The Complainant is Aubade Paris, France, represented by Cabinet Germain & Maureau, France.
The Respondent is Registration Private, Domains By Proxy, LLC / Gianni Sardelli, Canada. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2020. On March 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 12, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 16, 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 March 20, 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 March 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 16, 2020. On April 17, 2020, the Center received an email communication from the Respondent. Although the Respondent’s name was confirmed to be Gianni Sardelli by the Registrar, the email communication was signed off with “Christiane Brown […] For Gianni Sardelli Président ILBOLERO”. The Center appointed Mathias Lilleengen as the sole panelist in this matter on May 25, 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. On June 5, 2020, the Center received a further email communication from the same Christiane Brown. It included an explanation as to the Respondent’s registration of the Domain Name. On June 9, 2020, the Panel issued a procedural order in which the Complainant was invited to comment on the Respondent’s filing. The Complainant filed its comments within the timeline set by the Panel. The Respondent has also filed an unsolicited reply to the Complainant’s supplemental filing on June 13, 2020. As this last filing has no bearing on the outcome of this case, the Panel has not invited the Complainant to comment. 4. Factual Background The Complainant is a French company trading in in the field of underwear and accessories for women and is known for prestigious lingerie under the name AUBADE. AUBADE is known in France, but also abroad, in particular due to the advertising campaigns entitled “Les Leçons de Séduction d’Aubade”. The Complainant has 51 stores in France and 10 abroad. The Complainant’s turnover for 2016 was 50 million euros. The Complainant owns trademark registrations for AUBADE, such as European Union trademark n° 001331479, registered on October 18, 2000, and International trademark n° 729774, registered on March 8, 2000. The Complainant owns and operates different domain names such as The Respondent registered the Domain Name on April 15, 2019. At the time of filing of the Complaint, and at the time of drafting the decision, the Domain Name resolved to a parking page provided by the Registrar. 5. Parties’ Contentions A. Complainant The Complainant has documented trademark registrations in the trademark AUBADE. According to the Complainant, the Domain Name is confusingly similar to the Complainant’s trademark, as it fully reproduces the term AUBADE and only adds a geographic word. The Complainant argues that the Respondent has no rights or legitimate interests in the Domain Name. To the Complainant’s knowledge, the Respondent does not own any rights in any trademark, comprising a part or the entirety of the Domain Name, nor is the Respondent commonly known under this name. Moreover, the Complainant has not given any permission to use AUBADE to the Respondent, and the Respondent is not using the Domain Name in relation to a bona fide offering of goods. Finally, the Complainant submits that the Respondent’s use of the Domain Name evidences bad faith. The Domain Name resolves to a parking page displaying sponsored links, such as Maillot Femme, Lejaby, Dessous, Chantelle Bra, Swimwear, all being French words or competitive trademarks in connection with underwear. The Respondent is earning money through pay-per-click, and creating consumer confusion by diverting the Complainant’s potential consumers to competitors. B. Respondent The Respondent did not reply timely to the Complainant’s contentions. As mentioned in the Procedural History section above, the Center received an email communication from a Christiane Brown on April 17, 2020, with an undocumented claim that the Respondent is a supplier of the Complainant’s goods. C. Supplemental filings On June 6, 2020, the Respondent provided more information on its sales of the Complainant’s lingerie in Montreal, Canada, and offered an explanation as to why the Respondent registered a domain name including the Complainant’s trademark; apparently as a protection against potential cybersquatting, and adding that as the Domain Name was “available, we bought it”. Under paragraph 10 of the UDRP Rules, the Panel has the authority to determine admissibility, relevance, materiality and weight of the evidence. The Panel issued in this case a procedural order in which the Complainant was invited to comment on the Respondent’s late filing. The Complainant maintained the request for transfer. In its supplemental filing, the Complainant argues that the Respondent’s filing should be ignored as it was filed after the due date for the response. Moreover, the late filing does not prove that the Respondent has a right or legitimate interests in registering the Domain Name. The fact that the Respondent is one of the local distributors of the Complainant, does not authorize the Respondent to register the Domain Name. The Complainant also submits that in any event, the use of the Domain Name is not in bona fide as the related website provides pay-per-click links to competing products. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has established rights in the trademark AUBADE. The Complainant’s company name is “Aubade Paris”. The test for confusing similarity involves the comparison between the trademark and the Domain Name. The Domain Name fully reproduces the Complainant’s company name. Moreover, it reproduces the Complainant’s trademark with the addition of “Paris”. For the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”. The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests There is no evidence suggesting that the Respondent has any rights or legitimate interests in the Domain Name. The Complainant is correct in that the fact that the Respondent has been a local distributor of the Complainant’s goods, does not, in the circumstances of this case, authorize the Respondent to register the Domain Name. The Domain Name resolves to a parking page displaying sponsored links with French words or competitive trademarks related to underwear. Such use is not bona fide, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.8. Furthermore, contrary to what the Respondent seems to argue, the fact that the Domain Name was “available” for registration, does not give the Respondent any rights under the Policy. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Based on the evidence, the Respondent knew of the Complainant’s trademark and its business when the Respondent registered the Domain Name. The Respondent has intentionally attempted to attract Internet users by creating a likelihood of confusion with the AUBADE trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent’s explanation as to why it registered the Domain Name does not change this fact. See also, WIPO Overview 3.0, section 3.5. The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the 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 Domain Name, Mathias Lilleengen
Sole Panelist
Date: June 16, 2020
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