The Complainant is Ann Demeulemeester of Kessel-Nijlen, Belgium, represented by Olswang LLP, Belgium.
The Respondent is Mircea Delibas of Bucharest, Romania. 2. The Domain Name and Registrar
The disputed 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 March 13, 2013. On March 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 13, 2013, the Registrar 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 19, 2013. The Complainant filed a supplemental filing including a copy of a March 15, 2013, email from the Respondent on March 19, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 9, 2013.
The Center appointed Brigitte Joppich as the sole panelist in this matter on April 15, 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant is a Belgian fashion designer selling clothing, boots, etc. under her own name all over the world, including in her own shops in Antwerp, Tokyo, Hong Kong and Seoul. The Complainant is one of the “Antwerp Six”, a fashion collective of six influential avant-garde fashion designers.
The Complainant is registered owner of the International Trademark Registration No. 547416 ANN DEMEULEMEESTER and the Community Trademark Registration No. 923532 ANN DEMEULEMEESTER, which are registered in connection with goods in classes 3, 15, 18 and 25 (hereinafter referred to as the ANN DEMEULEMEESTER Marks).
The disputed domain name was registered on August 16, 2011, and does not resolve to an active website.
On March 15, 2013, the Respondent sent an email to the Complainant stating the following: “Hello, I understand the complaint which is being filled and I no longer have any intentions on keeping&using the domain in cause”. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is identical to the ANN DEMEULEMEESTER Marks as it consists of the words “Ann” and “Demeulemeester” and as the top level domain is not to be taken into consideration when considering the identity or confusing similarity of a domain name with a trademark. Furthermore, the Complainant states that she has rights in her well known personal name under the UDRP as well.
(2) The Respondent has no rights or legitimate interests in the disputes domain name as the Respondent does not have any identical or similar registered trademark, as it is not a reseller of the Complainant’s goods and as the disputed domain name does not resolve to an active website.
(3) The Complainant argues that the fact that the Complainant owns registered rights and has worldwide reputation in the words “Ann Demeulemeester” and the fact that the Respondent has no rights or interests in the disputed domain name leads to the conclusion that it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain name. Furthermore, the Complainant submits that it is not possible either to conceive a plausible situation in which the Respondent would have been unaware of the Complainant’s rights at the time of the registration of the disputed domain name, and thus that the disputed domain name has been registered and is being used by the Respondent in bad faith. Finally, the Complainant states that the Respondent’s passive holding of the disputed domain name in this case equals active use in bad faith as the Complainant has a well-known trademark and personal name that is identical to the disputed domain name, and as the Complainant has a worldwide reputation in the words “Ann Demeulemeester” contrary to the Respondent’s lack of rights or legitimate interests in the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s ANN DEMEULEMEESTER Marks, in which it has demonstrated its rights, and is identical to such marks. It is well established that the generic top level domain name (“gTLD”) is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between a complainant’s trademark and the disputed domain name (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; and Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. Once a prima facie case has been established by the complainant, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to prove it had any rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, there is no indication that the Respondent’s use of the disputed domain name does meet any of the criteria set out in paragraph 4(c) of the Policy. Therefore, the Respondent cannot rely on rights or legitimate interests under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s 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 trademark 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 on-line 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 its website or location.
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and thus in bad faith under paragraph 4(a)(iii) of the Policy. The name Ann Demeulemeesteris highly distinctive and, to the Panel’s best knowledge, does not correspond to any word in the Romanian language. It is therefore almost inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant.
As the disputed domain name is not actively used by the Respondent, the Panel has to decide whether or not the Respondent’s (non-)use of the disputed domain name is to be considered as bad faith use under the Policy.
It is consensus view that the lack of an active use of a domain name does not as such prevent a finding of bad faith under the Policy. In such cases the panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include a complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574; and Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131).
The Panel is confident that the Complainant’s ANN DEMEULEMEESTER Marks are highly distinctive and well-established. Furthermore, the Respondent failed to file a Response and therefore did not provide evidence of any actual or contemplated good faith use for the disputed domain name. In the view of the Panel, the facts of this case do not allow for any plausible actual or contemplated active use of the disputed domain name by the Respondent in good faith.
The Panel is therefore convinced that, even though the disputed domain name has not yet been actively used, the Respondent’s non-use of the domain name equals use in bad faith.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy.
The Panel wishes to note that this case is on the borderline with regard to the very limited facts and evidence made available by the Complainant, but considering all of the information in the case file, the Panel is satisfied that the Complainant has met the requirements of paragraph 4(a) 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.
Brigitte Joppich
Sole Panelist
Date: April 29, 2013
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