Complainant is BA&SH, France, represented by Cabinet Bouchara, France.
Respondent is Domain Administrator, See PrivacyG, United States of America (“United States”) / Name Redacted, France. 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2019. On July 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 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 Complainant on July 11, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 11, 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 Respondent of the Complaint, and the proceedings commenced on July 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2019. On July 15, 2019, the Center received an email communication from a third party. On the same date, the Center received an email from Complainant. On July 22, 2019, the Center informed the Parties of the receipt of the third-party communication. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 2, 2019.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on August 7, 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
Complainant is BA&SH., a French company operating in the field of design, manufacture and distribution of ready-to-wear goods for women and fashion accessories.
Complainant has trademarks rights in the verbal “BA&SH” sign, including French trademark registration No. 3444110 dated August 1, 2006 in classes 3, 14 and 18 and duly renewed, European Union trademark registration No. 5679758 registered on February 10, 2012 in classes 3, 14, 18 and 25 and European Union trademark registration No. 15561905 registered on November 29, 2016 in classes 9, 24 and 35.
Respondent owns the disputed domain name which was registered on February 26, 2019. The disputed domain name resolves to a website offering for sale fashion products that ostensibly bear Complainant’s BA&SH trademarks. 5. Parties’ Contentions A. Complainant
Complainant argues that the disputed domain name is confusingly similar to its BA&SH trademarks. Indeed, Complainant states that the omission of the sign “&” in a domain name, being an invalid character in a domain name, does not render the disputed domain name distinguishable from its trademark. Complainant further states that the addition of the two descriptive terms “boutique”, which means “shop” in French and “shop” does not prevent the disputed domain name from being confusingly similar to Complainant’s trademarks.
Complainant then argues that Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent has no rights or legitimate interests as the disputed domain name imitates Complainant’s trademarks and use these trademarks in the course of commercial activity to offer goods and services identical of those of Complainant. Complainant also contends that Respondent did not obtain authorization to reproduce or imitate Complainant’s trademarks.
Complainant claims that the disputed domain name was registered and is used in bad faith. First, Complainant asserts that the disputed domain name was registered in bad faith. Respondent could not have ignored Complainant’s trademarks as it is imitates the BA&SH trademarks and the website associated with the disputed domain name illegally offers products under Complainant’s trademarks. Second, Complainant asserts that the disputed domain name is used in bad faith. The disputed domain name is used in the form of a website in order to illegally sell products under Complainant’s trademarks. B. Respondent
Respondent did not reply to Complainant’s contentions and is therefore in default. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, Complainant must prove that each of the following three elements are present:
(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 to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraphs 10(b) and 10(d) also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
Furthermore, paragraph 14(b) provides that “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.
Respondent did not reply to Complainant’s contentions. Respondent’s failure to respond, however, does not automatically result in a decision in favor of Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Taking the foregoing provisions into consideration the Panel finds as follows: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to consider in the first place, whether Complainant has established relevant trademark rights. The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain name is identical or confusingly similar to Complainant’s trademarks. This test involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. See section 1.7 of the WIPO Overview 3.0.
The Panel finds that Complainant has duly shown trademark rights in the “BA&SH” sign.
First, the generic Top-Level Domain (“gTLD”) is generally disregarded under the confusing similarity test, as it is a functional element. See section 1.11 of the WIPO Overview 3.0. Thus, the Panel notes that “.com” should not be taken into account when comparing the disputed domain name with the claimed trademarks as it is only a technical and necessary part of the disputed domain name (see Figaro Classifieds v. Bernard Elkeslassy,WIPO Case No. D2016-2234).
Second, Complainant states that the disputed domain name is confusingly similar to Complainant’s trademarks BA&SH. Previous UDRP panels have found the omission of the sign “&” in a domain name, being an invalid character in a domain name, does no render the domain name distinguishable from the original mark (See Dolce & Gabbana s.r.l.v. Xiaohua Lin,WIPO Case No. D2013-0604). Furthermore, it is well established that the addition of descriptive terms does not prevent a disputed domain name to be confusingly similar to complainant’s trademarks (see section 1.8 of the WIPO Overview 3.0, Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; Breitling SA v. Manoj Kumar Alwani,WIPO Case No. D2018-1883). The Panel thus finds that the addition of the two descriptive terms “boutique” and “shop” does not avoid a finding of confusing similarity between the disputed domain name and Complainant’s trademarks.
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademarks.
Complainant has therefore satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that a respondent has no rights or legitimate interests in the disputed domain name.
Complainant is required to establish a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, Respondent fails to come forward with such relevant evidence, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
Firstly, Complainant claims that it has granted authorization to Respondent to make any use of Complainant’s trademarks. Thus, Complainant contends that Respondent is not related in any way to Complainant’s business.
Secondly, the Panel finds that Respondent’s lack of rights or legitimate interests in the disputed domain name can be inferred in the circumstances of this case from Respondent’s failure to respond to Complainant’s contentions and to rebut Complainant’s prima facie case (seePomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493: “non‑response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).
Finally, the disputed domain name is imitating Complainant’s trademarks and the website associated with the disputed domain name is used to allegedly offer illegal goods and services, in the course of commercial activity, under Complainant’s trademarks. In addition, the said goods are apparently identical to those of Complainant.
The Panel thus considers that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and cannot claim a bona fide offering of goods or services.
The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith.
First, Complaint argues that the disputed domain name was registered in bad faith. Respondent could not have ignored Complainant’s trademarks. Indeed, the disputed domain name is imitating the BA&SH trademarks, and the website associated with the disputed domain name offers products under Complainant’s trademarks without authorization. In addition, the nature of the disputed domain name comprising Complainant’s trademark with descriptive terms affirms the confusion between the disputed domain name and Complainant’s trademarks since these terms are descriptive of the goods associated with Complainant’s trademarks (see Barclays Bank PLC v. Afrikhostings,WIPO Case No. D2012-0297; “the Disputed Domain Name comprises the word BARCLAYS followed by the generic word ‘bank’ followed by the country designator ‘uk’ with the further addition of the ‘.com’ generic Top Level Domain. As the Complainant is a bank based in the UK, the matter added to the BARCLAYS mark in the Disputed Domain Name self‑evidently compounds the confusion rather than doing anything to distinguish it from the Complainant’s brand name”).
The Panel therefore finds that Respondent could not have ignored the trademark BA&SH at the time it registered the disputed domain name .
The Panel thus finds that the disputed domain name has been registered in bad faith.
Second, the website associated with the disputed domain name is used to sell products under Complainant’s trademarks, which are apparently identical to those of Complainant without authorization. The Panel thus finds that the disputed domain name is used in bad faith.
The Panel therefore finds that Respondent has both registered and used the disputed domain name in bad faith.
Complainant has therefore satisfied paragraph 4(a)(iii) 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 Complainant.
Nathalie Dreyfus
Sole Panelist
Date: August 16, 2019
1 “The Respondent appears to have used the name and contact details of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.”
Full & Egal Universal Law Academy