The Complainant is Edmund Frette S.à r.l., Luxembourg, represented by Barzanò & Zanardo Milano S.p.A., Italy.
The Respondent is David Goldberg, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2020. On July 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2020, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on July 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2020. The Center appointed Nayiri Boghossian as the sole panelist in this matter on August 20, 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 was founded in 1860 and operates in the field of luxury linens. The Complainant owns European Union trademark registration No. 002442606 (registered on March 11, 2003) and United States trademark registration No. 4153282 (registered on June 5, 2012) for the trademark FRETTE, amongst others. The Complainant has registered a number of domain names which include the trademark FRETTE. The disputed domain name was registered on December 29, 2006, and it resolved to a website displaying pay-per-click links. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark FRETTE. The disputed domain name incorporates the Complainant’s trademark in its entirety. The disputed domain name adds the descriptive word “online” to the trademark, which does not eliminate confusing similarity. On the contrary, the use of the word “online” could increase the likelihood of confusionThe addition of the generic Top-Level Domain (“gTLD”) “.com” does not eliminate confusing similarity. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent does not seem to be commonly known by the disputed domain name. The Respondent is not affiliated with nor authorized by the Complainant to use its trademark. There is no evidence that the Respondent is using or preparing to use the disputed domain name in connection with a bona fide offering of goods or services. FRETTE is a fanciful word and it is therefore highly likely that the sole purpose of registering the disputed domain name was to mislead consumers, tarnish the Complainant’s trademark and prevent the Complainant from reflecting its trademark in a domain name. Lastly, the Respondent did not reply to the cease and desist letter. The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent must have been aware of the Complainant’s trademark as it is a fanciful word and a well-known trademark. Additionally, the disputed domain name resolves to a website which contains links to the Complainant’s products and those of its competitors. The Respondent must have registered the disputed domain name in order to trade off the reputation of the Complainant’s trademark and attract Internet users. Also, the disputed domain name was registered long after the registration of the Complainant’s trademark. The disputed domain name is being used in bad faith because passive holding indicates bad faith use in similar circumstances. Also, because the page to which the disputed domain name resolves does not contain any non-affiliation disclaimers. Lastly, because the Respondent did not reply to the Complainant’s cease and desist letter and has been using a privacy service. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant owns trademark registrations for the trademark FRETTE. The Panel is satisfied that the Complainant has established its ownership of the trademark FRETTE. The disputed domain name comprises the Complainant’s trademark FRETTE in its entirety with the addition of a descriptive term “online”, which does not eliminate confusing similarity. The gTLD “.com” should typically be ignored when assessing confusing similarity as established by prior UDRP decisions. Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark as part of the disputed domain name. The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name. Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant had been operating for almost one and a half century when the disputed domain name was registered. The Respondent must have been fully aware of the Complainant and its trademark when it registered the disputed domain name comprising the Complainant’s well-known trademark. The Panel was not able to verify the webpage linked to the disputed domain name but the exhibits submitted by the Complainant seem to show that said webpage included sponsored links. Furthermore, the word “online” reinforces the likelihood of confusion with the Complainant’s trademarks given that it is used for providing goods online and therefore consumers would assume it is the Complainant’s online selling point. Lastly, the Respondent did not reply to the cease and desist letter of the Complainant and has used a privacy shield service. Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied 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 Nayiri Boghossian
Sole Panelist
Date: August 23, 2020
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