Alfred Dunhill, Ltd. v. Marcus Alexander, Fresco Australia Pty Ltd.
Case No. D2015-1475
1. The Parties
The Complainant is Alfred Dunhill, Ltd. of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Winston & Strawn LLP, United States of America (“United States”).
The Respondent is Marcus Alexander, Fresco Australia Pty Ltd. of Melbourne, Australia.
2. The Domain Name and Registrar
The disputed domain name is registered with 101domain, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2015. On August 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 24, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2015.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on October 26, 2015. 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 manufactures and sells a variety of products, including luxury leather goods, writing
implements, fragrances, timepieces, and clothing.
The Complainant sells its products in several retail stores, and through authorized retailers in many countries.
The Complainant owns the following trademarks, among others:
January 13, 1999
3, 9, 14, 18, 25, 33, 34.
May 12, 2000
3, 9, 14, 16, 18, 25, 33, 34, 42.
9, 14, 16, 18, 25, 33, 34.
United States of America
The disputed domain name was registered on April 23, 2014.
5. Parties’ Contentions
The Complainant argues the following:
- The domain name is identical or confusingly similar to a trademark or service
mark in which the Complainant has rights;
That the disputed domain name is confusingly similar to the DUNHILL marks because it fully incorporates the dominant element “Dunhill” of said marks and merely adds the generic industry term “Classic”, plus the generic Top Level Domain (“gTLD”) “.com”, which do not make said domain any less confusing for purposes of the analysis on confusing similarity.
- The Respondent has no rights or legitimate interests in respect of the domain name;
That the Respondent, who uses the email “email@example.com” and who uses the name “Marcus Alexander, Fresco Australia Pty Ltd.”, has never been commonly known by any of the DUNHILL marks nor any variations thereof, and has never used any trademark or service mark similar to the disputed domain name by which it may have come to be known, other than for infringing uses.
That the Respondent is using the disputed domain name to advertise products for sale that are either counterfeit knockoffs of the Complainant’s own products or second-hand products sold by the Complainant, both of which compete directly with the products sold under the Complainant’s marks, a fact that demonstrates the lack of a bona fide or legitimate business use.
That the Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations that are confusingly similar to any of the DUNHILL marks.
- The domain name was registered and is being used in bad faith.
That the Respondent registered the disputed domain name with either actual or constructive knowledge of the Complainant’s rights in the DUNHILL marks by virtue of the Complainant’s prior registration of those marks in Australia, the United Kingdom, and the United States.
That the fact that the disputed domain name has been used to offer for sale second-hand and/or counterfeit knock offs of the Complainant’s own products is a clear example of bad faith registration and use of said domain name.
That, since the website to which the disputed domain name resolves offers products for sale in competition with those offered by the Complainant, under the Complainant’s mark, the Respondent is conducting activities that are disruptive to the Complainant’s business and constitute conclusive evidence that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
In accordance with paragraph 4(a) of the Policy, the Complainant is requested to prove that each of the three following elements is satisfied:
(i) The disputed domain name is 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
As the Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all of the Complainant’s reasonable allegations (Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487).
The Complainant is the owner of trademark registrations for ALFRED DUNHILL and DUNHILL (stylized), among others.
The disputed domain name is confusingly similar to the Complainant’s trademarks ALFRED DUNHILL and DUNHILL because it wholly incorporates the DUNHILL trademark and reproduces the distinctive element of the ALFRED DUNHILL trademarks.
The addition of a generic term like “classic” has little effect on determining the confusing similarity between the disputed domain name and the Complainant’s trademarks. In this case, the mere addition of this term does not exclude the confusing similarity (see Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006 0189).
Moreover, the term “classic” is likely to increase confusion. This term, in association with a well-publicized mark such as DUNHILL/ ALFRED DUNHILL is likely to lead consumers to believe that this site is authorized or sponsored by the Complainant.
The addition of the gTLD “.com” in this case is immaterial for purposes of assessing confusing similarity. For purposes of this case, the Panel will not take into account the gTLD “.com”, because it has no legal significance (see Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. The first requirement of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where respondents may have rights or legitimate interests in the disputed domain name:
(i) Before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent (as individual, business, or other organization) has been commonly known by the disputed domain name, even if they have acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has argued that it has not granted, assigned, licensed, sold, transferred, or in any way authorized the Respondent to register or use its trademarks in any manner. This assertion was not denied by the Respondent (see Beyoncé Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431; Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272).
The Respondent did not submit any evidence or arguments to show actual bona fide use or preparations to use the disputed domain name with a bona fide offering of services, nor did it demonstrate itself to be commonly known as , or show that it is making a legitimate noncommercial or fair use of the disputed domain name.
The evidence provided by the Complainant shows that the Respondent is making a commercial use of the disputed domain name by selling products. The Respondent did not demonstrate any rights over the DUNHILL trademark, nor did it prove to be an authorized reseller of Complainant’s products, or a licensee of the Complainant.
On the other hand, the Complainant has shown that it is the rightful owner of the DUNHILL/ALFRED DUNHILL trademarks, some of which have been registered before the date of registration of the disputed domain name, in the place where the Respondent is apparently domiciled.
Since the Respondent is making a commercial use of the disputed domain name without permission or consent of the Complainant, and considering that the products sold at the website to which the disputed domain name resolves could be counterfeit and/or second-hand (according to the Complainant’s assertion, which was not rebutted by the Respondent), the Panel finds no rights or legitimate interests on the side of the Respondent.
The DUNHILL trademark does not have a generic or descriptive connotation, and is (therefore) a designation capable of being associated with the Complainant. The Respondent did not demonstrate any rights over the DUNHILL trademark, nor did it prove to be an authorized reseller of the Complainant’s products. The Panel has no evidence before it to suggest any reason as to why the Respondent might have any rights or legitimate interests regarding the disputed domain name (see Mandarin Oriental Services B.V. v. Control Alt Delete, WIPO Case No. D2000-1671).
The site to which the disputed domain name resolves is not accurately disclosing the registrant’s relationship with the trademark owner. In fact, the evidence provided by the Complainant suggests that the Respondent’s website could be thought to be associated with the Complainant and its products. Therefore, the Panel finds that the Respondent is unable to meet the Okidata test (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.3).
Previous UDRP panels have indicated that no bona fide offering can be found where the website to which the disputed domain name resolves is using the complainant’s logo and its trademarks without displaying a proper disclaimer. This Panel agrees (see e.g., Houghton Mifflin Co. v. Weathermen, Inc., WIPO Case No. D2001 0211; R.T. Quaife Engineering and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201; Easy Heat, Inc. v. Shelter Products, WIPO Case No. D2001-0344).
The Respondent is benefitting from the initial interest confusion created by the disputed domain name. In this case, the consumers/Internet users could assume that the disputed domain name (and the website to which it resolves) are related to the Complainant and its products, believing that they will be conducted to the Complainant’s website. Instead, they will actually be conducted to the site of the Respondent, a use that cannot be considered as a bona fide offering of goods (see CBS Broadcasting Inc., f/k/a CBS Inc v. Nabil Z. aghloul, WIPO Case No. D2004-0988 and Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206).
As other UDRP panels have stated, even if the Respondent had been selling the products of the Complainant, it was (and is) not entitled to register a domain name incorporating the Complainant’s trademarks creating confusion among the consuming public (see The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113).
Therefore, the second requirement of the Policy has been fulfilled.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to their 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 the Respondent’s website or location or of a product or service on its website or location.
The conduct of the Respondent constitutes a risk of confusion among consumers. Given the use made of the website associated with the disputed domain name, the Panel is satisfied that the Respondent knew about the Complainant’s DUNHILL/ALFRED DUNHILL trademarks at the time of registration (and knows about them now), and could have foreseen that Internet users searching for the Complainant’s websites and services could be confused when finding the Respondent’s site.
The evidence comprised on the record shows that the Respondent is causing the disputed domain name to resolve to a website for commercial gain, attracting and diverting Internet users. Given the circumstances of this case, this cannot be seen as a fair or legitimate use of the disputed domain name (see Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413).
With the above in mind, the Panel finds that the Respondent has intentionally created a likelihood of confusion between the Complainant’s trademarks and the disputed domain name (see e.g., Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007 1082; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Owens Corning v. NA, WIPO Case No. D2007 1143).
Moreover, it has come to the attention of the Panel that the Respondent registered the domain names and on the same day it registered the disputed domain name, a fact that demonstrates that the Respondent is aware of the Complainant’s trademarks, and has knowledge of the risk of confusion that its domain name registrations could cause.
Therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. The third element of the Policy has been met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Date: November 9, 2015