The Complainant is T.R.B. International S.A. of Grand-Saconnex, Switzerland, represented by DLA Piper Nederland N.V., Netherlands.
The Respondent is Kale Roben of Paris, France. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with N LLC. 3. Procedural History
The Complaint on the disputed domain name was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2011. On July 29, 2011, the Center transmitted by email to N LLC a request for registrar verification in connection with the disputed domain name . On July 30, 2011, N LLC transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on August 2, 2011. On August 15, 2011, the Center received an amendment to the Complaint to include the additional domain names , and . In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2011.
The Center appointed Luca Barbero as the sole panelist in this matter on August 26, 2011. 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.
The Panel issued a Panel Order on September 7, 2011, requesting that the Complainant files an Amended Complaint, within five days, in the appropriate format, related to the omitted domain names, providing any additional information pursuant to paragraph 3 of the Rules and requesting that the Center, after the Complainant’s submission of the amended Complaint, i) obtains the registrar verification for the additional domain names, ii) notifies the Respondent that the domain names had been added to the proceeding allowing the Respondent 20 days to provide a Response in relation to these additional domain names. The Registrar has confirmed that the Respondent was also the current registrant of the additional domain names. The Respondent did not submit any response within the due date of October 11, 2011, and the Center sent an email communication to the parties on October 13, 2011, advising that the Panel would render its decision on October 21, 2011. 4. Factual Background
Vilebrequin was established in Saint Tropez, France, in 1971, and manufactures and sells luxury swimwear for men through Europe, America and Asia.
The Complainant is the owner of several trademark registrations for VILEBREQUIN, such as the Community Trademark Registration Nos. 1843390 of February 28, 2000, in classes 9 and 16; and 411779529, filed on July 13, 2000, in classes 3, 9, 18, 24, 25 and 38; the United States of America Trademark Registration No. 3554255, filed on June 30, 2006, in classes 9, 24 and 25; the Indian Trademark Registration No. 1415324, filed on January 19, 2006, in class 25; the International Trademark Registration No. 908147, of June 30, 2006, in classes 9, 24 and 25.
The Complainant is also the owner of the domain names , registered in 1998, and , registered on October 5, 2005.
The Respondent registered the disputed domain names , , and on May 3, 2011. 5. Parties’ Contentions A. Complainant
The Complainant points out that Vilebrequin is nowadays the leading manufacturer and retailer of men’s swimwear, producing and distributing its products through subsidiaries and affiliated companies in Europe, America and Asia and operating an official online store offering VILEBREQUIN branded swimwear at “www.”.
The Complainant states that the disputed domain names are confusingly similar to its registered trademark and highlights that the addition of the words “sale”, “outlet”, “store” and “shop” is likely to increase the risk of confusion among Internet users as they indicate that VILEBREQUIN swimwear on sale can be bought on the corresponding web sites.
With reference to rights or legitimate interests in respect of the disputed domain names, the Complainant states that it has not granted the Respondent any license or any permission whatsoever to use its trademarks or to register the disputed domain names and that the Respondent has never been commonly known by the name “Vilebrequin”.
The Complainant also states that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use, since the disputed domain names and have been pointed to websites which reproduced the VILEBREQUIN trademark and imitated the design elements of the Complainant’s official web site “www.”, therefore seeking to create the misleading impression that the websites were genuine online shops for VILEBREQUIN branded products. The Complainant also contends that the products offered on the Respondent’s websites were counterfeit as it purchased two pairs of shorts which were found to be inferior copies of original products.
With reference to the circumstances evidencing bad faith, the Complainant indicates its trademark is well known and states that the registration of the disputed domain names by the Respondent suggests opportunistic bad faith.
The Complainant also underlines that the above-described use of the disputed domain names demonstrates the Respondent’s awareness of the VILEBREQUIN trademarks and points out that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its websites by misleading Internet users as to the source, sponsorship, affiliation, or endorsement of the websites and the products promoted thereon.
As an additional circumstance of bad faith, the Complainant contends that the contact information provided by the Respondent in the WhoIs of the disputed domain names is fictitious. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall 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 directs that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
Preliminary Procedural Issue: Addition of domain names:
As stated in the Procedural history, the Complainant seeks to add the domain names , and (after the Complaint has been notified to the Respondent and the proceeding has been finally commenced). Given the lack of response, this Panel accepts the Complainant’s request to add additional domain names in accordance with paragraph 10 and 12 of the Rules, and with paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). In the instant case, the request to add additional domain names was made just after notification of the Complaint and the Panel notes that the domain names are registered by the same Respondent. A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a number of trademark registration for VILEBREQUIN, amongst others, the Community Trademark Registration Nos. 1843390 of February 28, 2000, in classes 9 and 16; and 411779529, filed on July 13, 2000, in classes 3, 9, 18, 24, 25 and 38, which cover also France, where the Respondent is based.
The Panel finds that the disputed domain names are confusingly similar to the trademark VILEBREQUIN owned by the Complainant since, pursuant to a number of prior decisions rendered under the Policy, the addition of descriptive terms to a trademark is not a distinguishing feature.
See, inter alia, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to the ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to the FRY mark); Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to the WALMART mark); PepsiCo, Inc. v. Henry Chan,WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to the PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality,WIPO Case No. D2005-1028 (“net” and “training” added to the ISO mark); Banca Intesa S.p.A v. Roshan Wickramaratna,WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma,WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN).
Moreover, the Panel finds that the addition of words like “sale”, “shop”, “outlet” and “store” is very likely to increase the risk of confusion between the disputed domain names and the Complainant’s trademark.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you 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 (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 are making a legitimate non-commercial 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.”
It is well-established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names in order to shift the burden of production to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).
In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names.
Moreover, it has been repeatedly stated that when a respondent does not avail himself of his right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain names (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269).
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain names, has made preparations to use the disputed domain names in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, non-commercial or fair use of the disputed domain names.
The Complainant has provided evidence that the disputed domain names and have been used by the Respondent in connection with the sale of prima facie counterfeit VILEBREQUIN products. As mentioned, i.a., in Cartier International, N.V., Cartier International, B.V. v. David Lee,WIPO Case No. D2009-1758 the offer for sale of counterfeit imitations of the Complainant's branded products does not constitute a legitimate use of the disputed domain names.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As to bad faith at the time of the registration, the Panel notes that, in light of the registration and use of the Complainant’s trademark VILEBREQUIN since more than a decade, especially in France, where the Respondent is based, the Respondent more likely than not was aware of the Complainant’s trademark when registered the disputed domain names. Furthermore, the Panel observes that two of the disputed domain names have been pointed to websites where the Complainant’s trademark was featured prominently, additional element indicating that the Respondent was indeed well-aware of the Complainant’s trademark.
The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang,WIPO Case No. D2003-0257. Along the same lines Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn,WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd.,WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions,WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group,WIPO Case No. D2005-0868 “...it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
With reference to the use of the disputed domain names, the Panel notes that the use of the Complainant’s mark and the imitation of the “look and feel” of the Complainant’s official website on the websites corresponding to the disputed domain names and is likely to create confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites.
Moreover, the Complainant has submitted compelling evidence to suggest that the disputed domain names have been used to offer for sale counterfeit VILEBREQUIN products via the web sites corresponding to the disputed domain names and . Along the lines of prior decisions rendered under the Policy (see, inter alia, Guccio Gucci S.p.A. v. Domain Administrato - Domain Administrator,WIPO Case No. D2010-1589 and Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019), the Panel finds that this is strong evidence of the Respondent’s bad faith registration and use.
The Panel also finds that the initial failure of the Respondent to provide full and proper contact details amounts to further evidence of bad faith. See, i.a., Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Steelcase Development Corporation v. Admin, Domain,WIPO Case No. D2005-1352; Oxygen Media, LLC v. Primary Source,WIPO Case No. D2000-0362; Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775.
In view of the above, the Panel finds that the disputed domain names were registered and are being used in bad faith. 7. Decision
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 names , , and be transferred to the Complainant.
Luca Barbero
Sole Panelist
Dated: October 21, 2011
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