{ "case_number": "CAC-UDRP-101792", "time_of_filling": "2017-12-06 08:35:44", "domain_names": [ "DAVIDOFF.INK" ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "Zino Davidoff SA" ], "complainant_representative": "BrandIT GmbH", "respondent": [ "Huang Jie \/ Huang Jie" ], "respondent_representative": null, "factual_background": "Complainant is a company incorporated in Fribourg, Switzerland and is a leading producer of prestige fragrances, handbags, eyewear, as well as exclusive timepieces, writing instruments and leather accessories and other goods that enjoy a high reputation. Complainant’s brands have been continuously used and marketed for over 30 years.\r\n\r\n\r\nComplainant is the owner of the registered trademark DAVIDOFF as a word mark and device in numerous of countries all over the world including in China where the Respondent resides. These trademark registrations predate the registration of the Disputed Domain Name.\r\n\r\nComplainant has also registered a number of domain names under generic Top-Level Domains (\"gTLD\") and country-code Top-Level Domains (\"ccTLD\") containing the term “Davidoff” and “Zino Davidoff” see for example, see for example, (created on 2002-12-16) < zinodavidoff.asia> (created on 2007-02-27), < davidoff.cafe> (created on 2016-08-23). ", "other_legal_proceedings": "The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name. ", "no_response_filed": "No administratively compliant Response has been filed. \r\n\r\nFACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT\r\n\r\nThe contentions of the Complainant can be summarised as follows:\r\n\r\n\r\n\r\ni) LANGUAGE OF PROCEEDINGS REQUEST:\r\n\r\nComplainant filed a language of proceedings request that the language of the proceeding should be English based on the following facts:\r\n\r\na)\tThe disputed domain name includes the Complainant’s mark DAVIDOFF. Complainant is a Swiss company operating internationally whose business language is English; \r\nb)\tRespondent has registered many domains with words in English, it is unlikely that Respondent is not at least familiar with the English language \r\nc)\tthe Domain Name is in Latin script rather than Chinese script\r\nd)\tIn addition, Respondent has chosen to register the domain name under the Top Level domain name “.ink” which is a commercial new gTLD and an English term, and is applicable to a broader audience than merely China. A more suitable TLD if only addressing the Chinese market would be the .cn extension. The proceedings will likely be put through unnecessary trouble and delay if Chinese were made the language of the proceeding and there would be no discernible benefit to the parties or the proceeding, in the circumstances, that may be gained by maintaining the default language. \r\n\r\nii) ABOUT COMPLAINANT AND THE BRAND DAVIDOFF\r\n\r\nComplainant is a company incorporated in Fribourg, Switzerland and is a leading producer of prestige fragrances, handbags, eyewear, as well as exclusive timepieces, writing instruments and leather accessories and other goods that enjoy a high reputation. Complainant’s brands have been continuously used and marketed for over 30 years and in 1984 Complainant launched perfumery and cosmetics and since then Complainant has launched watches, clothing, cognac, leather goods, glasses, writing instruments, coffee etc. and the business has been continuously expanded and the scope of the goods bearing the DAVIDOFF becomes wider and wider. \r\n\r\nComplainant’s activity in China\r\n\r\nComplainant and its trademarks enjoy a high reputation around the world due to Complainant’s long-term use and publicity. Complainant has continually and heavily invested in publicizing and advertising its trademarks around the world including China where Respondent is domiciled. Complainant’s goods are also often sold on the flights to and from China and appear among others in in-flight catalogues and magazines. Therefore numerous passengers (including a number of Chinese passengers) have a very convenient way to directly access Complainant’s goods. \r\n\r\nComplainant also publicizes and promotes its brands by sponsoring and organizing a variety of activities and events. China is one of Complainant’s fastest-growing and major markets. In 2012, Complainant had around two hundred stores\/counters throughout China's major cities (such as: Beijing Lufthansa Shopping Center, Beijing Joy City; Shanghai Parkson Grand Gateway Plaza; Shenzhen Glory Plaza, CITIC Plaza); Tang King Shopping Mall in Xi’An; Zhong Hang Jiu Fang Shopping Mall in Chengdu; New World Dept. Store in Yancheng; Xing Li Ying Hai Yuanlong Dept. Store in Guiyang; Yin Tai Dept. Store in Hangzhou; and Complainant’s products occupy a significant share of China’s market, which further proves the high reputation and goodwill enjoyed by Complainant and its trademarks\r\n\r\nOverview of trademark registrations:\r\n\r\nTrademark: DAVIDOFF – CHINESE TRANSLATION\r\nRegistration no: G467510 for DAVIDOFF \r\nClasses: 14, 15, 16, 18, 20, 21, 25 & 33\r\nDate of registration: 27.01.2012\r\nType of registration: National \r\n\r\nTrademark: DAVIDOFF (IR)\r\nRegistration no: 467510 \r\nClasses: 3, 14, 15, 16, 18, 20, 21, 25 33 & 34.\r\nDate of registration: 27.01.1982\r\nType of registration: IR\r\n\r\nTrademark: ZINO DAVIDOFF (IR)\r\nRegistration no: 467511\r\nClasses: 3, 14, 15, 16, 18, 20, 21, 25 33 & 34.\r\nDate of registration: 27.01.1982\r\nType of registration: IR\r\n\r\nComplainant is the owner of the registered trademarks DAVIDOFF & ZINO DAVIDOFF as a word mark and device in numerous of countries all over the world including in China where the Respondent resides. These trademark registrations predate the registration of the Disputed Domain Name.\r\n\r\nDue to extensive use, advertising and revenue associated with its trademarks worldwide, Complainant enjoys a high degree of renown around the world, including in China where Respondent is located. Complainant has previously successfully challenged several DAVIDOFF domain names through UDRP processes e.g. WIPO Case no: D2013-0410 Zino Davidoff SA vs. Yang Yong concerning the domain ; WIPO Case no: D2015-2318 Zino Davidoff SA vs. Tang Bin concerning the domain ; WIPO Case no: D2016-1027 Zino Davidoff SA vs. Guan Rang Guang concerning the domain \r\n\r\nComplainant has also registered a number of domain names under generic Top-Level Domains (\"gTLD\") and country-code Top-Level Domains (\"ccTLD\") containing the term “Davidoff” and “Zino Davidoff” see for example, see for example, (created on 2002-12-16) < zinodavidoff.asia> (created on 2007-02-27), < davidoff.cafe> (created on 2016-08-23). Complainant is using the domain names to connect to a website through which it informs potential customers about its trademarks and its products and services\r\n\r\nLEGAL GROUNDS:\r\n\r\ni) THE DOMAIN NAME IS IDENTICAL\r\n\r\nThe domain name www.davidoff.ink (hereinafter referred to as the “Domain Name”), registered on 06.10, 2017, directly and entirely incorporates Complainant’s well-known, registered trademarks DAVIDOFF & ZINO DAVIDOFF. The addition of the generic Top-Level Domains (gTLD) “.ink”, does not add any distinctiveness to the Domain Name. The Domain Name totally incorporates the trademark DAVIDOFF. In addition, it is generally accepted that the addition of the top-level suffix in the domain name (e.g., “.com”) is to be disregarded under the confusing similarity test. The Domain Name should be considered to be identical to the registered trademark DAVIDOFF. \r\n\r\nii) THE RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTEREST IN RESPECT OF THE DOMAIN NAME\r\n\r\n Respondent is commonly known by the Domain Name. The WHOIS information “Huang Jie” is the only evidence in the WHOIS record, which relates Respondent to the Domain Name .When entering the terms “ZINO DAVIDOFF”, “DAVIDOFF” and “CHINA” (where Respondent is located) in the Google search engine, the returned results point to Complainant and its business activity). \r\n\r\nThe Respondent could have easily performed a similar search before registering the Domain Name and would have quickly learnt that the trademarks are owned by Complainant and that the Complainant has been using its trademarks in several parts of the world, not to mention that DAVIDOFF is a well known mark in any case. Respondent has not by virtue of the content of the website, nor by its use of the Domain Name shown that they will be used in connection with a bona fide offering of goods or services. It is clear that the term DAVIDOFF has become distinctive and that the intention of the Domain Name is to take advantage of an association with the Complainant’s business.\t\t\r\n\r\nTHE WEBSITE \r\n\r\nAt the time of the filing of this Complaint, the Domain Name does not resolve to an active website. The Respondent has made no claims to either having any relevant prior rights of its own, or to having become commonly known by the Domain Name. Clearly, the Respondent is not known by the Domain Name, nor does the Respondent claim to have made legitimate, non-commercial use of the Domain Name. Moreover, Complainant had never authorized the Respondent to use its trademark in any form. \r\n\r\nRespondent has been granted several opportunities to present some compelling arguments that it has rights in the Domain Name but has failed to do so. This behavior coupled with the use of the Domain Name cannot be considered as legitimate use of the Domain Name.\r\n\r\niii) THE DOMAIN NAME WAS REGISTERED AND IS BEING USED IN BAD FAITH \r\n\r\nTHE DOMAIN NAME WAS REGISTERED IN BAD FAITH \r\n\r\nIt has to be highlighted that Complainant’s trademarks predate the registration of the Domain Name and Respondent has never been authorized by Complainant to register the Domain Name. It is inconceivable that the unique combination of DAVIDOFF in the Domain Name is not a deliberate and calculated attempt to improperly benefit from the Complainant’s rights. \r\n\r\nTHE DOMAIN NAMES ARE BEING USED IN BAD FAITH \r\n\r\nComplainant tried to contact Respondent on November 20, 2017 through a cease and desist letter. The letter was sent to the email address listed in the whois record and to the email address listed on the website associated with the Domain Name. In the cease and desist letter, Complainant advised Respondent that the unauthorized use of its trademarks within the Domain Name violated their trademark rights and Complainant requested a voluntary transfer of the Domain Name. Since no reply was received, Complainant sent a reminder on 20.11.2017. As a consequence, the following reply was received on the same day by Respondent:\r\n\r\n\"...\r\n\r\nDear Claire Kowarsky\r\n\r\n 邮件已收到，非常感谢您为此付出的真诚沟通！我是Davidoff的粉丝，对此收藏Davidoff的域名成了我的兴趣爱好，并不会做有损Davidoff的事情，如果Davidoff公司希望收购这个域名我非常愿意合作。您也知道我购买这个域名也花费了一点费用，Davidoff公司如果也真诚沟通的话希望能提一个比较合理的方案。\r\n\r\nThank you very much for your efforts and efforts for our cooperation，Best wishes for you ！\r\n\r\n-----------------------------------------------------------------------------------------------------------------------------------------------------------------\r\n\r\nElman Huang\r\n\r\nBusiness Director\r\nM & A trader\r\n\r\n...\"\r\n\r\nBelow the translation in English using Google Translator:\r\n\r\n“\r\nMail has been received, thank you for your sincere communication! I'm a fan of Davidoff, and it's my hobby to bookmark Davidoff's domain name, not to the detriment of Davidoff. If Davidoff hopes to acquire the domain name, I'd love to work together. You also know that I bought this domain also cost a little fee, Davidoff company if you also sincerely hope to be able to make a more reasonable proposal”.\r\n\r\nAfterwards, Complainant asked for a price and only after some emails, Respondent indicated the following at his email dated 22.11.17:\r\n\r\n\"... \r\n\r\nDear Claire Kowarsky\r\n\r\n再次非常感谢您为此付出的努力与真诚的沟通！我问了一下朋友，他们给的建议是人民币5万，我也不知道这个是否符合Davidoff公司的计划，还希望您可以帮助我们互动交流比较合理的方案。\r\n\r\n\r\nThank you very much for your efforts and efforts for our cooperation，Best wishes for you ！\r\n\r\n-----------------------------------------------------------------------------------------------------------------------------------------------------------------\r\n\r\n\r\nElman Huang\r\n\r\nBusiness Director\r\nM & A trader\r\n\r\n\r\n...\"\r\n\r\n\r\nBelow the translation in English using Google Translator:\r\n\r\n“Thanks again for your hard work and sincere communication! I asked my friends, they gave advice is 50,000 yuan, I do not know whether this is in line with the Davidoff company's plan, I hope you can help us interact more reasonable programs”.\r\n\r\nPlease note that 50,000 yuan is aprox 7,600USD. This conduct has been considered in previous cases as an additional evidence of bad faith due to the Respondent´s intention to unduly profit from the Complainant´s rights. Please see WIPO Case No. D2016-0771 Facebook, Inc. vs. Domain Admin. Privacy Protection Service Inc. d\/b\/a Privacy Protection.org\/ Ông Trần Huỳnh Lâm, where the Panel found that:\r\n\r\n“It also submits that the Respondent's offer to transfer the disputed domain name in return for a payment of USD 100,000 is a \"strong indication\" of the Respondent's intention to unduly profit from the Complainant's rights and constitutes additional evidence of bad faith”.\r\n\r\nSince the efforts of trying to solve the matter amicably were unsuccessful, Complainant chose to file a complaint according to the UDRP process. \r\n\r\nTHE WEBSITE\r\n\r\nAs noted previously, the Domain Name currently does not resolve to an active website. \r\n\r\nSome Panels have found that the concept of passive holding may apply even in the event of sporadic use, or of the mere “parking” by a third party of a domain name. \r\n\r\nIn the WIPO Case No. D2000-0003 Telstra Corporation Limited v. Nuclear Marshmellows the Panel established that the registration and passive holding of a domain name which has no other legitimate use and clearly references Complainant's trademark may constitute registration and use in bad faith. In the current case it is clear that Respondent has registered the Domain Name in bad faith by intentionally adopting Complainant’s widely known mark in violation of Complainant’s rights. \r\n\r\nFurther, the inaction in relation to a domain name registration can also constitute a domain name being used in bad faith and any attempt to actively use the Domain Name would lead to confusion as to the source, sponsorship of the Respondent´s web site among the internet users who might believe that the web site is owned or in somehow associated with the Complainant. \r\n\r\nFinally, Complainant’s International and Chinese trademark registrations predate Respondent’s Domain Name registration and the cease and desist letter was answered with a price for the transfer in excess of reasonable out of pocket expenses. These cumulative factors clearly demonstrate that Respondent should be considered to have registered and to be using the Domain Name in bad faith.\r\n\r\nPATTERN OF CONDUCT \r\n\r\nA pattern of conduct can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to trademarks. Here, it has to be highlighted that the Respondent using its official email address hjdear@126.com, as indicated in WHOIS Lookup record, has registered aprox. 396 domain names including well-known brands such as , , and Such pattern of abusive conduct constitutes evidence of bad faith.\r\n \r\nMoreover, The Respondent takes advantage of the DAVIDOFF trademark by intentionally attempting to attract visitors to the Respondent’s website 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 a product or service on the Respondent’s website or location.\r\n\r\nFrom the Complainant’s point of view, the Respondent intentionally chose the Domain Name based on a registered and well-known trademark in order to only use it for non-legitimate purposes. The conduct of the Respondent in registering domains incorporating other well-known trademarks demonstrates systematic bad faith behavior. \r\n\r\nTo summarize, the trademark DAVIDOFF is a well-known mark worldwide, including in China where the Respondent is located. Respondent bears no relationship to the trademarks and the Domain Name has no other meaning except for referring to Complainant's name and trademark. There is no way in which the Domain Name could be used legitimately by the Respondent. Inference of bad faith registration and use of the Domain Name may also be made from by the fact that the Respondent replied to the Complainant’s cease and desist letter requesting an unreasonably high price for the Domain Name. Further, the domain name is being passively held, an additional element of bad faith in accordance with the applicable cases described at this Complaint. Finally, the Respondent has shown a bad faith pattern of conduct through the registration of hundreds of domain names containing other well-known marks. \r\n\r\nConsequently, the Respondent should be considered to have registered and to be using the Domain Name in bad faith.\r\n", "rights": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy).", "no_rights_or_legitimate_interests": "The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii)of the Policy).", "bad_faith": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).", "procedural_factors": "The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.\r\n\r\n", "decision": "Accepted", "panelists": [ "Dawn Osborne" ], "date_of_panel_decision": "2018-01-04 00:00:00", "informal_english_translation": "Complainant is the owner of the registered trademarks DAVIDOFF, inter alia as a word mark and device in numerous countries all over the world including in China where the Respondent resides including the trade marks detailed below. These trademark registrations predate the registration of the Disputed Domain Name in 2017.\r\n\r\n\r\nTrademark: DAVIDOFF – CHINESE TRANSLATION\r\nRegistration no: G467510 for DAVIDOFF \r\nClasses: 14, 15, 16, 18, 20, 21, 25 & 33\r\nDate of registration: 27.01.2012\r\nType of registration: National \r\n\r\nTrademark: DAVIDOFF (IR)\r\nRegistration no: 467510 \r\nClasses: 3, 14, 15, 16, 18, 20, 21, 25 33 & 34.\r\nDate of registration: 27.01.1982\r\nType of registration: IR\r\n\r\n", "decision_domains": { "DAVIDOFF.INK": "TRANSFERRED" }, "panelist": null, "panellists_text": null }