The Complainant is BA&SH, France, represented by Cabinet Bouchara, France.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Name Redacted1. 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 30, 2019. On January 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 2, 2020, 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 January 14, 2020, 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 February 15, 2020. 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 January 27, 2020. On February 2, 2020, the Center received an email communication from the individual named as the registrant of the disputed domain name stating that the individual had been a victim of identity theft. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2020. The Respondent did not submit any response. The Center appointed Andrea Mondini as the sole panelist in this matter on March 4, 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 is BA&SH, a French company operating in the field of design, manufacture and distribution of ready-to-wear clothing for women and fashion accessories. Complainant has trademarks rights in BA&SH, including French trademark registration No. 3444110 filed on 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. The disputed domain name was registered on August 21, 2019. 5. Parties’ Contentions A. Complainant Complainant argues that the disputed domain name Complainant then argues that Respondent has no rights or legitimate interests in respect of the disputed domain name as the disputed domain name imitates Complainant’s trademarks and uses these trademarks in the course of commercial activity to offer goods and services identical to those of Complainant. Complainant also contends that it did not authorize Respondent to use Complainant’s trademarks. Complainant asserts that the disputed domain name was registered in bad faith because 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. Further, Complainant asserts that the disputed domain name is used in bad faith because it is used to sell goods under Complainant’s trademarks in a manner which imitates Complainant’s authentic website “www.ba-sh.com”. B. Respondent The Respondent has not submitted a response. However, on February 2, 2020, the Center received an email communication from the individual named as the registrant of the disputed domain name stating that the individual had been a victim of identity theft. 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements: (i) the disputed domain name is identical or confusingly similar to the 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 name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that Complainant has duly shown trademark rights in the BA&SH mark. Complainant states that the disputed domain name is confusingly similar to Complainant’s trademark 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 not 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 from being held confusingly similar to complainant’s trademarks (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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 descriptive term “robe” and of the geographical term “uk” does not avoid a finding of confusing similarity between the disputed domain name and Complainant’s trademarks. Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant contends, credibly, that it has not authorized the Respondent to use the disputed domain name, and that there is no relationship whatsoever between the Parties. Moreover, the Complainant has provided credible evidence that the Respondent is misusing the disputed domain name for fraudulent activities. The disputed domain name incorporates the Complainant’s trademarks and the website associated with the disputed domain name is used to sell products, in the course of commercial activity, under the Complainant’s trademarks and imitating the Complainant's original website. 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. Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith First, Complaint argues that the disputed domain name was registered in bad faith because Respondent could not have ignored Complainant’s trademarks. Indeed, the disputed domain name is confusingly similar to the BA&SH trademarks, and the website associated with the disputed domain name imitates the Complainant's website. The Panel therefore finds that Respondent could not have ignored the trademark BA&SH at the time it registered the disputed domain. Furthermore, it appears that the disputed domain name has been registered misusing the identity of another person (identity theft). The Panel thus finds that the disputed domain name has been registered in bad faith. Second, the website associated with the disputed domain name imitates the Complaint’s website and is used to sell the same type of products under Complainant’s trademarks without the Complainant's authorization. The Panel thus finds that the disputed domain name is used in bad faith. Under these circumstances, the panel finds that the Respondent registered and is using the disputed domain name in bad faith. The Panel therefore finds that the Complainant has satisfied the requirement under 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 Andrea Mondini 1 The Panel has decided to redact the name of the named Respondent, adopting the criterion of the panel in Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788 ("The Panel has decided that no purpose is to be served by including the named Respondent in this decision, and has therefore redacted its name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrars regarding transfer of the disputed domain names that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrars as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances").
Sole Panelist
Date: March 18, 2020
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