The Complainant is Sarenza S.A. of Paris, France, represented by Spiegeler Advocaten B.V., the Netherlands.
The Respondent is Michael Wong of Rotterdam, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2016. On January 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on January 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2016.
The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on February 29, 2016. 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 owns the trademark SARANZA, registered on March 6, 2007. The Complainant is also the owner of the trademark SARENZA, a French ecommerce company launched in 2005 that has been expanding throughout Europe since 2009.
The Complainant owns both trademarks SARANZA and SARENZA, terms that differ only by changing the letter “a” for the letter “e”, though the Complainant’s company identity is Sarenza.
The SARENZA trademark has won several prizes and awards during the past years, and its business has achieved significant numbers in terms of investment and sales. It delivers to 26 countries throughout Europe, and has dedicated websites in several European countries, including the Netherlands.
The Complainant’s headquarters are located in Paris.
The disputed domain name comprises the Complainant’s trademark SARANZA in its entirety and adds the term “paris”.
The disputed domain name was registered on October 2, 2013. Currently it redirects users to another website under the domain name and displays a message “benenew underwear coming soon”. 5. Parties’ Contentions A. Complainant
The Complainant contends that the three requirements of paragraph 4(a) of the Policy are met:
1. The disputed domain name is confusingly similar to the trademark and to the service mark in which the Complainant has rights: the Complainant claims it owns the trademarks SARANZA and SARENZA, registered, among others, in class 25. These trademarks are well known in Europe, this being noticed in press articles recognizing its success. The Complainant alleges that the disputed domain name results of the combination of the word “saranza” with the word “paris” and that “saranza” is identical to the Complainant trademark SARANZA. Additionally, the Complainant stated that the disputed domain name’s website offered to sale underwear, and that falls in class 25, the same class the trademark SARANZA is registered. Finally, the Complainant alleges that there was a significant number of customers complaints, who have been mistaken by the disputed domain name’s website offer.
2. The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that the Respondent has not been commonly known by the disputed domain name or acquired no trademark or service mark rights. It alleges that the Respondent is making an illegitimate commercial use of the disputed domain name, and strongly suggests the Respondent has been using the disputed domain name in a fraud-scheme.
3. The Respondent has registered and is using the disputed domain name in bad faith. The Complainant claims that its company and its trademarks are well known in Europe and in the Nederland and thus the use of its trademark in a domain name would attract Internet users once it would be easily recognized. Therefore, the Complainant argues that the Respondent is intentionally using the disputed domain name to attract Internet users for its own commercial gain. The Complainant further alleges that it had already suffered a great damage on its reputation in the Netherlands due to the commercial offers on the disputed domain name’s website. The fraudulent scheme connected to the disputed domain name’s website includes requesting the telephone number of the costumers, then calling to obtain bank details in order to conclude the purchase, a further amount of money is then taken from the costumers’ bank account and the costumers call the Complainant costumer service to protest. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”. Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has “no rights or legitimate interests in respect of the domain name”. Policy, paragraph 4(a)(ii). The third element a complainant must establish is that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). A. Identical or Confusingly Similar
The disputed domain name results of the combination of the terms “saranza” and “paris”. The term “saranza” is identical to the Complainant’s trademark SARANZA and the term “paris” happens to be identical to the name of the city where the Complainant’s headquarters are located, Paris.
The Complainant provided evidence that it has prior registered rights in the SARANZA trademark.
Consistent with previous UDRP decisions, the addition of a generic descriptive or geographical term, in this case the word “paris”, as well as the generic Top-Level Domain (“gTLD) “.com” is irrelevant in order to distinguish a disputed domain name from the Complainant’s mark. On the contrary, the Panel finds that the addition to the term “paris” contributes to reinforce the similarity as this corresponds to the city where the Complainants company was founded and has its headquarters located.
In light of the above, the Panel finds that the first element of the Policy has been satisfied. B. Rights or Legitimate Interests
In order for a complainant to prove that a respondent has no rights or legitimate interests in a disputed domain name, previous UDRP panels have consistently held that it is sufficient for a complainant to make a prima facie case (see, amongst others, Croatia Airlines, d.d. v. Modern Empire Internet Limited,WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110). Once a prima facie case is shown by the complainant, the burden of production shifts to the respondent to produce evidence of its rights or legitimate interests in a disputed domain name to the panel.
The Panel accepts that, as stated by the Complainant, the Respondent has acquired no trademark or service mark rights and is not commonly known by the disputed domain name.
It is apparent that the reason the Respondent registered and is using the disputed domain name is that it knew of and wanted to illegitimately trade on the Complainant’s fame.
The Respondent has not presented any proof or argument that could lead this Panel to conclude that the Respondent could have any legitimate interests.
The Panel accepts that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of a Response to the Complaint, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting its rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy has been satisfied. C. Registered and Used in Bad Faith
Firstly, the Panel notes that, as decided in Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties,WIPO Case No. D2005-1085, the registration of a well-known trademark by a party with no connection to the owner of the trademark, no authorization and no legitimate purpose to use the mark is a strong indication of bad faith.
Given the Complainant’s well-established identity and the widely known SARENZA and SARANZA trademark, the Panel finds it very likely that the Respondent was aware of the Complainant’s trademarks at the time it registered the disputed domain name.
Secondly, the Panel finds it significant that the disputed domain name incorporates the term “saranza”, which is identical to the trademark SARANZA, owned by the Complainant, and very similar to the Complainant’s identity trademark SARENZA. This strongly suggests that the Respondent was aware of this thin but essential difference at the time it registered the disputed domain name, and thus, this suggests the Respondent has a knowledge of and familiarity with the Complainant’s business and brand, seeking, through the website at the disputed domain name, to pass itself off as the Complainant.
Subsequently, the Panel finds that the intention of the Respondent was to take advantage of the reputation of the Complainant and its trademark, attracting Internet users to the website at the disputed domain name, by causing an erroneous association with the Complainant, its activities and products. In the Panel’s view SARENZA and SARANZA are so closely linked and associated with the Complainant that the Respondent’s use the Complainant’s trademark SARANZA in the disputed domain name, implies bad faith. See Parfums Christian Dior v. Javier Garcia Quintas,WIPO Case No. D2000-0226.
Therefore, the Panel finds that the Respondent is attempting to trade upon the goodwill present in the SARANZA mark for commercial gain, by confusing Internet users as to the Complainant’s involvement in the website at the disputed domain name and offering for sale similar products. As the Respondent is not affiliated with the Complainant, this is further evidence of efforts to mislead Internet users, and of bad faith registration and use of the disputed domain name.
In light of the above, the Panel finds that the third element of the Policy has been satisfied. 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.
Gonçalo M. C. Da Cunha Ferreira
Sole Panelist
Date: March 14, 2016
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