The Complainant is INTS It Is Not the Same GmbH of Zug, Switzerland, represented by Kern, Weyl & Andréani, France.
The Respondents are Philippe Leveau [] of Paris, France; Céline Molina [ and ] of Paris, France; Marine Simon [] of Paris, France; James Thomas [] of Houston, US Minor Outlying Islands, United States of America; Annabelle Tching [ and ] of Paris, France; Joana Bertheas [] of Puy-de-Dome, France; and Prisca Ilame [] of Montpellier Herault, France (hereinafter, the “Respondent”). 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2014. On April 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 16 and April 24, 2014, 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 April 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2014.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on May 21, 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 Rules, paragraph 7. 4. Factual Background
The Complainant has registered the trademark DESIGUAL in many countries in relation to clothes, bags, accessories, shoes, bedclothes, table linen, decoration and perfumery products, among others. The Complainant is the registered owner of, inter alia, Community Trademark No. 3805652 registered on September 12, 2005; Community trademark No. 5887021 registered on March 18, 2008, both of these consisting of the mark DESIGUAL but with an inverted “S” (Ƨ); and Community word Trademark No. 8965261 registered on August 18, 2010 for DESIGUAL as such.
The disputed domain names were all registered between November 2013 and January 2014. 5. Parties’ Contentions A. Complainant
The Complainant contends that the various contact details supplied for all the disputed domain names here are deliberately false and ineffective. Moreover the Complainant contends that all the disputed domain names were registered by one and the same person or entity, which remains hidden. The Complainant points to a number of factors supporting this contention. The principal factors identified are as follows: all disputed domain names contain the trademark DESIGUAL in its entirety, as well as the French terms for sales (soldes) and store (boutique), and/or “fr” or “france”, with separation by hyphen(s); all the disputed domain names were registered with GoD, LLC, and they have all been configured on the D server; they were all registered between November 2013 and January 2014, i.e., during the Christmas sales period and during and just after the TV spots and internet broadcasting of the Complainant’s winter collection advertisements; all contact details are either incomplete, inaccurate, incoherent and/or fictitious; some of the contact details are identical for different domain names, i.e., the same telephone numbers or same e-mails address; the websites to which the disputed domain names , , and resolve are near-identical, with the exception of insignificant details, and all these web sites are/were a copy of the genuine website of the Complainant; and the websites to which the disputed domain names and resolve are identical to each other and also very close to the websites to which the disputed domain names , , and resolve.
According to the Complainant, the websites to which the disputed domain names , , , , and resolve incorporate identical “Conditions of Use” beginning with the word “Attentions” which is unusual; the websites to which the disputed domain names , , , and resolve incorporate an identical “About us” page; and the websites to which the disputed domain names and resolve have a similar page where the text is in fact missing under the heading (as demonstrated by the relevant annex to the Complaint). Further, the Complainant points out that all websites to which disputed domain names resolve are in French and dedicated to misleading French customers, by claiming to be associated with a subsidiary of the Complainant.
Further, the Complainant establishes that it is the registered owner of the trademarks DESIGUAL (as such or with an inverted “S”) in numerous jurisdictions. The Complainant contends that all the disputed domain names are confusingly similar to its registered trademarks. They include the trademark in its entirety, together with descriptive terms (“boutique” and “soldes”) and/or “france” or “fr”. The Complainant points to the numerous UDRP Panel decisions that stand for the proposition that the addition of a generic term or identifier does not make a domain name less identical or confusingly similar. Internet users who visit any of the disputed domain names that resolve to an imitation website are likely to be confused and made to believe, falsely as it turns out, that they are online shops operated by the Complainant. The inherent meaning of the terms further enhances the likelihood of consumers being misled, according to the Complainant.
The Complainant also asserts that it has not granted any authorisations to the Respondent, nor is there any connection at all between the Complainant and the Respondent. The Respondent has no legitimate rights in the disputed domain names, according to the Complainant. The statement on relevant websites that they are concerned with subsidiaries of the Complainant are entirely false. If the Respondent was a member of the Desigual Group it would know that there is no company of that name associated with the Complainant, as the companies concerned do not utilise the DESIGUAL trademark as business or company names. Furthermore, it is asserted that in circumstances where a Respondent fails to submit any evidence to the contrary, a Complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy in any case.
There is also no indication the Respondent is known under the disputed domain names, according to the Complainant. The Complainant’s trademark is very distinctive and considerable investment has been made in advertising it in multiple jurisdictions, so that in the result it is wellknown and very successful.
The Complainant thus contends that its trademarks are famous around the world, and in the circumstances it is inconceivable that the Respondent was not aware of them upon registration of the disputed domain names, which moreover contain words that tend to reinforce that conclusion. Bad faith registration is also supported by the fact that the contact details provided are all fictitious, incorrect or incomplete.
Use in bad faith is also established, according to the Complainant, because the websites to which the disputed domain names , , and resolve, in particular, are near-identical to those of the Complainant, reproducing also the semi-figurative color mark of the Complainant in the same position on the page. The Complainant also establishes that four of the Respondent’s e-mail addresses also include the specific inverted-S used by the Complainant.
Further, the Complainant asserts that the websites to which the disputed domain names , , , and resolved include an identical “About us” page falsely indicating that it is an affiliate of the Complainant. According to the Complainant, the Respondent caused the websites connected with the relevant disputed domain names to appear like the Complainant’s official websites, but, the Complainant asserts, in fact copies of the Complainant’s products are sold there. The Respondent’s aim is said to be to attract Internet users for commercial gain to its website while creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement by Complainant. This demonstrates use in bad faith.
As far as the inactive disputed domain names are concerned bad faith is also established, according to the Complainant, as the Panel must consider the present case in its entirety. The Respondent has engaged in a large scale registration of domain names that incorporate the DESIGUAL trademark as the only distinctive part, the Complainant contends. Many of the disputed domain names are being actively used in bad faith in the manner described previously. The Complainant asserts that the addresses, email addresses and facsimile numbers provided in relation to the inactive disputed domain names are fictitious.
In conclusions, the Complainant also submits that the inactive disputed domain names are probably passively held for some future abusive use detrimental to the Complainant. In particular, the Complainant contends that the only reason to hold inactive very similar domain names including the Complainant’s trademark is to activate them in case the active disputed domain names are transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Preliminary Issue – Multiple Respondents
In this matter there are multiple disputed domain names and also multiple Respondents. Some of the disputed domain names resolve to websites, others are inactive. Paragraph 3(c) of the Rules provides as follows: “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”. In this matter the Complainant submits that although the various details appear to refer to different Respondents (i.e., domain-name holders or registrants), there is in fact only one Respondent who is disguising his or her identity. The Complainant points to various elements as supporting this conclusion, including the similarities between some of the websites that resolve from different disputed domain names; some similarities and coincidences between the allegedly false details entered in relation to different registrants, such as telephone contact numbers; the similarities between certain address elements, including emails supplied; similarities between the disputed domain names themselves, aimed at French consumers as they are said to be; and the general pattern of apparently cobbled together details concerning registrant names and contact details.
It is important that the Panel carefully scrutinize the Complainant’s contentions that although the name and contact details of the registrants are different, nevertheless a single registrant and thus Respondent lies behind the multiple disputed domain names. The Complainant is not entitled to an order in gross against a number of disparate registrants.
In relation to the Complainant’s contentions in this regard, the material put before the Panel is most persuasive in relation to those disputed domain names that both display some striking coincidence(s) in relation to the contact details provided, and resolve to very similar websites. There is clear support for the Complainant’s contention that the details provided are manifestly false, in that they contain data that are grossly and deliberately wrong.
Thus the disputed domain names , , and resolve to nearly identical websites. They each have misleading contact details, some manifestly false, others seemingly real but to an unconnected person. Most have email addresses including names that do not correspond with the registrant name. also has the same apparently false contact details as . The websites to which the disputed domain names and resolve are identical to each other and very similar to the websites mentioned just prior ( et al.) All of these websites are in the nature of deliberate imitations of the Complainant’s genuine websites. The websites to which the disputed domain names , , , , and all display, according to the Complainant, identical conditions of use with the same oddity of expression, i.e., beginning with the word “Attentions”.
The connections and similarities are perhaps least apparent in relation to , and . However, the pattern of deliberately false contact details and an untraceable registrant, and similarly constructed domain names corresponds with that of the other disputed domain names before the Panel. In particular, although there are no coincidences between the contact details or the websites, these three domain names themselves are similar to each other (the Complainant’s trademark DESIGUAL and the letters “fr” in all three, and a combination including the term “soldes” in two). In this regard, all three evidence a similar pattern or approach to composition as all the other domain names here disputed, including also hyphenation of the various component parts. Further, in a similar manner as well, the addresses provided are of no assistance in locating any real person or entity; the contact numbers are manifestly false; and the only information really available is the email address. The contact details, as in relation to most of the other disputed domain names, are not only useless, they appear deliberately false in that they refer to a French fire department. For the email address does not correspond in any way to the registrant name, a pattern also observed in some of the other domain names here disputed.
In any case, the disputed domain names are all configured on the same server and registered with the same registrar (GoD, LLC). They were all registered within a three month period over Christmas and New Year, an important period for fashion retailing. There is also a strong connection with France.
In the circumstances the Panel is persuaded that the registrant and thus Respondent for all the disputed domain names is one and the same person or entity. Therefore the conditions of paragraph 3(c) of the Rules are fulfilled. The actual identity of the Respondent is not apparent as details supplied to the Registrar appear false in every case. Nonetheless proper and sufficient efforts have been made to contact the true Respondent by way of the details that were supplied. A. Identical or Confusingly Similar
The disputed domain names are not identical to the Complainant’s registered trademark DESIGUAL. Nonetheless they each contain the trademark in its entirety. The trademark is coupled either with a country identifier (“fr” and “france”) or with a generic term: “soldes”; “boutique”. None of these descriptive terms or abbreviations is apt to distinguish the disputed domain name from the highly distinctive trademark DESIGUAL. In fact they do little other than further reinforce the suggestion of a connection between the Complainant and any website to which the disputed domain names would or do resolve. “Boutique” and “soldes” are terms commonly used in relation to fashion and clothing stores and brands, and the country identifiers simply suggest the location of a business or the public to whom the disputed domain names and websites are directed.
Therefore, the Panel holds that the disputed domain names are confusingly similar to the Complainant’s trademark DESIGUAL. B. Rights or Legitimate Interests
The Complainant has not licensed the use of the trademark DESIGUAL, nor authorized its use by the Respondent. The Respondent is not known by the name or designation DESIGUAL and has no apparent rights to that name. The websites to which some of the disputed domain names resolve appear to the Panel to be deliberately close imitations of the Complainant’s genuine websites. The trademark DESIGUAL is highly distinctive and has no generic meaning in and of itself. The facts before the Panel are not consistent with any rights or legitimate interests vesting in the Respondent, but rather with a deliberate and calculated attempt to profit from the goodwill of the Complainant and avoid any liability or consequence by falsifying contact details and remaining untraceable. Where the disputed domain name does not in fact resolve to any website, there is also no basis for holding that the Respondent has any rights or legitimate interests in the disputed domain names concerned. Passive holding with some potential future use, arguably here the deployment of further imitation websites by the same underlying entity, does not vest any entitlements.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in any of the dispute domain names. C. Registered and Used in Bad Faith
Since the Panel holds that there is one registrant and Respondent behind all the domain names concerned, it follows that the Respondent has acted in bad faith under paragraph 4(b)(ii) of the Policy. In particular, he or she has deliberately given false contact details; has acquired a series of confusingly similar domain names at a particular time; has established imitation websites with the aid of some of disputed domain names; has chosen a well-established trademark with attendant goodwill to which it has no rights whatsoever; and has sought to profit from the false suggestion of a connection with the Complainant, in the case of the disputed domain names that resolve to imitation websites. In relation to the disputed domain names that do not resolve to any website, the act alone of registering these domain names, and then doing nothing further with them, has in the appropriate circumstances been held by UDRP Panels to amount to bad faith use. In any case as already indicated there is good reason to conclude that one and the same entity is using some of the disputed domain names to establish imitation websites and holding other disputed domain names with a similar purpose in mind.
In the circumstances the Panel holds that the disputed domain names were registered and are being used in bad faith. 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 names , , , , , , , , and be transferred to the Complainant.
WiIliam A. Van Caenegem
Sole Panelist
Date: June 4, 2014
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