Azzaro perfumes wins 14-year-old domain Azzaro.com after refilling a 13 year old UDRP complaint

Loris Azzaro BV of Apeldoorn, Netherlands that produces the popular Azzaro perfumes just won a UDRP complaint (D2013-1780) for the 14 year old domain Azzaro.com. The interesting part is that this UDRP complaint was a refiling of a previous complaint, the decision of which is recorded in Loris Azzaro BV, SARL v. Asterix and Mr De Vasconcellos, WIPO Case No. D2000-0608. The complaint was denied in the 2000 case.

The Respondent was in both complaints Mr. Vasconcellos of Rio de Janeiro, Brazil and in both complaints he did not file a response.The Panelist John Swinson noted that “This does not automatically result in a decision in favor of the Complainant (see e.g., Cynthia Ann Crawford v. Julian S. Garcia, WIPO Case No. D2012-2454). However, the Panel may draw appropriate inferences from the Respondent’s default.”

Mr. Vasconcellos seems to have some sort with affiliation with “LINECOM Trading Co., Ltd’s Internet Team” and dreamwiz.com.

Another interesting fact is that the domain Azzaro.com has been expired since September.

In a decision dated September 4, 2000, the prior panel denied the complaint on the basis that there was not sufficient evidence before the prior panel in relation to bad faith use or registration. At the time of the prior complaint, the Disputed Domain Name resolved to a website that was “under construction”. It now contains links to various websites that advertise and sell perfumes and cosmetics.

“A “refiled complaint” is “a complaint respecting a domain name that was the subject of a previous UDRP complaint involving the same complainant and respondent who are involved in the subsequently filed complaint” (see The Trustees of the University of Pennsylvania v. Moniker Privacy Services, Motherboards.com, WIPO Case No. D2007-0757 and cases cited therein). Previous UDRP panels have held that a refiled complaint may only be allowed in “exceptional circumstances” (see, e.g., Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0703 and Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490). Panels have drawn a distinction between refiled complaints relating to (a) acts forming the basis of the original complaint and (b) acts occurring after to the decision on the original complaint. Here, the Complaint falls within the latter category. The Complainant argues that the Complaint should be accepted based on the change in the content of the Respondent’s website, and the steps the Respondent took to “cover his identity”.

The principles to apply when determining whether to accept a refiled complaint are outlined in The Trustees of the University of Pennsylvania v. Moniker Privacy Services, Motherboards.com, WIPO Case No. D2007-0757. They are as follows:

(i) the burden of establishing whether the refiled complaint should be accepted rests on the refiling complainant;

(ii) the refiling complainant’s burden is high; and

(iii) the grounds that allegedly justify acceptance of the refiled complaint should be clearly identified by the refiling complainant.

Where the refiled complaint concerns acts occurring after the original complaint and decision, the complainant must prove that the “refiled complaint constitutes a ‘new truly action’ under the Policy, and not just an application for readjudication of the previous complaint” (see The Trustees of the University of Pennsylvania v. Moniker Privacy Services, Motherboards.com, WIPO Case No. D2007-0757). Accordingly, the Complainant must independently prove all the elements of paragraph 4(a) of the Policy.

In this case, the new facts and circumstances outlined in the Complaint are relevant to the issue of the Respondent’s bad faith use of the Disputed Domain Name. As such, the Panel finds that the Complaint can be considered a “truly new action”. Moreover, a significant period of time has elapsed since the original complaint was filed, and the Respondent has made no submissions that this Complaint should not be considered accepted, and these are also factors that this Panel considers to be relevant to this issue. In view of the above, the Panel accepts the Complaint.”

In the discussion the Panelist said that “The Respondent had the opportunity to demonstrate its rights or legitimate interests in respect of the Disputed Domain Name, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.”

“Paragraph 4(b)(iv) of the Policy states that the following is evidence of registration and use of a domain name in bad faith: “by using the domain name, you have intentionally attempted to attract for commercial gain, Internet users to your website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location of a product or service on your website or location”. Thus, bad faith use as set out in paragraph 4(b)(iv) is sufficient to demonstrate bad faith registration and bad faith use for the purposes of the third element of the Policy.

The website operated by the Respondent at the Disputed Domain Name displays “click-through” links to websites selling the goods of the Complainant’s competitors. The Panel infers that some Internet users, once at the Respondent’s website will follow the provided links and “click-through” to these websites. The Respondent will earn “click-through” linking revenue as a result. It is well established that where a domain name is used to generate revenue in respect of “click-through” traffic, and that traffic has been attracted because of the association of the domain name with a complainant, such use amounts to use in bad faith (see, e.g., Incase Designs Corp. v. Juliane Kuefer, WIPO Case No. D2012-2020 and cases cited therein).

Additionally, the Panel infers that by changing his details to simply state “Personal” the Respondent is attempting to conceal his identity. This is further evidence of bad faith.

The Respondent had the opportunity to provide evidence of good faith use of the Disputed Domain Name but failed to do so. The Panel infers from this failure to respond that the Respondent could not provide any such evidence (see, e.g., Paris Hilton v. Turvill Consultants, WIPO Case No. D2012-0965 and cases cited therein).

In light of the above, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith as defined in paragraph 4(b)(iv) of the Policy.”

“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 <azzaro.com> be transferred to the Complainant.”