The Complainant is ID GROUP, France, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondents are Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Joanna Lopez, Spain, Alex Bower, Spain, Tessie Anderson, Spain, and Joseph Bardwell, Spain.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2021. On September 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 30, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 19, 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 October 19, 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 October 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on November 19, 2021.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on December 13, 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 BackgroundThe Complainant is headquartered in France and globally sells ready-to-wear clothes and accessories, games and toys for children, centered around nine brands, including Okaïdi, Catmini and Jacadi (the “Brands”).
The Complainant is the owner of several trademark registrations, including, but not limited to the French trademark CATIMINI (word mark), with registration no. 449138, with a registration date of December 19, 1979, for goods in classes 24, 25 and 28 (“CATAMINI Trademark”), the French trademark JACADI (word mark), with registration no. 1642676, with a registration date of February 7, 1991, for goods in class 25 (“JACADI Trademark”) and the French trademark OKAIDI (word mark), with registration no. 97668924, with a registration date of March 17, 1997, for goods in classes 9, 14, 18, 25 and 26 (“OKAIDI Trademark”). The aforementioned trademark registrations will hereinafter also jointly be referred to as the “Trademarks”, or in singular to “Trademark” where there is no need to specify the specific trademark registration involved.
The Complainant is the owner of several domain name registrations including domain name registrations for the Brands:
The Domain Names were registered between May 7, 2021 and June 15, 2021. At the time of filing the Complaint, the Domain Names lead to commercial websites offering the Complainant’s products at discounted prices. These websites will hereinafter also jointly be referred to as the “Websites”.
5. Parties’ Contentions A. ComplainantThe Complainant contends the following.
The Complainant has spent substantial time, effort and money advertising and promoting the Brands throughout the world, and has thus developed substantial goodwill in the Brands.
The Complainant is almost certain that the Domain Names are under common control given that all Domain Names are registered with the same registrar, hosted by the same provider and include similar compositions involving the Trademark. Also, the Websites are used for similar purposes and have identical “About Us” pages and images.
The Domain Names are each confusingly similar to one of the Trademarks. More specifically, the Domain Names
The Respondents have no rights or legitimate interests in respect of the Domain Names. The Respondents are not authorized or permitted to use either one of the Trademark, nor are the Respondents associated with the Complainant. Furthermore, the Respondents are not using the Domain Names in connection with a bona fide offering of goods and services. The Complainant states that the Websites have been purposely designed by the Respondent to serve as exact replica of the Complainant’s websites, all as a means of deceiving Internet users into believing that the Domain Names and the Websites are associated with the Complainant, which is not the case. Furthermore, offering the Complainant’s products on the Websites at extremely discounted prices, suggests that the Respondents are potentially offering counterfeited versions of the Complainant’s products. Now that the Respondents are not authorized resellers of the Complainant, the Respondents’ use of the Domain Names fails to meet the third criterion of the Oki Data Test.
The Domain Names were registered and are being used in bad faith. The Complainant is globally well-known. The Respondents must have been well aware of the Complainant and its rights and seek attempting to profit from the confusion caused by the visitors of the Websites by offering the Complainant’s products at disproportionately discounted prices. The Respondents’ actions create a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Domain Names and the Respondents are thus using the fame of the Trademark to improperly increase traffic to the Websites for the Respondents’ own commercial gain. Further, the Respondents’ use of the Domain Names constitutes a disruption of the Complainant’s business. Last, the registration of the Domain Names engage in a pattern of cybersquatting, and the Respondents have registered the Domain Names using a privacy shield and provided false WhoIs information.
B. RespondentThe Respondents did not reply to the Complainant’s contentions.
6. Discussion and FindingsPursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, addresses the issue of whether one proceeding can be brought against multiple respondents. It suggests that where a complaint is brought against more than one “respondent”, the question is whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. To determine whether such consolidation is appropriate, Panels have considered a range of factors, such as the nature of the marks at issue, any naming patterns in de disputed domain names and any (prior) pattern of similar respondent behaviour.
The Domain Names all consist of one of the Trademarks (or a variation thereof), which – on the basis of the facts before the Panel – are considered well-known and distinctive. Furthermore, and of greater importance, the Complainant provided evidence that the Domain Names were all registered with the same Registrar, in more or less the same relatively short time period and for all five Domain Name registrations, the Respondents used a random street address in the United States of America and stated “Spain” as its country. Finally, the “About Us” pages on all Websites are identical.
Therefore, the Panel finds it appropriate to consolidate the Complaint against multiple Respondents as the circumstances in this case strongly indicate that the Domain Names are subject to common control and that the consolidation would be fair and equitable to all parties. The Panel will in light of the foregoing consider the Respondents as one Respondent and thus will continue to refer to these as “the Respondent” in singular.
A. Identical or Confusingly SimilarThe Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Names must be shown to be identical or confusingly similar to the Trademark.
The Complainant has shown that it has rights in the Trademarks.
In accordance with WIPO Overview 3.0, section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Names and the particular Trademark involves a relatively straightforward comparison.
In light of the foregoing, the Panel finds that the Domain Names are confusingly similar to one the Trademarks. The Domain Names consist of (a part of) the specific Trademark, and are accompanied by a dictionary term. The Panel therefore considers that the Trademark is recognizable in the Domain Names. In addition, the Panel finds that the Complainant has filed sufficient evidence to assess that the content of the Websites associated with the Domain Names confirms the confusing similarities between the Domain Names and the Trademark involved, whereby it appears prima facie that the Respondent seeks to target the Trademark through the Domain Names (see WIPO Overview 3.0, section 1.15).
In addition, with regard to the suffix “.shop” and “.online” it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; indeed, the suffix is a necessary component of a domain name and does not give any distinctiveness.
Therefore, the Panel finds that each of the Domain Names is confusingly similar to a corresponding Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate InterestsThe Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that the Respondent is active under one of the name of the Domain Names or that the Respondent is commonly known under one/several of these names. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Trademark, or to apply for or use any domain name incorporating the Trademark.
Further, the Complainant’s assertions have not been rebutted by the Respondent to indicate whether it has any rights or legitimate interests in the Domain Names. There was also no evidence put forward by the Respondent to indicate that the Respondent was licensed or authorized by the Complainant to use the Trademark.
The Respondent used the Domain Names to operate the Websites offering various products of the Complainant, which were sold at extremely discounted prices.
Assuming that this offer is genuine, which prima facie seems to be doubtful, panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level domain), panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. In between, certain additional terms within the trademark owner’s field of commerce or indicating services related to the brand, may or may not by themselves trigger an inference of affiliation, and would normally require a further examination by the panel of the broader facts and circumstances of the case – particularly including the associated website content – to assess potential respondent rights or legitimate interests (WIPO Overview 3.0, section 2.5.1).
The Panel finds that the Websites effectively impersonate or suggest endorsement by the Complainant given the prominent use on the Websites of one of the Trademarks and logos, the use of the same color schemes and product images found in the Complainant’s websites, in addition to the lack of an adequate disclosure of the identity of the provider of the Websites.
Such impersonation and suggested endorsement is sufficient to conclude that the Respondent lacks rights or legitimate interest in the Domain Names.
Even if the so-called Oki Data test (Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903) would be applied, the Respondent clearly fails this test as in this case, the Websites do not accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it has no particular connection with the Complainant.
Therefore, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad FaithThe Panel finds that the Domain Name was registered and is being used in bad faith.
The Panel refers to its considerations under section 6.B and adds the following.
With the misleading use of the Domain Names, the Complainant has also sufficiently substantiated that the Respondent is involved in a pattern of bad faith conduct in connection with Domain Names incorporating the Complainant’s Trademark. The Panel is aware that establishing a pattern of bad faith conduct requires more than one domain name registration, as stated in WIPO Overview 3.0, section 3.1.2. However, given all circumstances and the fact that the Complainant has made it sufficiently plausible that the Respondent registered all five Domain Names in bad faith, the Panel finds that in this specific matter a pattern of abuse may be found.
In addition, the Panel finds that the circumstances that the Respondent provided false contact information and has engaged in a pattern of trademark abusive Domain Name registrations only confirms the assessment that the Respondent registered and used the Domain Names in bad faith.
Therefore, the Panel is satisfied that the third element of the Policy is met.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names,
Willem J. H. Leppink
Sole Panelist
Date: December 27, 2021