The Complainant is Christian Louboutin of Paris, France, represented by IP Gurus, India.
The Respondent is no of Alabama, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2013. On March 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2013.
The Center appointed George R. F. Souter as the sole panelist in this matter on April 17, 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. 4. Factual Background
The Complainant, Christian Louboutin, is a famous designer of women’s fashion accessories, notably high-fashion bags and shoes. Since opening his first fashion boutique in Paris in 1992, his business has grown, and products bearing his name are now exported to 58 countries.
Details of the renown of products bearing the Complainant’s name, and trade mark registrations of his name in various countries, including the European Union and the United States of America, have been presented to the Panel.
The disputed domain name was registered on May 31, 2012. 5. Parties’ Contentions A. Complainant
In connection with the Complainant’s protectable trade mark rights, The Complainant has drawn the Panel’s attention to, inter alia, the decision in Christian Louboutin v. Zhangyong,WIPO Case No. D2009-0270, in which the Complainant’s trade mark rights were recognized by the UDRP panel, and in which the Complainant prevailed.
The Complainant alleges that the disputed domain name is confusingly similar to his trade mark, CHRISTIAN LOUBOUTIN, as it contains this mark with the mere addition of the descriptive element “beauty”.
The Complainant contends that, upon information and belief, CHRISTIAN LOUBOUTIN is not the Respondent’s personal name, and that the Respondent is not commonly known by the disputed domain name. Further, the Respondent is not a licensee of the Complainant, nor has the Respondent ever been authorized by the Complainant to use the Complainant’s trade marks, or to register the disputed domain name. Additionally, the Complainant contends that the Respondent is not making any legitimate, noncommercial or fair use of the disputed domain name, because the Respondent uses the disputed domain name in connection to a commercial website, details of which have been supplied to the Panel, in which counterfeit CHRISTIAN LOUBOUTIN products are offered for sale.
The Complainant alleges that the disputed domain name has been registered in bad faith, and is being used in bad faith through the Respondent’s operation of a website from which counterfeit CHRISTIAN LOUBOUTIN products are offered for sale. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain names of the Respondent be transferred to the Complainant or be cancelled:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service 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
It is well-established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (i.e. “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trade mark and a domain name. The Panel agrees with this view and considers these indicators to be irrelevant in the present case.
The Panel accepts the decision of the panel in Christian Louboutin v. Zhangyong, supra, as to recognition of the Complainant’s trade mark rights in the trade mark CHRISTIAN LOUBOUTIN.
It is well-established in decisions under the UDRP that the addition of a non-distinctive and descriptive element to an established trade mark is insufficient to avoid a finding of confusing similarity between the Complainant’s trade mark and the disputed domain name (the decision in F. Porsche AG v. Glenn Stefan Karlsson-Springare,WIPO Case No. D2011-1727, and many others). The Panel agrees with this well-established view, finds that “beauty” is an obviously non-distinctive and descriptive element in the circumstances of the present case, and, consequently, finds that the Complainant has satisfied the test set out in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Where the respondent has failed to demonstrate rights or legitimate interests in the domain name, it is the predominant view of panels in previous UDRP decisions, with which the present Panel agrees, that a prima facie case advanced by the complainant will be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy.
In this case, the Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain name, and the Panel can draw the appropriate conclusion under the Policy. The Panel accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel is of the view that, in the case of an established trade mark such as CHRISTIAN LOUBOUTIN, the finding that the Respondent has no rights or legitimate interests in the disputed domain name, may lead, in appropriate circumstances, to a finding that the disputed domain name was registered in bad faith. The Panel considers that the circumstances of the present case make it appropriate to find that the disputed domain name was registered in bad faith.
It is the overwhelming view of panels in decisions under the UDRP that commercial use of a domain name deemed to have been registered in bad faith, on a website offering competing products to those protected under a complainant’s established trade mark, constitutes use of the domain name in bad faith. The Panel finds the circumstances of the present case, namely the use of a website offering what appears to be counterfeit CHRISTIAN LOUBOUTIN products for sale under the disputed domain name, to be clearly use of the disputed domain name in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the dual test of 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.
George R F Souter
Sole Panelist
Date: May 3, 2013
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