The Complainant is Bonprix Handelsgesellschaft mbH, Germany, represented by JBB Rechtsanwälte, Germany.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / Brahim Ait Ouhssain, Morocco. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2020. On March 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 19, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 29, 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 amendment to the Complaint on April 6, 2020. The Center verified that the Complaint together with the amendment to 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 April 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2020. The Center appointed Luca Barbero as the sole panelist in this matter on May 5, 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 The Complainant is a German international fashion company with headquarters in Hamburg. It owns five brands and launches a new collection every month in worldwide online shops, in catalogue or in other German fashion stores. The Complainant is the owner of the following trademark registrations for BON PRIX, as per trademark certificates submitted as Annexes 3 and 4 to the Complaint: - European Union trademark registration No. 009510331 for BON PRIX (figurative mark), filed on October 25, 2010 and registered on March 8, 2011, in class 35; - International trademark registration No. 1498005 for BON PRIX IT’S ME! (figurative mark), registered on July 23, 2019, in class 35. The Complainant is also the owner of the domain name The disputed domain names The Complainant contends that the disputed domain names are confusingly similar to the trademark BON PRIX since they encompass the trademark in its entirety with the mere addition of the number “1”, a hyphen, and the generic Top-Level Domain, “.com”, and the country code Top-Level Domain, “.co”. With reference to rights or legitimate interests in respect of the disputed domain names, the Complainant states that: - the Respondent is not commonly known by the disputed domain names; - the Complainant has been holding trademarks for BON PRIX since 2010, while the Respondent registered the disputed domain names in 2018 and 2019 with the sole purpose of causing confusion as to the source and affiliation of the disputed domain names; - the Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services; - the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, as they are intentionally and misleadingly used for commercial gain to divert consumers and to tarnish the Complainant’s trademark. With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent is a competitor of the Complainant, as both companies offer goods and services in the field of fashion. The Complainant emphasizes that the Respondent has registered the disputed domain names to redirect visitors, seeking the Complainant’s website, to its actual website “www.zalandiscount.com”, with the sole purpose of disrupting the Complainant’s business. The Complainant underlines that the Respondent undoubtedly knew about the Complainant’s trademark and services at the time of registration of both disputed domain names, as they have been pointed to a website that also deals with the sale of fashion products. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights over the trademark BON PRIX based on the European Union trademark registration No. 009510331 for BON PRIX (figurative mark), filed on October 25, 2010 and registered on March 8, 2011, in class 35. As highlighted in section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the “assessment of identity or confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element. Such design elements may be taken into account in limited circumstances e.g., when the domain name comprises a spelled-out form of the relevant design element. On this basis, trademark registrations with design elements would prima facie satisfy the requirement that the complainant show “rights in a mark” for further assessment as to confusing similarity”. In the case at hand, the Panel finds that the dominant portion of the Complainant’s figurative trademark cited above is constituted by the textual component “bon prix”, which is entirely reproduced in the disputed domain names Moreover, where the relevant trademark is recognizable within the disputed domain names, the addition of letters or numbers does not prevent a finding of confusing similarity under the first element (sections 1.8 and 1.9 of the WIPO Overview 3.0). Furthermore, as stated in section 1.9 of the WIPO Overview 3.0, “a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”. Therefore, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests It is well established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain names according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the Respondent. Accordingly, in line with previous UDRP decisions, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names in order to shift the burden of production to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy. According to the evidence on record, there is no relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain names. In addition, there is no evidence that the Respondent might be commonly known by the disputed domain names. The Panel also finds that the Respondent’s use of the disputed domain names to redirect users to a website promoting competing fashion products does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain names were registered and are being used by the Respondent in bad faith. As to bad faith at the time of the registration, the Panel notes that, in light of the prior registration and use of the Complainant’s trademark BON PRIX in connection with the Complainant’s retail services of fashion products on the website “www.bonprix.com” and of the substantial correspondence of the disputed domain names with the Complainant’s trademark BON PRIX and its domain name Moreover, in light of the Respondent’s redirection of the disputed domain names to an online store offering fashion products for sale, the Respondent was very likely aware of the Complainant’s trademark when it registered the disputed domain names. In view of the above-described use of the disputed domain names made by the Respondent, the Panel finds that the Respondent intentionally attempted to attract Internet users to its website for commercial gain, by causing a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website and the products promoted therein, according to paragraph 4(b)(iv) of the Policy. The Panel also finds that typosquatting constitutes an additional evidence of bad faith (Barry D. Sears, Ph.D. v. YY / Yi Yanlin,WIPO Case No. D2007-0286; National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini,WIPO Case No. D2002-1011; Bell Gardens Bicycle Club dba The Bicycle Casino (“TBC”) v. Craig Miller,WIPO Case No. D2006-0536 (stating that “[i]n the present case, in the absence of any Response, the Panel is satisfied that the Respondent has engaged in flagrant typosquatting which is exactly the sort of abusive conduct to which the Policy is directed”)). In view of the above, the Panel finds that the Complainant has also demonstrated that the Respondent registered and used the disputed domain names in bad faith according to 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 names Luca Barbero
Sole Panelist
Date: May 19, 2020
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