The Complainant is Kering of Paris, France, represented by the Cabinet Santarelli, France.
The Respondent is Harouna Keita of Niort, France. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2014. On June 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 July 1, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2014.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on July 24, 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.
The language of the proceeding is English, being the language of the registration agreement. 4. Factual Background
According to the documentary evidence and contentions submitted, the Complainant is a French company named Kering, leader in apparel and accessories, which develops an ensemble of powerful brands.
The Complainant is the owner of several registrations for the trademark KERING, including:
- France Trademark registration No. 123920561 registered on May 16, 2012;
- European Union Trademark No. 010978741 registered on November 27, 2012;
- United-States Trademark registration No. 85982044 (filed on November 12, 2012, and published on October 22, 2013).
The Complainant was well known as PPR (Pinault-Printemps-Redoute) before changing its name to Kering in 2013. A press article announced this change of name on March 4, 2013 on the Bloomberg website. The same day, the Respondent, Harouna Keita, registered the disputed domain name . The “www.” website refers to a French telecommunication company called “Malitel”, without any other content than a logo, a mention “soon available” and a contact email address.
According to the documentary evidence and contentions submitted, on May 7, 2014 the Complainant contacted the Respondent to ask for the transfer of the disputed domain name to the Complainant. The Respondent replied that his lawyer would contact the Complainant, but no lawyer contacted the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant states that the disputed domain name consists of the words “Kering” and “shop”, the first one being a registered trademark, the second one being totally devoid of distinctive character to designate a place where the Complainant’s good, protected under the KERING trademark, are sold. For this reason, the Complainant finds that a risk of confusion exists between the prior trademarks KERING and the disputed domain name . The Complainant specifies that the generic Top-Level-Domain extension “.com” is not to be taken into consideration since it is necessary for the registration of the domain name.
Furthermore, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name, as no license or authorization has been given to a third party by the Complainant to use the KERING trademark or to register any domain name incorporating the KERING trademark or any confusingly similar denomination such as “Kering-shop”.
Finally, the Complainant considers that the domain name was registered and used in bad faith, for several reasons:
- The Complainant contends that the disputed domain name is not in use. The “www.” website only contains a reference to “Malitel” supposedly registered as a trademark since the “TM” sign is present above the mark, and mentioning “French telecommunication company”. The Complainant mentions that no other content is available. No reference to “Kering shop” has been made, which cannot therefore be considered as a fair use of “kering-shop” with the disputed domain name.
- The Complainant contends that the Respondent is engaged in a pattern of conduct of preventing the Complainant from reflecting its trademark, in corresponding domain names. The Complainant states that the Respondent has not only registered the domain name , but also registered the following domain names and , which revert to , and .
- The Complainant contends that the Respondent was aware of the existence of the Complainant’s KERING trademark, because he registered the disputed domain name on the exact same day on which the change of name from PPR into Kering became public, and because a large advertisement has been made for the change of name. Furthermore, as for the Complainant, the Respondent could not ignore the notoriety of the Complainant’s group companies, which include many well-known luxury trademarks.
- The Complainant contends that, within the exchanges of correspondence between the Complainant and the Respondent, no answer has been obtained from the Respondent or his supposed lawyer after the Complainant sent a reminder to the Respondent in order to have the disputed domain name transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name;
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel observes that the Complainant did fully provide evidence that it has rights in the KERING trademark acquired through registration, at least in France and in Europe, which precedes the date of registration of the disputed domain name by several months, and that the Complainant’s trademarks rights are still in force.
The disputed domain name contains two words: “Kering” which is the exact reproduction of the KERING protected trademark, and “shop”.
The Panel concurs with the opinion of several prior UDRP panel decisions which have held that, when a domain name wholly incorporates a complainant’s registered mark, that may be sufficient to establish confusing similarity for purposes of the Policy.
The Panel also concurs with the opinion of several prior UDRP panel decisions which have held that, when the registered domain name contains a generic term in addition to a trademark, it does not dispel confusion.
Moreover, in the present case, the word “shop” is a generic and descriptive word which is used to designate the physical place where any person or company can sell products. The addition of “shop” to the trademark KERING can therefore evoke the activity of the companies of the Complainant’s group, who run many luxury shops around the world.
Many cases have ruled that a domain name which contains a registered trademark with the word “shop” as a suffix is confusingly similar to the trademark (see e.g. Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923, ; Lilly ICOS LLC v. Julian Besprozvanny,WIPO Case No. D2006-0380 ; Deutsche Telekom AG v. Gems N Pearls International Holding, WIPO Case No. D2005-0820 ; Deutsche Telekom AG v. Timmy Comeau,WIPO Case No. D2003-0377 ).
In view of the above, the Panel concludes that the disputed domain name is confusingly similar with the Complainant’s KERING trademark. B. Rights or Legitimate Interests
The Policy outlines (paragraph 4(c)) circumstances which, if found by the panel to be proved, shall demonstrate the respondent’s rights or legitimate interests in the domain name. These circumstances are:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the 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 consumers or to tarnish the trademark or service mark at issue.
According to prior UDRP panel decisions, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
In the absence of response, the Panel accepts as true the Complainant’s allegations that the Respondent has no authorization or license to use the KERING trademark into the disputed domain name and that the Respondent is not commonly known under the disputed domain name.
Moreover, there is no evidence that the Respondent is known by the disputed domain name and is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
In view of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(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 his web site 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 web site or location or of a product or service on the respondent’s web site or location.
The above four circumstances are not exclusive and bad faith may be found by the Panel alternatively.
The Complainant has provided evidence that the Respondent registered the disputed domain name the very same day on which the change of name of the Complainant from PPR into Kering was unveiled in a press article.
Several UDRP panel decisions have ruled that, when a change of circumstances implying that a new trademark or new circumstances with regards to the exploitation of a trademark becomes publicly known, like a public announcement, registering a domain name which includes the new trademark can be evidence of bad faith (see TV Azteca S.A.B. de C.V. v. Johny Romero (aka Johny Alfonso Romero Rocha)/ Total Play Inc. WIPO Case No. D2012-2533).
The Complainant has provided evidence that the group PPR, which name is now Kering, has a widespread reputation in the world. The Panel finds that the Respondent could not have ignored the notoriety of the group PPR, and therefore it can not be a coincidence that the Respondent registered the disputed domain name the exact same day as the change of name into “Kering” became public. Also, as previously noted, the Complainant’s trademark registrations for KERING precede the registration of the disputed domain name by several months. In view of the above, the Panel finds that the disputed domain name was registered in bad faith.
Under the provisions of paragraph 4(a)(iii) of the Policy, both registration in bad faith and use in bad faith shall be demonstrated.
According to the documentary evidence submitted, it appears to the Panel that a use in bad faith can be inferred from the following considerations.
First, the “www.” website reverts to only one page which includes the logo of what is mentioned to be a “French telecommunication company” (“Société de télécommunication française”) called “Malitel” with a “TM” sign, the expression “soon available” and a contact email address. No reference is made to the KERING trademark. The Panel finds that an Internet user who goes to this web page may believe that the Complainant is enlarging its activities to offer telecommunication services and has registered a “MALITEL” trademark.
Then, according to further research by the Panel; it appears that no company is incorporated in France under the name “Malitel”. The Panel considers that the Respondent is not likely to use in good faith a domain name to provide information or advertising on a false company. It is even likely that the Respondent may somehow generate revenues form displaying such information.
These two elements demonstrate that, by using the disputed domain name, the Respondent has attempted to attract Internet users to his website, by creating a likelihood of confusion with the Complainant’s trademark as to the source or affiliation with telecommunication services allegedly offered or promoted by the Respondent. The Panel considers this to be use in bad faith.
Finally, the Complainant explained that, contrary to what was initially said by the Respondent, no lawyer got back to the Complainant to discuss the required transfer of the disputed domain name. Failure by a respondent to respond to requests from the complainant provides strong support for a determination of use in bad faith (see e.g. Nike, Inc. v. Azumano Travel,WIPO Case No. D2000-1598).
Therefore, the Panel finds that the above circumstances constitute evidence that the Respondent registered and is using the domain name 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 name be transferred to the Complainant.
Christiane Féral-Schuhl
Sole Panelist
Date: August 7, 2014
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