The Complainant is Molicopi, SL, Spain, represented by PADIMA, Abogados y Agentes de Propiedad Industrial, S.L., Spain.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Charl Lotter, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2021. On April 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 April 26, 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 April 28, 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 the Respondent of the Complaint, and the proceedings commenced on April 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2021. The Center appointed David H. Bernstein as the sole panelist in this matter on June 4, 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 sells footwear, apparel, and accessories under the PIKOLINOS trademark. The Complainant holds numerous trademark registrations in the PIKOLINOS mark, including Registration No. 003813177 for goods and services in classes 3, 35 and 39 including cosmetics, advertising services, and distribution services, registered on August 27, 2010 with the European Union Intellectual Property Office (“EUIPO”). The Complainant applied for and received subsequent EUIPO registrations for variations of the PIKOLINOS trademark on March 9, 2012 (Registration No. 009426776 for PIKOLINOS) and August 10, 2018 (Registration No. 017881462 for PIKOLINOS GET COMFY &SMILE), which also cover additional goods including clothing, footwear, leather goods and jewelry. The Complainant sells its products through its website at “www.pikolinos.com”, which was first created on October 23, 1998. The Complainant’s website includes a section called “Pikolinos Universe” in which the Complainant provides information about the PIKOLINOS brand and brand values. The Respondent registered the disputed domain name The Complainant asserts the following: (1) The disputed domain name (2) The Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name incorporates the entirety of the Complainant’s trademark, and the Complainant has not authorized the Respondent’s use of the mark. The use of the PIKOLINOS mark in conjunction with the word “universe” demonstrates that the Respondent intends to cause confusion amongst consumers searching for the Complainant’s products. To the best of the Complainant’s knowledge, the Respondent is not commonly known by the disputed domain name. (3) The Respondent registered and used the disputed domain name in bad faith. Given the Complainant’s worldwide reputation, the Respondent was or should have been aware of the PIKOLINOS mark prior to registering the disputed domain name. The Respondent uses the disputed domain name to redirect Internet users to a commercial website that reproduces the content of the Complainant’s website, including the Complainant’s branded items, trademarks, and images. The Respondent is capitalizing on the Complainant’s reputation by diverting consumers to the Respondent’s website for financial gain. The Complainant requests that the Panel transfer the disputed domain name to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions.1 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to obtain transfer of the disputed domain name: (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 with respect to the disputed domain name; and (iii) the Respondent registered and is using the disputed domain name in bad faith. As noted above, the Respondent did not submit a Response. Accordingly, pursuant to paragraph 5(f) of the Rules, the Panel may proceed to decision based upon the Complaint, and the Panel may accept as true the uncontested factual allegations in the Complaint. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3. However, the Complainant is still obligated to prove its entitlement to the requested relief by a preponderance of the evidence. Id. A. Identical or Confusingly Similar The Complainant has demonstrated ownership of the PIKOLINOS trademark through its registration in the EUIPO. Consequently, the Complainant has established that it has rights in the PIKOLINOS trademark. See WIPO Overview 3.0, paragraph 1.2.1 (“Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”). The disputed domain name is undeniably confusingly similar to the Complainant’s PIKOLINOS trademark given that the disputed domain name incorporates the trademark in its entirety. See WIPO Overview 3.0, section 1.7 (“in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”). The addition of the term “universe” does not prevent a finding of confusing similarity. WIPO Overview 3.0, section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”). Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests To establish a prima facie case under the second element, the Complainant need only credibly allege facts to show that the Respondent lacks rights or legitimate interests in the disputed domain name. Although the burden of proof always remains on the Complainant, once the Complainant makes a prima facie case, the burden of production shifts to the Respondent to come forward with evidence that it does possess legitimate rights or interests in the disputed domain name. WIPO Overview 3.0, section 2.1. The Complainant has asserted sufficient allegations to make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has alleged that it has not given the Respondent any permission to the use the PIKOLINOS trademark. Further, there is no evidence suggesting that the Respondent has been commonly known by the disputed domain name. Although the Complainant did not address this issue in the Complaint, the Respondent’s website appears to be an ecommerce website selling PIKOLINOS branded merchandise. However, this is not a case in which the Respondent could argue that it is a reseller making a bona fide offering of the Complainant’s goods. To be bona fide, the offering must meet several requirements, including that the website must accurately disclose the registrant’s relationship with the trademark owner and the website must actually be selling the Complainant’s goods. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The Respondent’s website fails to meet those requirements. First, by slavishly copying the entire website of the Complainant, the Respondent’s website falsely suggests that the website is the Complainant’s official site. See Houghton Mifflin Co. v. Weatherman, Inc.,WIPO Case No. D2001-0211 (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website). Moreover, the Respondent’s website does not seem to be functional and does not appear to actually sell PIKOLINOS products. Given that the Respondent has not responded to the Complaint, the Complainant’s prima facie showing is unrebutted. Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that may constitute evidence of a respondent’s bad faith. The Complainant rests its argument for bad faith on the following: “…by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 the respondent’s website or location.” As noted above, the Respondent is using the disputed domain name for a website that is a slavish copy of the Complainant’s website, though the website does not appear to be selling actual products. Whether the Respondent is actually selling products through its website or is trying to defraud consumers in some way is unclear, and the Complainant has not indicated what it believes the Respondent is attempting to accomplish. Regardless of the Respondent’s intention, the use of the disputed domain name for a website that impersonates the Complainant and purports to be the Complainant’s official website is paradigmatic bad faith. See generally WIPO Decision Overview 3.0, section 3.2.1. The Panel’s finding of bad faith is reinforced by the Respondent’s use of a privacy service in his registration of the disputed domain name. Although there can be legitimate reasons for using a privacy service, the Respondent has not articulated any reasons in this case. To the contrary, based on the facts of this case, the Panel finds that the Respondent used a privacy service solely to hide his identity and frustrate the Complainant’s ability to investigate the Respondent’s objectives in registering a confusingly similar domain name and using it for a slavish copy of the Complainant’s own website. Although the Respondent’s identity was disclosed by the Registrar, the Respondent’s use of a privacy service has increased the time and cost of this proceeding because the Complainant had to file an amended Complaint once the Registrar lifted the privacy shield and identified the actual registrant. See generally WIPO Decision Overview 3.0, section 3.6. Accordingly, the Complainant has satisfied the requirements of 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 David H. Bernstein 1 Given the absence of a Response, the Panel has carefully reviewed the record to ensure that Respondent received the opportunity for fair notice of this proceeding. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415. The Center sent notification of the Complaint to the Respondent by email and courier. The Written Notice was sent by DHL (courier) to the United Kingdom mailing address listed for Charl Lotter, the party identified by the Registrar as the actual registrant; the DHL tracking results confirm that the package was delivered to this address and signed for by “C LOTTER” on May 3, 2021. Thus, it appears that the Respondent received actual notice of the Complaint, but even if he did not, the Panel finds that the Center has discharged its obligation to provide fair notice to Respondent as required by the Rules, paragraph 2(a).
Sole Panelist
Date: June 14, 2021
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