The Complainant is Self-Portrait IP Limited of Hong Kong, China, represented by Taylor Wessing, United Kingdom.
The Respondent is jafraysi jardines of Bronx, New York, United States of America (“United States”). 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 March 22, 2019. On March 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 28, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 29, 2019.
The Center verified that the Complaint together with the amended 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 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 22, 2019. On April 3 and 4, 2019, the Center received communications from a third party. The Center informed the Parties of these communications, but did not receive any reply. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2019.
The Center appointed Alexandre Nappey as the sole panelist in this matter on May 3, 2019. 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 is Self-Portrait, a contemporary fashion label founded by Han Chong in November 2013. Since its launch, Self-Portrait has received international recognition and become a go-to for occasion wear for women all over the world.
The Complainant is the owner of several SELF-PORTRAIT trademarks among which:
- United Kingdom trademark SELF-PORTRAIT registered under number 3007606 registered on August 30, 2013;
- United States trademark SELF-PORTRAIT registered under number 5038313 registered on September 13, 2016; and
- international trademark SELF-PORTRAIT registered under number 1226502 registered on October 2, 2014, designating China and the European Union.
These registrations cover clothing and retail services in classes 25 and 35 (amongst other goods and services).
The Complainant also owns the domain name, which operates its “www.self‑portrait‑” website.
The disputed domain name is registered by the Respondent Jafraysi Jardines on December 12, 2018. The dispute domain name resolves to a webpage offering for sale SELF-PORTRAIT products at a discounted price. 5. Parties’ Contentions A. Complainant
The Complainant states that the disputed domain name is confusingly similar to its prior trademark SELF-PORTRAIT.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since:
- the disputed domain name was registered after the establishment of the Complainant’s well-known SELF-PORTRAIT mark;
- it resolves to a fraudulent website pretending to be the official website of the Complainant;
- there is no evidence of the Respondent use of the disputed domain name in connection with a bona fide offering of goods and services;
- there is no evidence that the Respondent has been commonly known by the disputed domain name;
- there is no evidence that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the Respondent has registered the disputed domain name in bad faith:
- By using the disputed domain name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s reputed SELF-PORTRAIT mark and its business;
- The Respondent‘s registration, fraudulent use, and any other use, of the disputed domain name will disrupt the business and image of the Self-Portrait network by misleading members of the public into believing that the disputed domain name is connected with Self-Portrait. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
Having considered the Parties’ contentions, the Policy, the Rules, the Supplemental Rules and applicable law, the Panel’s findings on each of the above-mentioned elements are the following. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns trademark rights in SELF-PORTRAIT, which predate the registration of the disputed domain name.
The Panel finds that the disputed domain name , is confusingly similar to the registered SELF-PORTRAIT trademark owned by the Complainant.
Indeed, the disputed domain name incorporate the entirety of the Complainant’s SELF-PORTRAIT trademark with the addition of the word “dress”.
This word does not whittle confusing similarity, it directly refers to products sold by the Complainant and then directly refers to the Complainant’s activity.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances are situations that can demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Considering the difficulty to demonstrate a negative, UDRP panels generally find it is sufficient for a complainant to raise a prima facie case against the respondent under this head and the burden of production will shift to the respondent to rebut that prima facie case. See e.g., section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Here, the Complainant has stated that it has not authorized, licensed or consented to the Respondent any use of its “SELF-PORTRAIT” trademark.
It results from the circumstances that the Respondent does not own any right on the trademark SELF‑PORTRAIT or is commonly known by the disputed domain name.
On the contrary, as stated in the Complaint, and not contested, the Respondent is trying to impersonate the Complainant’s website.
In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
As the Respondent has not provided otherwise, the Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name. It provides that:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
Since SELF-PORTRAIT is a trademark which was registered for the first time in 2013 whereas the disputed domain name was registered only on December 12, 2018 and there is no evidenced relationship between the Parties, it may be inferred that the Respondent was aware of the Complainant’s trademark at the time it registered the disputed domain name .
Considering the printouts submitted by the Complainant, the Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the SELF‑PORTRAIT trademark as the Respondent is using the disputed domain name in connection with a website trying to give the impression to be the official website of the Complainant.
The Respondent is, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy.
The Panel is therefore satisfied that the Respondent also used the disputed domain name in bad faith.
The Panel finds that the above described circumstances constitute registration and use in bad faith pursuant to the third requirement of paragraph 4(a) of the Policy. 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.
Alexandre Nappey
Sole Panelist
Date: May 20, 2019
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