Parfums Christian Dior S.A. v. Spa Dior
Claim Number: FA1003001316366
Complainant is Parfums Christian Dior S.A. (“Complainant”), represented by Marcel
Naud, of Leger Robic Richard, L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <spadior.com> and <spa-dior.com>, registered with Network Solutions, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 30, 2010.
On March 31, 2010, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <spadior.com> and <spa-dior.com> domain names are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 April 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com and firstname.lastname@example.org. Also on April 7, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 27, 2010.
On May 5, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
- Complainant is a world famous company founded by the renowned French designer Christian Dior. In addition, Complainant is part of a larger corporation engaged in the sale of perfumes, and contributed a large portion of the €290 Million in profits earned by that corporation in 2008.
- Complainant became involved in the marketing of perfumes as far back as 1948 and possesses dozens of registered trademarks around the world that involve the mark DIOR.
In 2008 alone, more than €179 Million were spent on advertising Complainant’s trademarks throughout the world.
- Complainant is also associated with spas in many countries throughout the world under the trademark DIOR INSTITUTE.
- Additions of the word “spa” and the gTLD “.com” in the disputed domain names, <spadior.com> and <spa-dior.com>, do not distinguish them from the basic DIOR mark. This is especially true because of Complainant’s association with spa services. As a result, the disputed domain names are at least confusingly similar to Complainant’s registered marks.
- Complainant has never authorized Respondent to use Complainant’s marks, or a confusingly similar mark, for any purpose. Respondent does not do business as Spa Dior and, when it does so, it is without authorization from Complainant. In fact, there is evidence that Respondent has agreed not to be known as the disputed domain names.
- Although Respondent registered a
business name, “Spa Di’or”, identical to the disputed domain names, any
offering of goods or services by Respondent prior to this dispute are contrary to Complainant’s trademark rights in
- On November 15, 2005, without knowledge of the disputed domain names, Complainant sent Respondent a demand letter claiming trademark infringement. Afterwards, Complainant initiated legal action in the Federal Court of Canada against Respondent. During settlement negotiations, Complainant learned of the disputed domain names and asked for a transfer of rights. However, although the action was settled as to the trademark infringement causes, Complainant was never able to acquire ownership of the names because of Respondent’s excessive purchase price demands.
- Respondent is not making noncommercial or fair use of the disputed domain names.
- Respondent registered and is using the disputed domain names in bad faith. Due to the fame of Complainant’s marks, Respondent had full knowledge of them when registering the disputed domain names. Moreover, Respondent attempted to exact a sum far in excess of its registration costs for the disputed domain names. Respondent rejected Complainant’s offer of five times that amount for the names during negotiations in connection with the lawsuit mentioned above.
- Respondent was well aware that the name “Spa Dior” would be logically related to Complainant by the public.
- Respondent used the disputed domain names to attract commercial gain when internet users accessing those names were re-directed to Respondent’s www.spadioro.com website where Respondent’s products and services are advertised.
- The disputed domain names are not identical to any trademarks owned by Complainant. Also none of Complainant’s marks are associated with spa services, only perfumes, cosmetics, hair dressings and beauty salon services. In fact, Complainant’s beauty salon services, those most akin to spa services, were started in 2008 and not 2005 as claimed by Complainant.
- Because Complainant’s trademarks are diluted in the world market, their ambit of protection should be reduced. For this and other reasons, the disputed domain names are not confusingly similar to Complainant’s marks.
- Respondent has complied in good faith with all requirements of it under the Settlement Agreement entered into by Complainant and Respondent. Specifically, Respondent’s use of the disputed domain names to provide information relating to health and spas is not forbidden by that agreement. Such use in a noncommercial and fair use of those names. There is no intent to gain commercially by misleading internet users or to tarnish Complainant’s trademarks.
- Complainant concedes that Respondent registered the business name “Spa Dior” in September, 2004. Under said name, Respondent engaged, prior to this dispute, in a bona fide offering of goods and services. At the time that the disputed domain names were registered, Respondent conducted business under the name “Spa Di’Or” (suggesting spa of gold), and the disputed domain names were appropriate for Respondent to register as the apostrophe between “Di” and “Or” could not be reflected in a domain name.
- Currently, Respondent operates under the business name “Spa Di’Oro” as authorized under the Settlement Agreement. Thus, Respondent has rights and legitimate interests in the disputed domain names.
- Respondent’s refusal to sell the disputed domain names during settlement negotiations with Complainant is evidence that Respondent lacked the intent to register the names for sale to Complainant. Furthermore, Respondent is not guilty of falling under any circumstance listed in Policy paragraph 4(b) in the registration and use of the disputed domain names.
- Respondent is not a cyber-squatter but a small legitimate business that did not register or use the disputed domain names in bad faith.
Complainant is part
of a large corporation based in
Respondent is a Canadian company that registered the disputed domain names, <spadior.com> and <spa-dior.com>, on July 13, 2005. Respondent uses the names in connection with its website related to spa services.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
furnished the Panel with appropriate evidence (Annex 6) of its many valid
national registrations of trademarks that incorporate the mark DIOR. Most pertinently – as the Respondent is located in
disputed domains <spadior.com>
and <spa-dior.com> fully
incorporate Complainant’s trademark DIOR, neither is exactly the same as that
mark. However, the differences, the
addition of the terms “spa” and “spa-” (along with the obligatory gTLD “.com”),
respectively, are not so great so as to eliminate the likelihood that the names
would appear confusingly similar to the mark in the minds of average internet
users. Many previous UDRP panels have
held that the simple addition of generic words or hyphens does not prevent
confusing similarity between domain names and trademarks. In this case, the similarity is heightened
because Complainant’s business, if not precisely involved with spas, touches on
products that might naturally be found in spa settings. For these reasons, the Panel concludes that
the disputed domain names are at least confusingly similar to Complainant’s
trademark. See Starwood Hotels & Resorts Worldwide, Inc. v.
Consequently, the Panel finds that Complainant has satisfied its burden to prove that the disputed domain names are identical or confusingly similar to a trademark in which Complainant has rights.
Paragraph 4(c) of the Policy enumerates three specific ways in which a respondent may establish rights or legitimate interests in a dispute domain name:
(i) before any notice to [respondent] of the dispute, [respondent’s] use 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) [respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [respondent has] acquired no trademark or service mark rights; or
(iii) [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.
Respondent contends that prior to registration of the disputed domain names in July 2005, and certainly prior to the present dispute, Respondent operated spa services under the business name “Spa Di’Or”. Apparently, Respondent may have also registered the business name “Spa Dior” prior to those dates but, in any event, Complainant concedes at least that, after lengthy settlement negotiations between the parties, Respondent was and is still entitled to use and conduct spa operations under the business name “Spa Di’Oro”. Thus, it would appear to the Panel that Respondent was using the disputed domain names in the furtherance of legitimate spa offerings prior to this dispute and has thus satisfied the criterion cited in paragraph 4(c)(i) above.
Moreover, the Panel cannot help but conclude that a business named “Spa Di’Or” or “Spa Di’Oro” might be commonly known as either of the disputed domain names, <spadior.com> or <spa-dior.com>, because of the close similarity of lettering and sound. As Respondent correctly contends, the apostrophe appearing in its business name cannot be duplicated in a domain name. Furthermore, the apostrophe does not affect the pronunciation of the business name itself. As a result, the Panel also determines that Respondent has satisfied the criterion set forth in paragraph 4(c)(ii).
Complainant’s contentions in the
present case appear to the Panel to revolve primarily around the notion that
Respondent’s operations have been and/or are in violation of
Accordingly, the Panel finds that Complainant has failed to sustain its burden to prove that Respondent has no rights or legitimate interests in the disputed domain names.
As Complainant has failed to sustain its case relative to paragraph 4(a)(ii) of the Policy, the Panel need not consider whether the disputed domain names were registered and are being used in bad faith.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
A. Foster, Panelist
Dated: May 20, 2010
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