The Complainant is Atelier De Production Et De Création (A.P.C.), France, represented by Casalonga Avocats, France.
The Respondent is Linyi Wong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2019. On August 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2019, 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 August 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 4, 2019.
The Center appointed Christian Schalk as the sole panelist in this matter on September 13, 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.
The Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(a) and (b) of the Rules. The language of the proceeding is English. 4. Factual Background
The Complainant has been active in the fashion industry for more than 30 years. In particular, the Complainant designs and commercializes women and men clothes and accessories, as well as lifestyle objects. The Complainant’s products have received broad media coverage in the media, among others in newspapers such as Financial Times, the Guardian, the New York Times and in the Wall Street Journal.
The Complainant owns trademark rights in the letter combination “A.P.C.” among others as follows:
- French Trademark Registration No. 3370130 for A.P.C., registration date, July 12, 2005, covering goods in International Classes 14, 18, and 25;
- European Union (“EU”) Trademark Registration No. 006843205 for A.P.C., registration date, April 9, 2008, covering goods in International Classes 14, 18, and 25;
- EU Trademark Registration No. 010270941 for A.P.C., registration date, September 16, 2011, covering goods in International Classes 3, 9 and 24;
- International Trademark Registration No. 875986 for A.P.C., registration date, December 16, 2005, covering goods in International Classes 3, 9 and 24;
- International Trademark Registration No. 1099666 for A.P.C., registration date, September 21, 2011, covering goods in International Classes 3, 9 and 24;
The Complainant owns among others the domain name since January 8, 1996.
The Respondent registered the disputed domain name on July 13, 2018. The disputed domain name resolves to a website where the Complainant’s A.P.C. trademark appears in a prominent manner on the top left of the website as well as in connection with clothes, shoes and accessories for women and men featured there. All products are offered for considerable reduced prices. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is quasi identical to its trademark A.P.C. The Complainant underlines in this context that its trademark has no meaning, and is highly distinctive for products and services such as clothes and accessories. The Complainant states further that the added term “outlet” is a generic word, is positioned at the end of the disputed domain name and separated from his A.P.C. mark with a hyphen. The Complainant explains in this context that the term “outlet” is a descriptive term and commonly used in the retail industry to designate a type of store where manufacturers sell products directly to consumers at discounted prices. The Complainant therefore is convinced that by using the word “outlet” attached to the Complainant’s A.P.C. trademark, the Respondent implies that the website to which the disputed domain name is redirected to is an outlet store of the Complainant’s products. For this reason, the Complainant concludes that addition of the word “outlet” in the disputed domain name does not diminish the confusing similarity between the disputed domain name and the Complainant’s A.P.C. trademark. The Complainant cites in this context Coach, Inc. v. DVLPMMT Marketing, Inc.,WIPO Case No. D2014-0784 and Philipp Plein v. OPPP OPPP,WIPO Case No. D2015-2377, to support its arguments.
The Complainant alleges also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that it has never authorized nor licensed to the Respondent to use or to register any domain name incorporating the Complainant’s trademarks. The Complainant adds further that the Respondent is not an authorized dealer of the Complainant’s products and is also not selling authentic A.P.C. products. The Complainant states also that the Respondent has incorporated the Complainant’s trademark in the disputed domain name in a way that may only be explained by reference to the Complainant’s trademark and products and that the Respondent has been using this domain name to display without authorization, products branded with A.P.C. trademarks and reproduces the Complainant’s trademarks on the website to which the disputed domain name resolves. For these reasons, the Complainant believes that the Respondent must have had knowledge when he registered the disputed domain name. The Complainant argues further that the addition of the world “outlet” with regard to the content of the website displayed under the disputed domain name implies that it is an outlet of the Complainant’s products and so reinforces the intended reference to the Complainant’s trademarks and products, while it deceptively leads consumers to believe that it is affiliated in some way with the Complainant. Therefore, the Complainant believes that the Respondent is clearly referring, without authorization to the Complainant’s trademarks, which have acquired a substantial reputation around the world, for its own use.
The Complainant alleges finally that the Respondent registered the disputed domain name in bad faith and that the disputed domain name is being used in bad faith. The Complainant states that the Respondent has incorporated the Complainant’s trademark in the disputed domain name to deliberately suggest that the website to which the disputed domain name resolves is an outlet of the Complainant’s products. Therefore, the Complainant is convinced, that the Respondent must have had prior knowledge of the Complainant’s trademarks and registered the disputed domain name to unduly benefit from the reputation of the Complainant’s trademarks, without any authorization or license from the Complainant to do so.
The Complainant argues further that the Respondent uses the disputed domain name in order to display on the website, to which this domain name resolves, reproductions of the Complainant’s trademarks, as well as pictures of products bearing the Complainant’s trademarks without the Complainant’s authorization which may let Internet users believe that the website is operated by the Complainant. The Complainant explains also that it appeared that the website to which the disputed domain name resolves, does not sell any products but only propose those for sale. When Internet users try to buy products from this website, a sale as such does not take place. Therefore, the Complainant believes that the Respondent appears to be using the disputed domain name and the website linked to it to collect, without authorization, the Internet users’ personal and confidential information such as their credit cards information. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in the term A.P.C. This term has been registered by trademark offices of many countries of the world.
The disputed domain name is also confusingly similar to the Complainant’s trademark rights in A.P.C. As it has been decided by previous UDRP Panels, incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see, for instance, Yahoo! Inc. v. Blue Q Ltd., Romain Barissat,WIPO Case No. D2011-0702; Casa Editorial El Tiempo, S.A. v. Montanya Ltd,WIPO Case No. D2009-0103; T, S.A. de C.V. v. Francisco Gómez Ceballos,WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA,WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047). The disputed domain name features the word Mark A.P.C. in its entirety.
Furthermore, in accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark does not prevent a finding of confusing similarity (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis,WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan,WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0565; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0624; and Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002).
As set out in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”. Therefore, the addition of the term “outlet” does not prevent a finding of confusing similarity with the Complainant’s trademark since “outlet” is commonly used in the retail industry of many countries to designate a type of store where manufacturers sell products directly to consumers at discounted prices.
Furthermore, the fact that the disputed domain name does not contain the punctuation character after each letter of the Complainant’s trademark and that it features a hyphen between the Complainant’s A.P.C. – mark and the term “outlet” constitutes very minor differences which have no relevance for the determination of confusing similarity between the disputed domain name and the Complainant’s trademark A.P.C.
In addition, the gTLD “.com” in the disputed domain name does not affect the determination that the disputed domain name is identical or confusingly similar to the Complainant’s trademark A.P.C. in which the Complainant has rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg,WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936; and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan,WIPO Case No. D2001-0615 and cases cited therein). It is well-established that gTLDs such as “.com” are generally disregarded when determining if there is identity or confusing similarity.
For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
It is the consensus view of UDRP panels that once the complainant has made out a prima facie showing on this element, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0); Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; and Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.
The Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Specifically, the Panel finds no evidence that the Respondent has been or is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant nor has a license to use its trademark. The Respondent has also not provided the Panel with any substantial explanations as to the Respondent’s rights or legitimate interests in the disputed domain name.
The Respondent has directed the disputed domain name to a website where not only the Complainant’s trademark is presented in a prominent manner but also products apparently offered for sale which are branded with the Complainant’s A.P.C. mark. The addition of the term “outlet” in the disputed domain name implies that it is a website where the Complainant offers its products for discounted prices and so raises the expectation among Internet users that the Respondent forms either part of the Complainant’s group of companies or is at least somehow affiliated with the Complainant while this is not the case. Therefore, the Panel is convinced that the only reason for the Respondent to register the disputed domain name was, on balance, to capitalize on the Complainant’s goodwill by redirecting Internet traffic intended for the Complainant away from it. Such behaviour cannot constitute a bona fide or legitimate use of the disputed domain name (see also Bright Imperial Ltd. V. Cleiton da Silva Pardim,WIPO Case No. D2013-1548).
Furthermore, searches for the term “A.P.C.” in a search engine such as Google revealed the Complainant’s services in a prominent manner. The Panel is therefore convinced that the Respondent was aware of the Complainant when it registered the disputed domain name and the Panel can find no plausible circumstances in which the Respondent could legitimately use the disputed domain name (see also Microsoft Corporation v. Superkay Worldwide, Inc.,WIPO Case No. D2004-0071).
For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore, the requirement of paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of a domain name:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its services when it registered the disputed domain name.
The Complainant has a strong presence in the Internet. Furthermore, the website to which the disputed domain name resolves features the Complainant’s A.P.C. mark in a prominent manner and pretends to offer discounted products of the Complainant. In addition, had the Respondent carried out even a basic search in search engines such as Google or Bing, it would have found a number of references to the Complainant. Therefore, the Panel is convinced that the Respondent was aware of the Complainant when it registered the disputed domain name. The Panel finds further, that the Respondent is also using the disputed domain name in bad faith.
The disputed domain name resolves to a website which displays the Complainant’s trademark in a prominent manner. The products offered on this website are the same kind of products which are marketed by the Complainant and bear also the Complainant’s trademarks. The addition of the term “outlet” in the disputed domain name and offering on the website to which the disputed domain name resolves products under the Complainant’s A.P.C. trademark for considerable reduced prices, implies that this website is an outlet of the Complainant’s products and so raises the expectation among Internet users that the Respondent forms either part of the Complainant’s group of companies or is at least somehow affiliated with the Complainant while this is not the case. Internet users often combine trademarks and descriptive words in their search engine to narrow down their search results. There is even a certain likelihood that such combination could consist of the terms such as “A.P.C.” and “outlet” since there are good reasons to believe that Internet users search for discounted products of the Complainant, for instance, at the end of a summer- or winter season. Once such Internet users reach the website to which the disputed domain name resolves, they could then easily believe that they are either on the Complainant’s website or that this website is at least somehow related with the Complainant while both are not the case. Such behavior is a clear evidence of bad faith. The Panel is convinced that the Respondent has selected the disputed domain name with the purpose to redirect Internet users seeking for the Complainant’s products to the website to which the disputed domain name resolves.
Furthermore, the Panel believes that another purpose of the Respondent was to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
In addition, the Respondent’s behaviour could also disrupt the Complainant’s business since Internet users may get frustrated when they cannot buy the Complainant’s products from a website which they believe belongs somehow to the Complainant. As a consequence, they may seek for the Complainant’s competitor’s products instead and may even not return to the Complainant’s real website and buy the products offered there. The only reason for this situation is the registration of the disputed domain name by the Respondent.
Furthermore, the Respondent has apparently also provided inaccurate contact details when it registered the disputed domain name or failed at least to correct such false contact details. The Center has used the contact details given in the WhoIs record as provided by the Registrar when it tried to contact the Respondent. However, the courier service provider could not reach the Respondent in order to deliver the Written Notice of the Complaint. Therefore, the Panel notes that the Respondent may have given incorrect contact details to frustrate or at least to delay this proceeding (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Given all the facts and circumstances of this case, the Panel finds that the disputed domain name was registered and is being used in bad faith. 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.
Christian Schalk
Sole Panelist
Date: September 25, 2019
Full & Egal Universal Law Academy