Zino Davidoff SA and Davidoff & Cie
SA v. Jang-il Kim
Claim Number: FA0108000099381
PARTIES
Complainant
is Zino Davidoff SA and Davidoff &
Cie SA, Switzerland (“Complainant”) represented by Claudia Schawalder, of Meisser
& Partners. Respondent is Jang-il Kim, Pusan, Korea
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <davidoffcoolwater.com>, registered with Network Solutions.
PANEL
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.
Judge Ralph Yachnin, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 22, 2001. The
Forum received a hard copy of the Complaint on
August 23, 2001. Network
Solutions confirmed by e-mail to the Forum that the domain name <davidoffcoolwater.com> is registered with Network
Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that
Respondent is bound by the Network Solutions 5.0 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
August 30, 2001, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
19, 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@davidoffcoolwater.com 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
September 26, 2001, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin 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
The
<davidoffcoolwater.com> domain name is identical to
Complainant’s famous DAVIDOFF COOL WATER trademark.
Respondent has no rights or legitimate interests in respect
to the <davidoffcoolwater.com> domain name.
Respondent registered and used the <davidoffcoolwater.com> domain name in bad faith.
B.
Respondent
No
Response was received.
FINDINGS
Since 1911, Complainant has used its
famous DAVIDOFF mark in connection with its various products, including cigars,
leather articles, perfumery, and cognac.
Since 1988 Complainant has licensed another entity to manufacture and
sell the DAVIDOFF COOL WATER and other men’s cosmetics. Complainant registered the DAVIDOFF COOL
WATER mark in Korea, as an international registration, on November 18,
1987. Complainant has also registered
this mark in several other countries including, but not limited to, the United
States, Germany, and Egypt.
Respondent registered the <davidoffcoolwater.com>
domain name on October 25, 1999. On
March 21, 2001, the disputed domain name was offered for sale by Respondent on
its website. Furthermore, Respondent’s
attorney indicated to Complainant that Respondent would not transfer the
disptued domain name without making an acceptable offer to Respondent. Respondent uses the disputed domain name as
a portal, to link Internet users to websites offering competing products of
Complainant.
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 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.
Identical and/or Confusingly Similar
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward to
demonstrate any rights or legitimate interests in the <davidoffcoolwater.com> domain name. See
Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (stating
that “In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”); see also
Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that
absent any evidence of preparation to use the domain name for any legitimate
purpose, the burden of proof lies with the Respondent to demonstrate that he
has rights or legitimate interests). Furthermore,
there is a presumption that Respondent has no rights or legitimate interests
with respect to the domain name in dispute where Respondent fails to submit a
response. 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”).
Respondent’s
registration and use of the <davidoffcoolwater.com> domain name fails to demonstrate
use in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i). Using the disputed
domain name to redirect Internet users to websites offering similar products is
not a bona fide offering of goods or services. Vapor Blast Mfg. Co. v. R
& S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding
that Respondent’s commercial use of the domain name to confuse and divert
Internet traffic is not a legitimate use of the domain name).
Furthermore, Respondent’s use of the
disputed domain name is not a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii) where the Respondent trades off the fame of Complainant’s
marks to lure Internet users to his website for commercial gain. See
Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding no rights or legitimate interests where (1) Respondent is not a
licensee of Complainant; (2) Complainant’s prior rights in the domain name
precede Respondent’s registration; (3) Respondent is not commonly known by the
domain name in question).
The Panel therefore concludes that
Respondent does not have any rights or legitimate interests in the <davidoffcoolwater.com> domain
name and that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Furthermore,
Respondent’s use of the <davidoffcoolwater.com> domain name as a
portal to direct Internet users to competing websites, assumedly for commercial
gain, evidences bad faith pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14,
2001) (finding bad faith where Respondent used domain name, for commercial
gain, to intentionally attract users to a direct competitor of Complainant).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three of the
elements under the ICANN Policy, the Panel concludes that the requested relief
should be hereby granted.
Accordingly,
it is Ordered that the <davidoffcoolwater.com>
domain name be transferred from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 1, 2001
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