The Complainant is KERING of Paris, France, represented by SANTARELLI, France.
The Respondent is DANG Jack of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2014. On February 27, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2014 and March 1, 2014, the Registrar transmitted by email to the Center its verification responses 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 Restrictions Dispute Resolution Policy (the “RDRP”), the Supplemental Rules for Restrictions Dispute Resolution Policy (the “Supplemental RDRP Rules”), the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “UDRP Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “WIPO Supplemental UDRP Rules”).
In accordance with the UDRP Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 6, 2014. In accordance with the UDRP Rules, paragraph 5(a), the due date for Response was March 26, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2014.
On March 28, 2014, the Center received email communications from a “Duan” and a “Chinese” respectively stating “I am not the owner of the domain name, please do not send any email to me”.
The Center appointed Richard Hill as the sole panelist in this matter on April 4, 2014. 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 UDRP Rules, paragraph 7. 4. Factual Background
The Complainant has rights in the registered trademark KERING. This mark is registered in many countries around the world and it is well known.
The disputed domain name was registered in April 2013, well after the Complainant registered its mark.
The Complainant has not licensed or otherwise authorized the Respondent to use its mark.
The Respondent, or someone acting on his behalf, offered to transfer the disputed domain name to the Complainant for an amount seemingly well above out-of-pocket costs.
The Respondent used the disputed domain name to resolve to a web site that contains sponsored advertising links to a variety of products, including products that compete with the Complainant’s products. 5. Parties’ Contentions A. Complainant
The Complainant states that it is a world leader in apparel and accessories and develops an ensemble of powerful brands such as Gucci, Bottega Veneta, Saint Laurent, Alexander McQueen, Balenciaga, Brioni, Tomas Maier, Christopher Kane, Stella McCartney, Sergio Rossi, Boucheron, Dodo, Girard-Perregaux, JEANRICHARD, Pomellato and Qeelin in the Luxury sector; and Puma, Volcom, Cobra, Electric and Tretorn in the sports and lifestyle sector.
The Complainant was previously known under other names and announced its new name publicly on March 22, 2013. The Complainant owns numerous trademarks for KERING, including in China. Those trademarks were filed as early as May 2012.
The Complainant alleges that the Respondent registered the disputed domain name on April 5, 2013 with the intent to sell it to the Complainant. The Respondent registered numerous other domain names containing the mark KERING. Some of those domain names have been transferred to third parties and the disputed domain name has been transferred several times to parties that are apparently connected with the Respondent.
On May 20, 2013, the Complainant sent a cease-and-desist letter. In response, it received an offer to sell several domain names containing the mark KERING for a price of EUR 1,100 per domain name. This amount far exceeds the out-of-pocket costs for each domain name and indicates that the disputed domain name was acquired for the purpose of making a substantial gain.
The Complainant alleges that the disputed domain name is confusingly similar to its mark. It states that it has not licensed or otherwise authorized the Respondent to use its mark.
According to the Complainant, the disputed domain name has been used to point to a web site containing commercial links, some of them to products that may compete with the Complainant’s products. This is not a legitimate, bona fide, use and it does not create rights or legitimate interests. The Complainant cites UDRP precedents to support its position.
The Complainant alleges that the Respondent intentionally tried to attract Internet users to its web site, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark.
The Complainant states that the original registrant of the disputed domain name has been found to have registered and used in bad faith several other domain names and it cites the relevant UDRP decisions. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has trademark rights in KERING. It is clear to the Panel that the disputed domain name, consisting of the Complainant’s trademark with the addition of the generic term “group”, is confusingly similar to the Complainant’s trademark. See for example F. Hoffmann-La Roche AG v. Bobik Marley,WIPO Case No. D2007-0694 (“confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant’s mark and only adds a generic word along with, in this case […] the number ‘1’”). B. Rights or Legitimate Interests
The Respondent is using the disputed domain name to point to a web site that offers products that may compete with the Complainant’s products.
The Panel finds that the Respondent is redirecting Internet users interested in the Complainant’s products and services to its own web site for commercial gain and that such use does not fall within the parameters of a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy. See for example Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814 (“Respondent’s use of the disputed domain name to redirect Internet users to an on-line pharmacy demonstrates Respondent’s lack of a legitimate interest in the domain name”); see also Pfizer Inc v. Juan Gonzales,WIPO Case No. D2004-0589 (“no good faith can be assumed in Respondent’s conduct, in view of the fact that the Domain Name is confusingly similar with Complainant’s trademark and is used in connection with the promotion and sale of competing products”). C. Registered and Used in Bad Faith
It is clear to the Panel that the Respondent was aware of the Complainant’s marks when he registered and started using the disputed domain name, because the disputed domain name contains the Complainant’s well-known mark and because the disputed domain name was registered shortly after a public announcement concerning the Complainant’s change of name.
The Respondent (who did not formally reply to the Complainant’s contentions) has not presented any plausible explanation for his use of the Complainant’s mark. In accordance with paragraph 14(b) of the UDRP Rules, the Panel shall draw such inferences from the Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that the Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, in the Panel’s view, the Respondent’s actual use of the disputed domain name (as noted above) is clearly not bona fide, because the Respondent operates a web site that promotes products that are not related to the Complainant’s products but may compete with them. This indicates that the Respondent has registered and is using the disputed domain name to take advantage of the confusing similarity between the disputed domain name and Complainant’s marks in order to profit from the goodwill associated with the mark in bad faith under paragraph 4(b)(iv) of the Policy. See for example The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC,WIPO Case No. D2009-0057 (“The record further reflects the Respondent’s use of the disputed Domain Names to attract Internet users to the Respondent’s website in order to generate pay-per-click advertising revenues. The Panel concludes for the foregoing reasons that the Respondent registered and is using the disputed Domain Names in bad faith.”); see also Philip Morris Incorporation v. Alex Tsypkin,WIPO Case No. D2002-0946 (“It follows from what has been said about legitimacy that the Panel is satisfied that Respondent is using the disputed Domain Names intentionally to attempt to attract, for commercial gain, Internauts to his web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. Pursuant to Policy paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii).”).
Further, the Respondent, or a person associated with the Respondent, offered to sell the disputed domain name to the Complainant for an amount well above out-of-pocket costs. This constitutes evidence of bad faith registration and use under paragraph 4(b)(i) of the Policy. See Caterpillar Inc. v. Roam the Planet, Ltd.,WIPO Case No. D2000-0275. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the RDRP and UDRP and 15 of the UDRP Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Richard Hill
Sole Panelist
Date: April 7, 2014
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