Complainant is Sandro Andy, France, represented by ELLALAN, Hong Kong, China.
Respondent is Domain Manager, Australia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2020. On June 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 30, 2020, 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 July 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 4, 2020. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on August 12, 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 has been using the SANDRO mark since 1984 in connection with apparel and accessories (“Complainant’s Mark”). Complainant and its parent company, SMCP SA, are present in more than 40 countries, including Australia, and generated over EUR 1 billion in sales in 2019, EUR 551.6 million of which were directly attributable to the SANDRO trademark. Complainant owns various national and international trademark registrations for the SANDRO mark that are active in Australia, Respondent’s purported domicile, including Australia registration number 1670423 (registered on October 13, 2014) and International Registration number 827287 (registered on April 3, 2004, designating Australia, among other countries). Complainant also owns and operates various domain names incorporating the SANDRO trademark, including The disputed domain name Complainant alleges that the disputed domain name is confusingly similar to its SANDRO trademark because it reproduces identically and entirely the SANDRO mark. Complainant argues that use of the “.net” Top-Level Domain (“TLD”) is insufficient to distinguish the disputed domain name from Complainant’s SANDRO trademark. Complainant also alleges that Respondent is not commonly known by the disputed domain name, is not associated or affiliated with Complainant in any way, and was never licensed or authorized to use Complainant’s Mark. Furthermore, Complainant argues that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Lastly, Complainant alleges that Respondent registered and used the disputed domain name in bad faith. According to Complainant, Respondent must have had constructive or actual knowledge of Complainant’s rights in the SANDRO mark given its worldwide notoriety, and the complete incorporation of the SANDRO mark in the disputed domain name. Furthermore, Complainant argues that Respondent’s efforts to sell the disputed domain name for an amount in excess of Respondent’s out-of-pocket costs for the purchase of the disputed domain name further shows Respondent’s bad faith registration and use. 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. Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the SANDRO trademark through its various national and international registrations. With Complainant’s rights in the SANDRO 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”) in which each domain name is registered) is identical or confusingly similar to Complainant’s Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id. Here, the disputed domain name incorporates Complainant’s SANDRO mark in its entirety. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s SANDRO 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. See, e.g., 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. Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name: (i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. In this case, the Panel finds that the Complainant has made out a prima facie case. Complainant showed that its rights to the SANDRO mark long predate the disputed domain name’s registration. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the SANDRO mark in any way. Respondent is also not using the disputed domain name in connection with any bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the disputed domain name. The use of a domain name merely to advertise the same domain name for sale does not constitute a bona fide offering of goods or services within the meaning of the Policy. See, e.g., AXA SA v. ArnaVoyage LLC,WIPO Case No. D2019-2139. Such commercial use of the disputed domain name also clearly cannot constitute a noncommercial or fair use. Lastly, there is no evidence suggesting that Respondent is commonly known by the disputed domain name. In addition, the nature of the disputed domain name carries a high risk of implied affiliation. Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. WIPO Overview 3.0, section 2.5.1. The disputed domain name completely and identically incorporates Complainant’s Mark and thus cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by Complainant. Id. Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(i) that bad faith registration and use can be found when a respondent registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name. The Policy also indicates in paragraph 4(b)(iv) that bad faith registration and use can be found when, by using a disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. UDRP panels have found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion; (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful; (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name; (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer; (v) redirecting the domain name to the complainant’s (or a competitor’s) website; and (vi) absence of any conceivable good faith use. WIPO Overview 3.0, section 3.1.4. In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided ample evidence to show the widespread use and numerous national and international registrations of the SANDRO mark that long predate Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of the SANDRO trademark when it registered the disputed domain name, or knew or should have known that they were identical or confusingly similar to Complainant’s Mark. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Complainant provided clear evidence that Respondent is attempting to sell the disputed domain name for valuable consideration in excess of out-of-pocket costs directly related to the disputed domain name, which is evidence of bad faith registration and use under Policy paragraph 4(b)(i). Such use is also evidence of bad faith under paragraph 4(b)(iv) of the Policy, as Respondent sought to capitalize on the confusing similarity of the disputed domain name to Complainant’s Mark to attract Internet users to its website to increase the likelihood of selling the disputed domain name for a profit. There is no evidence of any conceivable good faith use of the disputed domain name. For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name were in bad faith, pursuant to paragraphs 4(b)(i) and 4(b)(iv) 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 Brian J. Winterfeldt
Sole Panelist
Date: August 26, 2020
Full & Egal Universal Law Academy