Complainant is Centrale Distribution, France, represented by Deshoulières Avocats, France.
Respondent is Georg Petrosky, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2019. On December 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 2, 2020. The Center appointed Georges Nahitchevansky as the sole panelist in this matter on January 13, 2020. 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, Centrale Distribution, is a producer and seller of furniture and other items under the name and mark STARBAY. Complainant acquired all rights in the STARBAY mark in 2013 from its predecessor in interest, MDF Creation. At some point thereafter, Complainant created a Hong Kong corporation known as Ashkelly International Ltd. and entered into an agreement with an individual by the name of Dominique Moal. Under that agreement, the owner of Complainant, Michel Coulon, and Dominique Moal agreed to an arrangement regarding Ashkelly International Ltd. Mr. Moal also undertook to work exclusively for Ashkelly International Ltd. and to create designs and collections for the STARBAY line of products. Complainant owns a number of trademark registrations for the STARBAY mark in several countries around the world. These include logos marks in France and the United States of America that include the STARBAY name, the earliest of which was registered in France on September 1, 1999 (Registration No. 99810686) for the trademark STARBAY MOBILIER DE MARINE ACCESSOIRES DE VOYAGE (the “STARBAY mark”). Complainant also owns a pending word mark application for the STARBAY mark in the European Union that was filed on October 2, 2019 (No. 018132545). Complainant also owns and uses the domain name Respondent registered the disputed domain name on May 30, 2019. Respondent has used, and continues to use, the disputed domain name with a website featuring the name STARBAY that promotes the sale of furniture designed by Dominique Moal. 5. Parties’ Contentions A. Complainant Complainant argues that it is the owner of all rights in the STARBAY name and mark in connection with the production and sale of furniture, and that Complainant acquired such rights in the STARBAY mark in 2013 well before the disputed domain name was registered by Respondent. Complainant contends that the disputed domain name is confusingly similar to Complainant’s STARBAY mark as it fully consists of the STARBAY name and mark with the descriptive term “design”, which relates to the furniture design and sales service associated with the STARBAY mark. Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name as Respondent appears to be working with Dominique Moal to make parallel sales of STARBAY products that are based on models that belong to Complainant. Complainant further contends that Dominique Moal has no rights in the STARBAY mark by virtue of the agreement he signed with Michel Coulon in which Mr. Moal undertook to work exclusively for Ashkelly International Ltd. and to create designs and collections for the STARBAY line of products. Complainant also contends that Respondent and Dominique Moal are fully aware that Complainant owns the STARBAY mark and nevertheless chose to register and use the disputed domain name to take advantage of the reputation of Complainant’s STARBAY mark and products in order to make parallel sales of STARBAY products. Lastly, Complainant argues that Respondent registered and has used the disputed domain name in bad faith as Respondent registered the disputed domain name in full knowledge of Complainant’s rights in the STARBAY mark and did so in order to profit from the sale of parallel products using the name STARBAY. In that regard, Complainant maintains that since Mr. Moal, who appears affiliated with the website at the disputed domain name, has no rights in the STARBAY mark by virtue of the contract he signed with Michel Coulon, the registration and use of the disputed domain name based on the STARBAY name was in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (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 of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. Here, although Respondent has failed to respond to the Complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A Panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns and uses the STARBAY mark in connection with its furniture products and services. Complainant has provided evidence that it owns some trademark registrations that included the name STARBAY, and that Complainant has used the STARBAY mark as the name for and on its website at “www.starbay.com” well before Respondent registered the disputed domain name in 2019. The Panel thus accepts that Complainant has rights in the STARBAY name and mark. With Complainant’s rights in the STARBAY mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD") such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally UDRP panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold. In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s STARBAY mark as it incorporates the STARBAY mark in its entirety at the head of the disputed domain name. The addition of the common word “design” does not distinguish the disputed domain name and is simply descriptive material that is added on to STARBAY, the dominant component of the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s STARBAY mark and in showing that the disputed domain name is identical or confusingly similar to that trademark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. Based on the evidence submitted in this proceeding, it appears that Respondent has only used the disputed domain name in connection with a website that prominently features the STARBAY name and mark and which promotes the furniture designs of Dominique Moal. In essence, the website at the disputed domain name is promoting the parallel sale of STARBAY furniture, as Complainant contends. The question that remains, though, is whether Respondent has a legitimate basis for making such parallel sales of STARBAY furniture. As Respondent has chosen not to participate in this proceeding, there is nothing in the record showing that Respondent has any rights or legitimate interests in the STARBAY name and mark or obtained any rights or permissions to allow Respondent to promote and offer for sale competing furniture products under the STARBAY name and mark. The fact that the website at the disputed domain name makes mention of Dominique Moal, who was appointed as director of Complainant’s Viet Nam affiliate and had a connection to Complainant, does not without more establish that Respondent has rights in the STARBAY name and mark or permission to register and use the disputed domain name to make parallel sales of STARBAY products. To be sure, Complainant’s evidence suggests that Mr. Moal has no rights in the STARBAY name and mark. The undated agreement between Complainant’s owner, Michel Coulon, and Dominique Moal that has been submitted by Complainant provides that Dominique Moal (i) will create designs and collections for the STARBAY brand, which will own the rights in such, (ii) work exclusively for Ashkelly International Ltd. and its subsidiaries, and (iii) upon his departure from Ashkelly International Ltd. will not work directly or indirectly for any company that competes in any way with “Centrale Distribution (Shogun/Starbay) and/or Ashkelly International Limited”. While there is no evidence in the record as to when the agreement between Michel Coulon and Dominique Moal was entered into and if, and when, Dominique Moal departed from Askelly International Limited at some point in time thereafter, what is before the Panel makes it more likely than not that Dominique Moal does not have rights in the STARBAY name and mark. The Panel further notes that the Respondent in this proceeding is not Dominique Moal. As Respondent has not appeared in the matter to contest otherwise, the Panel is satisfied that Respondent has not obtained any valid rights from Complainant to operate a website or to register the disputed domain name using the STARBAY name and mark. Given that Complainant has established with sufficient evidence that it owns rights in the STARBAY mark, and given Respondent’s above noted actions and failure to appear in this matter, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith Given Respondent’s actions and lack of rights in the STARBAY mark, as noted above, and its failure to appear in this proceeding, it is easy to infer that Respondent’s registration and subsequent use of the disputed domain name with a website to promote the parallel sales of STARBAY furniture has been done in bad faith. Given that Complainant had established rights in the STARBAY name and mark prior to when Respondent registered the disputed domain name in May 2019, it is evident that Respondent opportunistically registered and used the disputed domain name for purposes of profit at the expense of Complainant and its rights in the STARBAY mark. Accordingly, the Panel finds that Complainant succeeds under this element 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 Georges Nahitchevansky
Sole Panelist
Date: January 23, 2020
Full & Egal Universal Law Academy