The Complainant is C. C. V. Beaumanoir, France, represented by Inlex IP Expertise, France.
The Respondent is Contact Privacy Inc. Customer 0155324460/ Grey Shade Admin, VIBSHOP, United States of America (“United States”). 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 August 9, 2019. On August 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 12, 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 August 13, 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 August 16, 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 August 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2019.
The Center appointed Daniel Peña 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. 4. Factual Background
The Complainant is a French company specialized in the commercialization of clothing and fashion accessories.
The Complainant is the owner of well-known fashion brands such as BONOBO, CACHE-CACHE, and BREAL which are all part of the VIB’S concept. VIB’S is a concept store composed of physical shops as well as an eshop.
The Complainant has filed and uses several trademarks in several territories.
The Complainant is owner of International, European and French trademarks VIB’S in classes 3, 9, 14, 18, 25, 35, and 42 in relation with clothes, bags, shoes, and beauty products.
The Complainant is also the owner of the disputed domain name registered since May 21, 2001 and which is the official website of the Complainant.
The disputed domain name redirects to providing similar products and services as the Complainant. The Complainant provided evidence that, at the time of the Complaint, the disputed domain name was resolving to a copycat website which was pretending to be the Complainant’s website. 5. Parties’ Contentions A. Complainant
The disputed domain name reproduces the Complainant’s trademark VIB’S which is highly distinctive in relation with fashion industry.
The reproduction of the Complainant’s trademark VIB’S as the “dominant part” of the disputed domain name is confusingly similar to its prior trademarks VIB’S.
The Respondent has not been authorized by the Complainant to use the trademark VIB’S or to register any domain name incorporating the trademark VIB’S.
The Respondent has no prior rights or legitimate interests in the disputed domain name as he registered the disputed domain name after the Complainant had registered their trademarks and domain names VIB’S. The Respondent has no license from the Complainant to use the trademark VIB’S. In the absence of any license from the Complainant to use the trademark, no actual or contemplated
The Complainant submits that there is clear evidence that the Respondent registered and is using the disputed domain name in bad faith with knowledge of the Complainant’s rights in VIB´S trademark, considering the reputation of the Complainant’s VIB´S trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
Considering these requirements, the Panel rules as follows. A. Identical or Confusingly Similar
The Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademarks. The Respondent’s incorporation of the Complainant’s trademark in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s marks.
Mere addition of the descriptive term “shop” as suffix to the Complainant’s mark fails to distinguish. The addition of other terms (whether descriptive, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element. The nature of such term(s) may however bear on assessment of the second and third elements. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In particular, this Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain “.com” to the disputed domain names does not constitute an element so as to avoid confusing similarity for purposes of the Policy (see: Carlsberg A/S v. Xu Guo Xing,WIPO Case No. D2017-0301; Philip Morris USA Inc. v. Shimei Wang,WIPO Case No. D2016-2517; Livelle v. Martijn Noordermer,WIPO Case No. D2016-2524).
The Panel is satisfied that the disputed domain name is identical or confusingly similar to the Complainant’s mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth.
Refraining from submitting a Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name.
The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner.
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.
In the Panel’s view a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the widespread commercial recognition of the trademarks VIB’S is such that the Respondent, must have had knowledge of the trademark before registering the disputed domain name.
The Respondent appears to have chosen the disputed domain name in order to deliberately attract Internet users to its website in the mistaken belief that it was the website of the Complainant, or otherwise linked to or authorized by the Complainant. That impression is only reinforced by the content of the Respondent’s site. As such, the Panel is satisfied that by using the disputed domain name, the Respondent has intentionally attempted to attract, 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 its website or of the products on its website. Under paragraph 4(b)(iv) of the Policy, this circumstance shall be evidence of the registration and use of a domain name in bad faith.
The Panel concludes 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.
Daniel Peña
Sole Panelist
Date: September 25, 2019
Full & Egal Universal Law Academy