ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION S.A.S Jean Cassegrain v. REDACTED FOR PRIVACY; William Henry; Connie West; Thomas Cole; Mikayla Krefft; Leonora Pimentel; Ernestine Peterson; Jansson Lindgren; Guy Corral; Julius Bergman; Web Commerce Communications Limited, Client Care Case No. D2023-0022 1. The Parties The Complainant is S.A.S Jean Cassegrain, France, represented by Marine Fund, France. The First Respondent is William Henry, United States of America ("United States"). The Second Respondent is Connie West, Canada. The Third Respondent is Thomas Cole, United States. The Fourth Respondent is REDACTED FOR PRIVACY. The Fifth Respondent is Mikayla Krefft, Australia. The Sixth Respondent is Leonora Pimentel, United States. The Seventh Respondent is Ernestine Peterson, United States. The Eighth Respondent is Jansson Lindgren, Germany. The Ninth Respondent is Guy Corral, Spain. The Tenth Respondent is Julius Bergman, France. The Eleventh Respondent is Web Commerce Communications Limited, Client Care, Malaysia. 2. The Domain Names and Registrars The disputed domain names , , , , , , , , , , , page 2 , , , , , , , , , , , , , , , , , , , , , , and are registered with Alibaba.com Singapore E-Commerce Private Limited ("the First Registrar") to the Eleventh Respondent. The disputed domain names , , , , , and are registered with Dynadot, LLC ("the Second Registrar") to the First Respondent. The disputed domain names , , and are registered with Dynadot, LLC to the Third Respondent. The disputed domain names , , and are registered with Dynadot, LLC to the Fifth Respondent. The disputed domain names , , and are registered with Dynadot, LLC to the Sixth Respondent. The disputed domain name is registered with Dynadot, LLC to the Seventh Respondent. The disputed domain name is registered with Dynadot, LLC to the Second Respondent. The disputed domain name is registered with 1API GmbH ("the Third Registrar") to the Ninth Respondent. The disputed domain name is registered with 1API GmbH to the Tenth Respondent. The disputed domain name is registered with 1API GmbH to the Fourth Respondent. The disputed domain name is registered with Hosting Concepts B.V. d/b/a Registrar.eu ("the Fourth Registrar") to the Eighth Respondent. The disputed domain name is registered with Key-Systems GmbH ("the Fifth Registrar") to the Seventh Respondent. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 4, 2023. On January 4, 2023, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On January 5, 2023, the Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 10, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an page 3 amendment to the Complaint. The Complainant filed an amended Complaint on January 13, 2023. On January 16, 23, and 24, 2023, the Center requested further registrant information from the Third Registrar after noting a deficiency in their initial reply. The Third Registrar did not reply to the Center's further requests. In this regard, the Center filed a complaint with ICANN contractual compliance on January 25, 2023; at the time of this Decision, no response has been received. On January 25, 2023, the Center notified the Complainant of the Third Registrar's partial reply. On February 6, 2023, the Complainant confirmed that they would like to proceed with the Complaint without further amendment while awaiting response from the Third Registrar. The Center verified that the Complaint together with the amendment to 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 Respondents of the Complaint, and the proceedings commenced on February 14, 2023. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2023. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on March 7, 2023. The Center appointed Edoardo Fano as the sole panelist in this matter on March 13, 2023. 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. The Panel has not received any requests from the Complainant or the Respondents regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties. Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), "to employ reasonably available means calculated to achieve actual notice to the Respondent". Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondents. The language of the proceeding is English, being the language of the Registration Agreements, as per paragraph 11(a) of the Rules. 4. Factual Background The Complainant is S.A.S Jean Cassegrain, a French company operating in the field of luxury leather goods, and owning several trademark registrations for LONGCHAMP, including the following: - International Trademark Registration No. 212226 for LONGCHAMP, registered on August 15, 1958; - International Trademark Registration No. 495398 for LONGCHAMP and design, registered on June 3, 1985. The Complainant also operates on the Internet, being its main website. The Complainant provided evidence in support of the above. According to the WhoIs records, the disputed domain names , , , , , , , page 4 , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and were registered between February 13, 2022 and September 8, 2022. All the disputed domain names resolve to almost identical websites in which the Complainant's trademark as well as copyrighted official visual materials are reproduced and fashion products, mainly bags, are offered for sale. 5. Parties' Contentions A. Complainant The Complainant states that the disputed domain names are confusingly similar to its trademark LONGCHAMP, as they wholly incorporate the Complainant's trademark, with the addition of the geographical terms "portugal", "greece", "philippines", "malaysia", "canada", "espana", "budapest", "uk", "chile", "colombia", "usa", "helsinki", "hrvatska", "hungary", "israel", "osterreich", "romania", "ireland", "slovensko", "southafrica", "singapore", "turkey", "nederland", "uae", "ph", "norge", "japan", "luxembourg", "sydney", "barcelona", "dubai", "suomi", "turkiye", "auckland", "melbourne", "osterrelch", "paris", and/or the descriptive terms "bolsa", "borse", "saldi", "bag", "bags", "outlet", "factory", "price", "onsale", "bolsos", "tas", "vesker", "en ligne", "large", "pliage", "soldes", and in some case a hyphen. Further to section 6.1 below, the Complainant argues that the disputed domain names are under common control and thus addresses the Respondents in the singular. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized by the Complainant to register the disputed domain names or to use its trademark within the disputed domain names, it is not commonly known by the disputed domain names and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. The Complainant submits that the Respondent has registered the disputed domain names in bad faith, since the Complainant's trademark LONGCHAMP is distinctive and known in the field of luxury leather goods. Therefore, the Respondent targeted the Complainant's trademark at the time of registration of the disputed domain names and the Complainant contends that the use of the disputed domain names with the purpose to sell fashion products, mainly bags, and attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's trademark as to an affiliation between the Respondent and the Complainant, qualifies as bad faith registration and use. B. Respondents The Respondents have made no reply to the Complainant's contentions and are in default. In reference to paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record. page 5 A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.3. 6. Discussion and Findings 6.1 Consolidation of Multiple Respondents The Complainant has requested consolidation of multiple Respondents and stated that all the disputed domain names belong to the same person or organization. No objection to this request was made by the Respondents. Pursuant to the WIPO Overview 3.0, section 4.11.2, "[w]here a complaint is filed against multiple respondents, panels look at 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. Procedural efficiency would also underpin panel consideration of such a consolidation scenario". The Panel may consider a range of factors to determine whether consolidation is appropriate, such as examining relevant registrant contact information, and any naming patterns in the disputed domain names, or other evidence of respondent affiliation that indicate common control of the disputed domain names. The Panel notes that all the disputed domain names have been all registered in the same short period of time, namely between February 13, 2022 and September 8, 2022, they follow the same naming pattern and resolve to almost identical websites (in some case with identical content), in which the same products as the Complainant's are offered for sale and the Complainant's trademark is reproduced. The Panel finds that there is plausible evidence that the disputed domain names are subject to common control, and that it would be procedurally efficient, fair, and equitable to all Parties to accept the Complainant's consolidation request. The Panel further notes that the Respondents did not object to the consolidation request. The Panel therefore accepts the Complainant's consolidation request. Hereinafter, the Panel will refer to the Respondents in the singular, i.e., "the Respondent". 6.2 Substantive Issues Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant is the owner of the trademark LONGCHAMP both by registration and acquired reputation and that the disputed domain names are confusingly similar to the trademark LONGCHAMP. Regarding the addition of the terms "portugal", "greece", "philippines", "malaysia", "canada", "espana", "budapest", "uk", "chile", "colombia", "usa", "helsinki", "hrvatska", "hungary", "israel", "osterreich", "romania", "ireland", "slovensko", "southafrica", "singapore", "turkey", "nederland", "uae", "ph", "norge", "japan", "luxembourg", "sydney", "barcelona", "dubai", "suomi", "turkiye", "auckland", "melbourne", "osterrelch", "paris", "bolsa", "borse", "saldi", "bag", "bags", "outlet", "factory", "price", "onsale", "bolsos", "tas", "vesker", "enligne", "large", "pliage", "lepliage", "soldes", and in some case a hyphen, the Panel notes that it is now well page 6 established that the addition of other terms (whether descriptive, geographical terms, letters, or otherwise) to a domain name does not prevent a finding of confusing similarity between the disputed domain name and the trademark. The addition of the above-referenced terms and in some case a hyphen, does not therefore prevent the disputed domain names from being confusingly similar to the Complainant's trademark. See WIPO Overview 3.0, section 1.8. With respect the disputed domain names , , , and , along with the disregarded added term referenced above, the disputed domain names also features an additional letter "s" or "x", respectively, to the LONGCHAMP trademark. Pursuant to WIPO Overview 3.0, section 1.9, such typographical differences between the trademark and the disputed domain names do not prevent a finding of confusing similarity. It is also well accepted that a generic Top-Level Domain ("gTLD"), in this case ".com" and ".net", and a country-code Top-Level Domain ("ccTLD"), in this case "co", is typically ignored when assessing the confusing similarity between a trademark and a domain name. See WIPO Overview 3.0, section 1.11.1. The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant's trademark, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent may establish rights or legitimate interests in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following circumstances, in particular but without limitation: "(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain names, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." According to paragraph 4(a) of the Policy, the Complainant has the burden of proving the three elements of the Policy. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the disputed domain names according to paragraph 4(a)(ii) of the Policy is potentially quite difficult, since proving a negative circumstance is generally more complicated than establishing a positive one. As such, it is well accepted that it is sufficient for the Complainant to make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names in order to shift the burden of production to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. The Complainant in its Complaint, and as set out above, has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not commonly known by the disputed domain names, and is not using the disputed domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services. page 7 The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain names, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it. Should the products sold on the websites to which the disputed domain names are directing Internet users be the Complainant's genuine products, legitimately acquired by the Respondent, the question that would arise is whether the Respondent would therefore have rights or legitimate interests in using the disputed domain names that are confusingly similar to the Complainant's trademark in circumstances that are likely to give rise to confusion. According to the current state of UDRP decisions in relation to the issue of resellers as summarized in the WIPO Overview 3.0, section 2.8.1: "[...] resellers, distributors, or service providers using a domain name containing the complainant's trademark to undertake sales or repairs related to the complainant's goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the 'Oki Data test', the following cumulative requirements will be applied in the specific conditions of a UDRP case: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant's relationship with the trademark holder; and (iv) the respondent must not try to 'corner the market' in domain names that reflect the trademark." This summary is based on the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Even if the products sold by the Respondent were the Complainant's genuine products, from inspection of the Respondent's websites, in addition to the composition of the disputed domain names themselves which give an impression of being affiliated with the Complainant, the Panel finds that the use of the Complainant's trademark unadorned and very prominently on the top and center of the homepages and the lack of any disclaimer would falsely suggest to Internet users, under the Oki Data principles (see above), that the websites to which the disputed domain names resolve are owned by the Complainant or at least affiliated to the Complainant. The Panel therefore concludes that the disputed domain names are not being used in connection with a bona fide offering of goods or services. Moreover, the Panel finds that the composition of the disputed domain names carries a risk of implied affiliation (as well as the Respondent's intention of taking unfair advantage of the likelihood of confusion between the disputed domain names and the Complainant). See WIPO Overview 3.0, section 2.5.1. The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that "for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: page 8 (i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or (ii) that [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; or (iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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] web site or location or of a product or service on [the respondent's] web site or location". Regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant's trademark LONGCHAMP in the field of luxury leather goods is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain names, especially because the disputed domain names resolve to websites consisting of advertising for the sale of fashion products, mainly bags, and where the Complainant's trademark as well as copyrighted official visual materials are reproduced. The Panel further notes that the disputed domain names are also being used in bad faith since the Respondent is trying to attract Internet users to its websites by creating likelihood of confusion with the Complainant's trademark in order to sell what appears to be the same products as the Complainant's, an activity detrimental to the Complainant's business. The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain names in order both to disrupt the Complainant's business, in accordance with paragraph 4(b)(iii) of the Policy, and to attract, for commercial gain, Internet users to its websites in accordance with paragraph 4(b)(iv) of the Policy. Furthermore, the Panel considers that the nature of the disputed domain names, which are almost identical to the Complainant's trademark with the mere addition of the above-referenced terms, and in some case a hyphen or added letter "s" or "x", as well as confusingly similar to the Complainant's domain name, further supports a finding of bad faith. See WIPO Overview 3.0, sections 3.1.4 and 3.2.1. The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 names , , , , , , , , , , , , , , page 9 , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant. /Edoardo Fano/ Edoardo Fano Sole Panelist Date: March 22, 2023
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