WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Roland Mouret v. Digi Real Estate Foundation Case No. D2009-1432 1. The Parties
Complainant is Roland Mouret of United Kingdom of Great Britain and Northern Ireland represented by Field Fisher Waterhouse of United Kingdom of Great Britain and Northern Ireland.
Respondent is Digi Real Estate Foundation of Panama. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2009. That day, the Center transmitted by e-mail to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name. On October 27, 2009, Moniker Online Services, LLC transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on November 18, 2009.
The Center appointed Robert A. Badgley as the sole panelist in this matter on November 24, 2009. 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
Complainant is a well-known fashion designer who has always used his own name (Roland Mouret) to identify and distinguish his fashion designs and the women's garments sold pursuant to those designs. Complainant began to acquire widespread attention on a regular basis in the late 1990s. Annexed to the Complaint are numerous examples of extensive and favorable press coverage for Complainant and his designs. The Annexes to the Complaint also include examples of the garments that are marketed under the ROLAND MOURET mark.
Respondent registered the Domain Name on July 21, 2003. The website to which the Domain Name resolves features hyperlinks accessible on hypertext such as “Buy Roland Mouret Online.” In addition, there are links to other fashion-related websites, including those accessible on hypertext such as “Gucci Official Site,” “DKNY at Net-a-Porter,” and “Diane Von Furstenberg – Shop the New Fall 2009 Collection.” Complainant alleges that Respondent derives click-through revenue from the website.
Respondent has been held in bad faith in numerous prior cases under the Policy, and several such cases have been brought to the Panel's attention by Complainant. 5. Parties' Contentions A. Complainant
Complainant's factual contentions are set forth in the “Factual Background” section above. These contentions are supported with documentary evidence annexed to the Complaint, and undisputed by Respondent. Complainant's arguments will be discussed in the “Discussion and Findings” section below. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant has established unregistered trademark rights in his name ROLAND MOURET, through extensive use as a source identifier for Complainant's fashion designs and garments. The record supports this conclusion, and Respondent has not disputed it.
The Domain Name incorporates Complainant's mark in its entirety, without adornment, and hence is identical to Complainant's mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as he does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited,WIPO Case No. D2001-0122. Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174, rightly observed as follows: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a Response and hence did not attempt to rebut any of Complainant's assertions.
There is no evidence that Respondent has ever been authorized to use Complainant's mark in a domain name or otherwise. Likewise, there is no evidence that Respondent is commonly known by the Domain Name, or that it has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services. See, e.g. America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374 (“it would be unconscionable to find that a bona fide offering of services in a respondent's operation of web-site using a domain name which is confusingly similar to the complainant's mark and for the same business”).
Finally, Respondent has not claimed any noncommercial or fair use of the ROLAND MOURET mark in its Domain Name, and the Panel finds no basis for recognizing any such use.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
Complainant relies chiefly on paragraphs 4(b)(ii) and 4(b)(iv) of the Policy, quoted immediately above, to support his bad faith argument. Both arguments are meritorious.
The Panel finds that Respondent is in bad faith under paragraph 4(b)(ii). Respondent registered the Domain Name, which is identical to Complainant's name and the mark under which Complainant has acquired renown and traded, after ROLAND MOURET had become a well-known name and mark. Moreover, Respondent has shown a clear pattern of registering domain names confusingly similar or identical to the marks of others. More than two years ago, a panel concluded that “a number of UDRP proceedings have already been decided against the Respondent, based on similar bad faith issues.” See Nationwide Mutual Insurance Company v. NA NA, Digi Real Estate Foundation,WIPO Case No. D2007-1135.
With respect to paragraph 4(b)(iv), Complainant alleges, and Respondent has not denied, that Respondent's conduct constitutes an intentional attempt to attract, for commercial gain, Internet users to Respondent's site by creating a likelihood of confusion between the ROLAND MOURET mark and the Domain Name. The unrebutted allegation that Respondent is deriving click-through revenue at the website is reasonable to accept based on the content of the site.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Dated: December 4, 2009
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