The Complainant is Catherine Sidonio of Tamaris, La Seyne Sur Mer, France, represented by Kilburn & Strode LLP, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is Jennifer Huber of Kiel, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2018. On April 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2018, 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 proceedings commenced on April 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2018.
The Center appointed Anna Carabelli as the sole panelist in this matter on May 23, 2018. 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 designs and manufactures a range of clothing and accessories under the trademark MOLLY BRACKEN and sells them online through its website “” and selected online shops for clothing and accessories (e.g., “” and “”).
The Complainant is the owner of multiple registrations for the mark MOLLY BRACKEN throughout the world, including European Union (“EU”) Trademark Registration No. 006906424, registered on December 16, 2008, as per the schedule attached to the Complaint as Annex 3.
The disputed domain name was registered on May 25, 2017. The disputed domain name resolves to a website featuring the trademark MOLLY BRACKEN on the web page and offering for sale a range of clothing and accessories under the MOLLY BRACKEN brand. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
(a) The Complainant’s trademark MOLLY BRACKEN is an inherently distinctive mark being the family name and surname of the Complainant’s grandmother. The disputed domain name is confusingly similar to the Complainant’s trademark, since it wholly contains it letter by letter; the addition of the generic term “wholesale”, being descriptive of a potential manner of distribution of the Complainant’s fashion goods, only increases this confusing similarity by suggesting that the Respondent’s website is operated by the Complainant or under license from the Complainant.
(b) The Respondent has no rights or legitimate interests in the disputed domain name since: (i) the Complainant has no relationship with the Respondent; (ii) the Respondent is not commonly known by the disputed domain name; and (iii) the Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
(c) The Complainant also asserts that the goods advertised and sold via the Respondent’s website under the MOLLY BRACKEN trademark do not originate from the Complainant and are infringing goods.
(d) The disputed domain name was registered in bad faith. The fact that the disputed domain name comprises the Complainant’s distinctive trademark and the description of the business, which it carries on, indicated that the Respondent was well aware of the Complainant’s trademark when registering the disputed domain name.
(e) The Respondent is using the disputed domain name in bad faith to intentionally attempt to confuse and attract, for commercial gain, Internet users to its website where it offers for sale infringing clothing and accessories in relation to the Complainant’s trademark. In this connection, the Complainant relates an instance of actual confusion by submitting its correspondence with a Canadian purchaser of a MOLLY BRACKEN branded summer dress from the Respondent’s website. (Annexes 5 and 6 to the Complaint). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint 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.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark; and
(ii) the 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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) above. A. Identical or Confusingly Similar
The Complainant has proved that it owns trademark registrations for the mark MOLLY BRACKEN in several countries and including the European Union.
The disputed domain name is confusingly similar to the Complainant’s trademarks, as it entirely incorporates the MOLLY BRACKEN mark with the addition of the generic term “wholesale”. It is a well-established principle that descriptive or generic additions to a trademark do not avoid confusing similarity of domain names and trademarks (GA Modefine SA v. Riccardo Bin Kara-Mat,WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International,WIPO Case No. D2000-1219; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp.,WIPO Case No. D2000-0464; eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307).
Accordingly the Panel finds that the Complainant has established element 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the trademark MOLLY BRACKEN.
The Complainant asserts that the Respondent is not commonly known by the disputed domain name and cannot demonstrate any legitimate noncommercial or fair use of the disputed domain name, particularly because the Respondent is using the disputed domain name to sell goods under the MOLLY BRACKEN trademark, which do not originate from the Complainant and are infringing goods.
The Complainant has established prima facie evidence that none of the three circumstances establishing legitimate interests or rights mentioned above applies. As stressed by many UDRP decisions, in such a case the burden of production shifts to the Respondent to rebut the evidence (see, among others, Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683; OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyP,WIPO Case No. D2015-1149).
Because the Respondent failed to submit a response to the Complaint, and given that the allegations of the Complaint prima facie do not raise substantial doubts, the Panel accepts as true all allegations set forth in the Complaint and holds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Accordingly the Panel finds that the Complainant has established element 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The fact that the disputed domain name incorporates the Complainant’s trademark (consisting of the Complainant’s grandmother’s name and surname) suggests that in all likelihood the Respondent was aware of the Complainant’s trademark at the time it registered the disputed domain name.
The evidence shows that the website at the disputed domain name is being used by the Respondent to offer for sale MOLLY BRACKEN branded goods, which, according to the Complainant’s allegations, do not originate from the Complainant and are infringing goods.
The Panel finds that by using the disputed domain name, the Respondent intentionally confuses and diverts for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of goods on the Respondent’s website.
Accordingly the Panel finds that the Complainant has established element 4(a)(iii) of the Policy. 7. Decision
For all 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.
Anna Carabelli
Sole Panelist
Date: June 6, 2018
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