The Complainant is Pierre Hardy of Paris, France, represented by Cabinet Beau de Loménie, France.
The Respondent is Registration Private, Domains by Proxy, Inc. of Arizona, United States of America / Yang Le of Fujian, China. 2. The Domain Name And Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 26, 2011. On December 28, 2011, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On the same date, GoD, LLC transmitted by email to the Center its verification response disclosing that the language of the registration agreement was English, and that the registrant and contact information for the disputed domain name differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 10, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 13, 2012.
The Center verified that the Complaint together with the amended 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 January 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2012.
The Center appointed Jonathan Agmon as the sole panelist in this matter on February 13, 2012. 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
The Complainant is Pierre Hardy, the CEO of Maison Pierre Hardy, a company based in France. The Complainant engages mainly in designing shoes and leather goods under the mark PIERRE HARDY.
The Complainant started his own business in the year 1990 and his goods are sold through a sales network of 79 stores in 45 cities located in 18 countries.
The Complainant owns multiple worldwide trademark registrations for the mark PIERRE HARDY. For example: French trademark registration No. 98755626 – PIERRE HARDY, with the registration date of October 20, 1998; International trademark registration No. 992 959 – PIERRE HARDY, with the registration date of March 7, 2008, designated to Australia, Bahrain, Japan, Republic of Korea, Singapore, Turkey, United States, Azerbaijan, Bulgaria, Switzerland, China, Cyprus, Egypt, Croatia, Kazakhstan, Morocco, Monaco, Russian Federation and Ukraine; Indonesia trademark registration No. IDM000228188 – PIERRE HARDY, with the registration date of November 23, 2009, and many others.
The Complainant has also developed his presence on the Internet and is the owner of multiple domain names, which consist of the PIERRE HARDY trademark: , , , .
The disputed domain name was created on May 15, 2011.
The disputed domain name currently resolves to an inactive webpage. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is identical to the PIERRE HARDY trademark, in which the Complainant has rights, seeing that it incorporates the PIERRE HARDY trademark as a whole.
The Complainant further argues that his trademark is a well-known trademark and is considered as a favorite shoe brand among Hollywood stars and among the regular consumers.
The Complainant further argues that he was awarded several prizes such as “designer of the year 2006”, by “Footwear News International” magazine, and “Best Shoes Design 2006” by the “Wallpaper” magazine.
The Complainant further argues that he had never granted, assigned, licensed, sold or transferred the Respondent any rights in the PIERRE HARDY trademark in any manner.
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant further argues that PIERRE HARDY is neither a common noun, nor a common name. Therefore, the only reason for the Respondent to register the disputed domain name is to create an illegitimate association with the Complainant.
The Complainant further argues that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant further argues that by registering the disputed domain name, the Respondent is preventing the Complainant from reflecting his trademark. Moreover, such use harms and disrupts the Complainant’s business.
The Complainant further argues that the Respondent was aware of the Complainant’s reputation in the
PIERRE HARDY trademark at the time it registered the disputed domain name.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceedings
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language
of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is English.
Accordingly, and in the absence of a contrary agreement between the parties, the language of proceedings is English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous worldwide trademark registrations for the mark PIERRE HARDY. For example: French trademark registration No. 98755626 – PIERRE HARDY, with the registration date of October 20, 1998; International trademark registration No. 992 959 – PIERRE HARDY, with the registration date of March 7, 2008, designated to Australia, Bahrain, Japan, Republic of Korea, Singapore, Turkey, United States, Azerbaijan, Bulgaria, Switzerland, China, Cyprus, Egypt, Croatia, Kazakhstan, Morocco, Monaco, Russian Federation and Ukraine; Indonesia trademark registration No. IDM000228188 – PIERRE HARDY, with the registration date of November 23, 2009, and many others
The disputed domain name integrates the Complainant’s PIERRE HARDY trademark in its entirety, as a dominant element.
The disputed domain name differs from the registered PIERRE HARDY trademark by the additional gTLD “.info”.
The addition of the gTLD “.info” to the disputed domain name does not avoid confusing similarity (see
F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The gTLD “.info” is without legal significance since the use of a TLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use his PIERRE HARDY trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered his trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the PIERRE HARDY trademark at least since the year 1998. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The Complainant also provided evidence to demonstrate his trademark's vast goodwill. The Panel cites the following with approval: “The Respondent's selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence. […] Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent's registration and use of the disputed domain name other than that of bad faith” (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.
Indeed, “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic’ bad faith” (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
Furthermore, the disputed domain name is identical to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095).
Also, the disputed domain name does not resolve to an active website. It is concluded from the evidence of the Complainant, that the Respondent registered the disputed domain name, but has not put it to any use. It has been held in UDRP decisions that passive holding of domain names can, under certain circumstances, be considered bad faith use of the domain name (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393).
In the present case, taking into consideration the goodwill the Complainant has achieved in his trademark, which is neither a common noun, nor a common name and the fact that the disputed domain name incorporated the Complainant's trademark as a whole, it is determined by the Panel that the passive holding by the Respondent is considered bad faith.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name and the similarity between the disputed domain name and the Complainant’s mark and passive holding by the Respondent, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 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 name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: February 26, 2012
Full & Egal Universal Law Academy