The Complainant is Ann Demeulemeester of Kessel-Nijlen, Belgium, represented by Olswang LLP, Belgium.
The Respondents are WhoisGuard of Los Angeles, California, United States of America (the “First Respondent”) and University of Paris/ Jacky Lee of Paris, France (the “Second Respondent”) (also jointly referred to herein as the “Respondent”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2013. On January 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 17, 2013 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 21, 2013.
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 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2013.
The Center appointed Nicholas Smith as the sole panelist in this matter on February 18, 2013. 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.
On February 21, 2012, following consideration of the issue of the identity of the proper Respondent in this matter the Panel issued an Administrative Panel Procedural Order.
On February 22, 2013, the Complainant filed a second amended Complaint listing “University of Paris/ Jacky Lee” as the Second Respondent in the proceeding. None of the Respondents filed any submission in response to the second amended Complaint. The Panel therefore proceeds to its decision on the basis of the second amended Complaint. 4. Factual Background
The Complainant is a Belgian fashion designer selling clothing, boots and other fashion products under her own name.
The Complainant is the owner of a number of trade marks comprising a design mark that contains the words “ann demeulemeester” in white inside a black box (the ANN DEMEULEMEESTER Mark), in jurisdictions across the world, including France, the location of the Second Respondent. These registrations collectively cover a number of goods and services connected with the fashion industry, including in particular soaps, perfumery, leather, clothing, footwear and headgear.
The Domain Name was registered on November 19, 2012. The Domain Name resolves to a website (the “Respondent’s Website”) that appears to sell women and men’s leather boots under the ANN DEMEULEMEESTER Mark. The Respondent appears to be completely un-connected to the educational institution known as the American University of Paris, which has confirmed that it is not the registrant of the Domain Name, nor is Jacky Lee a student at the institution. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s ANN DEMEULEMEESTER Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the ANN DEMEULEMEESTER Mark. It owns trade mark registrations for the ANN DEMEULEMEESTER Mark in various jurisdictions around the world.
The Domain Name consists of the words that appear in the ANN DEMEULEMEESTER Mark. It is identical, or at worst, confusingly similar to the ANN DEMEULEMEESTER Mark.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent does not hold a trade mark for “ann demeulemeester” or any similar trade mark nor is it authorised to resell the Complainant’s goods.
The Domain Name was registered and is being used in bad faith. The Respondent’s Website retails products that are identical to the Complainant’s products under the ANN DEMEULEMEESTER Mark. The Respondent is clearly aware of the Complainant and is using the Domain Name to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent has registered and used the Domain Name in bad faith by registering the Domain Name while being aware of the Complainant’s rights and then using the Domain Name for financial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identity of the Respondent
On January 13, 2013, the Complainant conducted a search of the WhoIs, in which the registrant of the Domain Name was identified as WhoisGuard.
After the Complaint was filed with the Center, on January 15, 2013, the Registrar transmitted an email to the Center, indicating that the registrant of the Domain Name was University of Paris/ Jacky Lee. The Complainant was given an initial opportunity to amend the Complaint, listing University of Paris/ Jacky Lee as the Respondent. The Complainant submitted an amended Complaint but refused to list the disclosed registrant as the Respondent, arguing that the new WhoIs information refers to an independent entity (the American University of Paris) that is not involved in the registration of the Domain Name.
The Registrar, in its verification response has clearly indicated that the holder of the Domain Name is University of Paris/ Jacky Lee. While the entity behind the Doman Name may be using a pseudonym and may not be the American University of Paris or an individual called Jacky Lee, the information provided by the Registrar indicates that the holder of the Domain Name is known as University of Paris/ Jacky Lee.
The Panel cannot issue an order to transfer the Domain Name or deny the Complaint without making specific findings in relation to the Registrar-confirmed registrant of the Domain Name. In order to ensure that a finding of transfer or denial can be made against the Respondent it is necessary for the Complainant to amend the Complaint to add University of Paris/ Jacky Lee to the Complaint as the Second Respondent.
As the Complainant has now added University of Paris/ Jacky Lee to the Complaint as the Second Respondent the findings in this Decision are made collectively against the First and Second named Respondents. B. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the ANN DEMEULEMEESTER Mark, having registrations for ANN DEMEULEMEESTER as a trade mark in France, the purported location of the Second Respondent.
The Domain Name consists of the words in the ANN DEMEULEMEESTER Mark in their entirety. The removal of the graphic elements of the ANN DEMEULEMEESTER Mark (which were merely a black square around the white lettering), does not operate to prevent a finding of confusing similarity between the ANN DEMEULEMEESTER Mark and the Domain Name. The Panel finds that the Domain Name is confusingly similar to the Complainant’s ANN DEMEULEMEESTER Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. C. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 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.” (Policy, paragraph 4(c).
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the ANN DEMEULEMEESTER Mark or a mark similar to the ANN DEMEULEMEESTER Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use.
The Respondent uses the Domain Name to operate a website to sell footwear under the ANN DEMEULEMEESTER brand name. If the footwear sold on the Respondent’s Website are counterfeit, the Respondent’s use of the Domain Name does not grant it rights or legitimate interests.
If the Respondent is offering genuine Ann Demeulemeester products from the Respondent’s Website, such use does not grant it rights or legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP Decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.3, summarizes the consensus views of UDRP panels in response to the question about whether a reseller/distributor of trademarked goods or services has rights or legitimate interests in a domain name which contains such a trademark in the following manner:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”
In this case, the Respondent’s Website does not accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorised dealer or has any particular connection with the Complainant. Rather, its prominent display of the ANN DEMEULEMEESTER Mark gives the impression that the website is the official website of the Complainant. Members of the public who are interested in Ann Demeulemeester products may visit the Respondent’s Website on the assumption that the Respondent is the Complainant herself or an authorised dealer or reseller of Ann Demeulemeester products. This is not the case. In the event that the Respondent is reselling genuine Ann Demeulemeester products, its use in its present form does not grant it rights or legitimate interests in the Domain Name.
The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name’s registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel finds that the Respondent at the time of registration of the Domain Name knew of the existence of the Complainant. The Domain Name resolves to a website that displays the ANN DEMEULEMEESTER Mark and sells products branded with the ANN DEMEULEMEESTER Mark.
The Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights or legitimate interests of its own amounts to registration in bad faith.
The Respondent registered the Domain Name for the purposes of operating a website specifically to sell either counterfeit or resold Ann Demeulemeester products. The Respondent is using the Domain Name that is confusingly similar to the ANN DEMEULEMEESTER Mark to sell products branded with the ANN DEMEULEMEESTER Mark in competition with the Complainant. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s ANN DEMEULEMEESTER Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith 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 Domain Name be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: March 8, 2013
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