The Complainant is San Patrick, S.L., Spain, represented by Demys Limited, United Kingdom.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Sun Feng, Ivyip Fashion Co., Ltd., 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 February 24, 2021. On February 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 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 the Complainant on March 11, 2021 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 12, 2021. On March 15, 2021, the Respondent sent an email communication to the Center. On March 15, 2021, the Center informed the Parties that a UDRP proceeding may be suspended to implement a settlement agreement between the Parties. On March 16, 2021, the Complainant requested the suspension of the proceeding. On March 17, 2021, the Center suspended the proceeding. On April 16, 2021, the Complainant requested the reinstitution of the proceeding. On April 22, 2021, the Center confirmed that the proceeding is reinstituted. 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 April 22, 2021. On April 27, 2021, the Respondent sent an email communication to the Center. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2021. The Respondent did not submit any formal response. On May 20, 2021, the Center informed the Parties that it would proceed to Panel Appointment. The Center appointed Daniel Peña as the sole panelist in this matter on May 31, 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 The Complainant is a company incorporated under Spanish law and is located in Barcelona, Spain. The Complainant’s predecessor was founded in 1922 as a prestigious Barcelona store that specialized in lace, embroidery, and high-quality silk fabrics. The Complainant pioneered the creation of the first prêt-à-porter bridal fashion, a revolution at the time, which made wedding dresses accessible to all women. The Complainant grew from its Catalonian base through franchises around Europe, beginning in the Netherlands in 1977, before rapidly expanding to establish presences throughout North America and Asia in the following years. The Complainant is established as an internationally renowned wedding and cocktail dress designer whose products are sold in more than 105 countries through a network of 123 stores and more than 4,000 points of sale. The Complainant employs more than 950 staff and distributes its dresses from fours international logistics centers in Barcelona, Spain; Hong Kong, China; Brazil; and the United States. The Complainant’s dresses are sold through numerous boutiques around the world. The Complainant also showcases its dresses through its website. The Complainant is the owner of many registered trademarks PRONOVIAS around the world. Among others, the following: Registration 016913816, European Union, registered on October 20, 2017, International class 35; The disputed domain name was registered on March 3, 2019. Currently, the disputed domain name does not resolve to an active website. On March 15 and April 27, 2021, the Respondent emailed the Center acknowledging receipt of the Complaint, that the Respondent would “close the site”, and offered to transfer the disputed domain name to the Complainant. 5. Parties’ Contentions A. Complainant The Complainant is the owner of many registered trademarks PRONOVIAS around the world. See section 4 above. The Complainant notes that the registration of its earliest exhibited mark pre-dates the registration of the disputed domain name by approximately 36 years. The disputed domain name therefore only differs from the Complainant’s marks by the addition of the generic and descriptive word “dress”. The Top-Level Domain (“TLD”) “.com” is wholly generic in that it is required only for technical reasons. Based on evidence in the Complaint, the disputed domain name previously resolved to an online shop selling what at first appear to be the Complainant’s products. The Complainant notes that the Respondent’s website features several characteristics that, separately and cumulatively, are typical of websites selling counterfeit material. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Considering these requirements, the Panel finds as follows: A. Identical or Confusingly Similar The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for PRONOVIAS. See section 4 above. The Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademarks. The Respondent’s incorporation of the Complainant’s trademark in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s marks. The mere addition of the descriptive word “dress” with the trademark PRONOVIAS does not prevent a finding of confusing similarity with the Complainant’s marks. The nature of such term may however bear on assessment of the second and third elements. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). This Panel finds, similarly to other UDRP panels, that the TLD “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see section 1.11 of the WIPO Overview 3.0). The Panel is satisfied that the disputed domain name is identical or confusingly similar to the Complainant’s mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth. Refraining from submitting a formal Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name. The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner. The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b). Furthermore, the unrebutted claim of the Complainant that the website at the disputed domain name is designed to have the look and feel of the Complainant’s official website, supports a finding that the Respondent lacks rights or legitimate interests in the disputed domain name (see section 2.5.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Further, the construction of the disputed domain name (i.e., the Complainant’s PRONOVIAS trademark coupled together with the word “dress”, a term descriptive of the goods provided under the Complainant’s trademark) carries a risk of implied affiliation and, as such, such composition cannot constitute faire use. See section 2.5.1 of the WIPO Overview 3.0. The fact that the disputed domain name fails to resolve to an active website does not prevent a finding of bad faith. The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the 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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. In the Panel’s view, a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the widespread commercial recognition of the trademark PRONOVIAS is such that the Respondent must have had knowledge of the trademark before registering the disputed domain name. Furthermore, the use of the descriptive term “dress” in the disputed domain name, which refers to the Complainant’s main products or commercial activity, indicates that the Respondent was aware of the Complainant at the time it registered the disputed domain name. The Respondent’s registration and use of the disputed domain name constitutes bad faith under paragraph 4(b)(iv) of the Policy, because the Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s widely recognized PRONOVIAS trademark as to the source, sponsorship, affiliation, and/or endorsement of the disputed domain name, the Respondent’s website, and the unauthorized, allegedly counterfeit products advertised/offered therein. It is well established, that the mere registration of a domain name that is identical or confusingly similar, particularly domain names incorporating the mark plus a descriptive term to widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. Taken into account the Respondent’s use of the disputed domain name for per se illegitimate activity, such as the sale of counterfeit goods, such behavior is manifestly considered evidence of bad faith Thus, the Panel concludes that the Respondent’s registration and use of the disputed domain name constitute bad faith under paragraph 4(b)(iii) of the Policy, because the Respondent disrupts the Complainant’s business and unfairly competes with the Complainant by using the disputed domain name to advertise/offer unauthorized, allegedly counterfeit, products that compete with the Complainant’s genuine products. 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 Daniel Peña
Registration 2486437, United States, registered on September 11, 2001, International classes 25 and 42;
Registration 1200292, United Kingdom, registered on July 22, 1983, International class 25.
Sole Panelist
Date: June 14, 2021
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