Complainant is BA&SH, France, represented by Cabinet Bouchara, France.
Respondent is Name Redacted.1 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2021. On January 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2021, 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 Complainant on January 15, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 18, 2021. 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 Respondent of the Complaint, and the proceedings commenced on January 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2021. Respondent did not submit any response. The Center received third party’s communications by email on January 20, 2021, and January 22, 2021, claiming unauthorized use of its identity in relation to the disputed domain name. On February 19, 2021, the Center informed the Parties that it would proceed to panel appointment. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on April 12, 2021. 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 a company organized under the laws of France that is active in the ready-to-wear women’s fashion industry. Complainant has provided evidence that it is the registered owner of numerous trademarks relating to its company name and brand “ba&sh”, inter alia, the following: Word/device mark BA&SH, European Union Intellectual Property Office (“EUIPO”), registration number: 005679758, registration date: February 10, 2012, status: active; Respondent registered the disputed domain name on May 29, 2020, which resolves to a website at “www.bashdresssale.com”, imitating Complainant’s official website at “www.ba-sh.com”, thereby prominently displaying Complainant’s official BA&SH logo, and offering fashion products at discounted prices. 5. Parties’ Contentions A. Complainant Complainant contends that its BA&SH business and related trademarks enjoy a high reputation in the fashion industry. Complainant submits that the disputed domain name is confusingly similar to Complainant’s BA&SH trademark as it reproduces the latter entirely, simply omitting the ampersand sign “&” which is not a valid character in a domain name, and also, that the addition of the descriptive terms “dress” and “sale” does not prevent the finding of confusing similarity. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent did not, at any time, request or obtain any authorization to reproduce, imitate and/or use Complainant’s BA&SH trademark, neither within a domain name nor in the course of commercial activities, (2) Complainant’s BA&SH trademark has a meaning of its own which cannot be invented, as it takes up the initials “BA” and “SH” of Complainant’s founders, and (3) Respondent apparently is using the disputed domain name for illegal activity, namely the sale of products infringing Complainant’s BA&SH trademark, which is unable to confer rights or legitimate interests in respect of the disputed domain name. Finally, Complainant asserts that Respondent has registered and is using the disputed domain name in bad faith since (1) the disputed domain name resolves to a website which imitates Complainant’s official website, including the unlawful reproduction of Complainant’s BA&SH trademark, and where Complainant’s original products are illegally offered for sale thereunder, and (2) Respondent’s website is strictly identical to a website in respect of which a UDRP panel has already rendered a decision in favor of Complainant in 2019 (BA&SH v. Domain Administrator, See PrivacyGuardian.org / Name Redacted,WIPO Case No. D2019-1616). Complainant requests that the disputed domain name be transferred to Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent’s failure to submit a Response as it considers appropriate. A. Identical or Confusingly Similar The Panel concludes that the disputed domain name is confusingly similar to the BA&SH trademark in which Complainant has rights. The disputed domain name incorporates the BA&SH trademark almost entirely, simply omitting the ampersand sign “&” which is not a valid character in a domain name. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of other terms (whether e.g. descriptive, geographic or otherwise) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the terms “dress” and “sale” (both of which even point to Complainant’s core business) does not prevent a finding of confusing similarity arising from the incorporation of Complainant’s BA&SH trademark in the disputed domain name. Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain. Respondent has not been authorized to use Complainant’s BA&SH trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “BA&SH” on its own. To the contrary, Respondent obviously runs a website under the disputed domain name which purports to offer for sale Complainant’s “BA&SH” products at discounted prices, thereby imitating Complainant’s official website and prominently displaying Complainant’s official BA&SH logo. The Panel recognizes that the case file leaves it open if the goods offered under the disputed domain name are original or fake “BA&SH” products. But even if those products were originals, apart from imitating Complainant’s official website, Respondent obviously does not disclose, neither accurately nor prominently, the non-existing relationship with Complainant as the BA&SH trademark holder, and, therefore, may not claim any nominative fair use of the disputed domain name, neither as an authorized nor as an unauthorized reseller of Complainant’s BA&SH products (see the so-called “Oki Data test”, WIPO Overview 3.0, section 2.8.1). Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has not submitted a Response, it has not met that burden. Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. The circumstances to this case leave no doubt that Respondent was fully aware of Complainant’s rights in the BA&SH trademark (notwithstanding its claimed reputation) when registering the disputed domain name and that the latter is clearly directed thereto. Moreover, using the disputed domain name, which is confusingly similar to Complainant’s BA&SH trademark, to run a website which purports to offer for sale Complainant’s “BA&SH” products at discounted prices, thereby imitating Complainant’s official website and using Complainant’s official BA&SH logo with no authorization to do so, moreover not disclosing the non-existing relationship with Complainant as the BA&SH trademark holder, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s BA&SH trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. In connect with this finding, the Panel has also recognized that Respondent not only is likely to have been involved in a parallel UDRP proceeding in 2019 which already found for Complainant, but also seems to have used the name and contact information of a third party when registering the disputed domain name, thus has committed a potential identity theft, which at least supports the Panel’s finding of Respondent acting in bad faith. Therefore, the Panel concludes that Complainant has also satisfied the third element under the Policy set forth by paragraph 4(a)(iii). 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 Stephanie G. Hartung 1 Respondent appears to have used the name and contact information of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name which includes Respondent’s name. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted,WIPO Case No. D2017-1520; Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.
Word/device mark BA&SH, EUIPO, registration number: 015561905, registration date: November 29, 2016, status: active.
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Sole Panelist
Date: April 20, 2021
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