
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