Complainant is Promod of Marcq-en-Baroeul, France, represented by Dreyfus & associés, France.
Respondent is Hossein Sadeghi of Zanjan, Islamic Republic of Iran (“Iran”). 2. The Domain Name and Registrar
The disputed domain name is registered with Realtime Register B.V. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2015. On February 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 19, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 13, 2015.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on March 19, 2015. 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
Complainant runs a large retail fashion clothing business that started in France, but now has a presence in many countries throughout Europe, the Middle East, Asia, and elsewhere. Complainant owns registrations for the PROMOD trademark in many countries around the world, including French Trademark Registration No. 597138, registered February 8, 1993 in classes 24, 25 and 26. Complainant’s trademarks also enjoy registration in Iran.
The disputed domain name was registered May 13, 2014. It routes to a Persian-language website displaying a range of luxury goods under numerous famous fashion trademarks, allegedly offering many for sale at discounted prices. The goods on display include jewelry, and men’s and women’s clothing. 5. Parties’ Contentions A. Complainant
Complainant avers that its business under the PROMOD mark employs 5,000 staff and that it has over 1,000 retail outlets in 52 countries with an annual turnover in excess of USD 1 billion.
Summarizing its basic legal contentions, Complainant alleges that (1) the disputed domain name is identical or confusingly similar to Complainant’s trademarks, (2) Respondent has no rights or legitimate interests in the disputed domain name, and (3) the disputed domain name was registered and is being used in bad faith, all in violation of the Policy.
Complainant explains that its lawyer wrote to Respondent several times. After receiving the fourth cease-and-desist notification from Complainant’s counsel, Respondent allegedly responded that it felt that the disputed domain name was not the same as Complainant’s mark, and also offered to become Complainant’s commercial representative in Iran. Complainant apparently did not accept Respondent’s offer.
On the basis of the above allegations, Complainant seeks transfer. B. Respondent
Respondent did not reply to Complainant’s contentions in the present proceeding. 6. Discussion and Findings
The Panel must render its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
The Complaint must establish these elements even if Respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
Although the disputed domain name is not identical to Complainant’s trademarks, the Panel agrees that the disputed domain name is confusingly similar to Complainant’s well-known PROMOD trademark.
Panels usually disregard the generic Top-Level-Domain suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315.
The disputed domain name adopts Complainant’s trademark in its entirety, adding only the letter “e” and the descriptive word “group.” The Panel finds that Respondent’s addition of the single letter “e” and this descriptive term does not negate the confusion created by Respondent’s complete inclusion of the PROMOD trademark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-aventis Deutschland GmbH v. Andrey Mitrofanov,WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc.,WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner,WIPO Case No. D2006-0629.
The Panel finds therefore that the disputed domain name is confusingly similar to the registered trademarks of Complainant and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled. B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant may show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
The Panel accepts Complainant’s undisputed allegations that Respondent has no authorization or license to use its trademark in the disputed domain name. The Complaint also avers that Respondent did not dispute the existence of Complainant’s trademark rights and offered to provide a disclaimer on Respondent’s website stating that it had no relation with Complainant. The Panel finds that these additional circumstances support the conclusion that Respondent lacks the rights to use the marks in the disputed domain name.
The website to which the disputed domain name routes displays links commercializing products similar to those of Complainant. The Panel finds therefore that Respondent has been using Complainant’s marks for its own commercial purposes and not for a noncommercial purpose.
Although Complainant does not address this point, it does not appear on the record that Respondent is commonly known by the disputed domain name. The Panel agrees with Complainant that by offering commercial products on the website, including products similar to Complainant’s goods, Respondent is seeking to attract Internet users through Complainant’s marks for Respondent’s own commercial purposes. There is no indication that Respondent offers Complainant’s products for sale (either with or without authorization), therefore the Panel also finds that such use of the disputed domain name cannot constitute a bona fide offering.
The Panel finds that the Complaint makes out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. By filing no response, Respondent has not rebutted Complainant’s prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of “rights or legitimate interests” in the disputed domain name.
The Panel further finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the domain name. See e.g., Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established, as elaborated below.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion with a complainant’s mark, may be evidence of bad faith registration and bad faith use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623.
Examining the circumstances in this case, the Panel infers that Respondent was undoubtedly aware of Complainant’s PROMOD mark, which had been registered and enjoyed widespread international use for many years prior to the registration of the disputed domain name. The Panel finds that Respondent deliberately included the mark in the disputed domain name to create confusion and attract Internet users to its website for commercial gain. Therefore, the Panel concludes that Respondent registered the disputed domain name in bad faith.
Respondent’s website shows that the disputed domain name is used to promote and commercialize products similar to those sold by Complainant. The Panel concludes that this activity evidences bad faith use by Respondent. Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 (citing Google, Inc. v. and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH,WIPO Case No. D2003-0088); DaimlerChrysler Corporation and DaimlerChrysler Service North America LLC v. LaPorte Holdings, Inc.,WIPO Case No. D2005-0070, (citing Royal Bank of Canada v. Henry Chan,WIPO Case No. D2003-0031).
The Panel further finds that Respondent’s failure to reply to the Complaint is further evidence of use in bad faith.
The Panel concludes that the record establishes both the elements of bad faith registration and bad faith use by Respondent.
Consequently, the Panel concludes that the requirements of the third element of Policy paragraph 4(a) are fulfilled. 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 Complainant.
Nasser A. Khasawneh
Sole Panelist
Date: April 2, 2015
The parties’ correspondence is included in annexes to the Complaint.
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