ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Interparfums SA. v. Helene rolls Case No. D2023-0092 1. The Parties The Complainant is Interparfums SA., France, internally represented. The Respondent is Helene rolls, France. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 9, 2023. On January 9, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 2023, 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 (Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 13, 2023 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 February 8, 2023. 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 February 15, 2023. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2023. A part from an email received on January 13, 2023, from Respondent, stating the following "If someone is not happy with my domain they can buy it from me I don't need it anyway." No Response was filed. The Center sent its "possible settlement" email. No settlement was requested. Accordingly, the Center notified the Commencement of Panel Appointment Process on March 27, 2023. page 2 The Center appointed Elise Dufour as the sole panelist in this matter on March 24, 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. 4. Factual Background The Complainant is a global leader in the creation, production, and distribution of prestige fragrances. Established in 1982 in Paris, France, by Philippe Benacin and Jean Madar, the Complainant owns an important portfolio of prestigious brands. The Complainant is the owner of numerous INTER PARFUMS trademarks, amongst which notably the following ones: - French trademark INTER PARFUMS, registration n' 99781389, registered on March 12, 1999, for goods in classes 3, 18, and 24; - International trademark INTER PARFUMS, registration n'763213, registered on March 16, 2001, for goods in classes 3, 18, and 24; - US trademark INTER PARFUM, registration n' 76330999, registered on February 4, 2003, for goods in classes 3, 18, and 24; The Complainant also owns a portfolio of domain names that incorporate the INTER PARFUMS trademark, such as: - - The disputed domain name was registered December 14, 2022. The disputed domain name used to resolve to a parking page with several pay-per-click links. As per today, it resolves to an inactive website. 5. Parties' Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to the Complainant's earlier trademark, since it entirely reproduces the Complainant's registered trademark, which is instantly recognizable within the disputed domain name. The additional letter "fr" referring to the geographical code for France are only more misleading the public into thinking that the disputed domain name is linked to the Complainant. The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, it has never granted any license or authorization of use of the trademark INTER PARFUMS to the Respondent. In addition, for the Complainant, the fact that the disputed domain name is used for a pay per click parking page which redirects notably to Complainant's competitors such as DYPTIQUE, L'OCCITANE cannot amount to a bona fide offering of goods or services. The Complainant further stresses that UDRP panels have largely held that a domain name consisting of a trademark plus an additional term, such as a geographic term, cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. page 3 Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the fact that the disputed domain name redirects to a pay-per-click page constitutes a registration and use of the disputed domain name in bad faith. Considering the Complainant company name and notoriety, the public would be misled by the disputed domain name. B. Respondent The Respondent did not reply to the Complainant's contentions, but sent an informal email stating: "Hi, If someone is not happy with my domain they can buy it from me I don't need it anyway." 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements: (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. A. Identical or Confusingly Similar The Panel finds that disputed domain name is confusingly similar to the Complainant's registered trademarks as the disputed domain name integrates internally the Complainant's trademarks INTER PARFUMS and only differs from the Complainants' said trademarks by the addition of the prefix "fr-" (common acronym for France), as well as the gTLD ".com". Previous UDRP decisions have found that the mere addition of symbols such as a hyphen or of descriptive/geographical terms to a trademark in a domain name do not avoid a finding of confusing similarity. This has been held in many UDRP decisions (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437). In addition, there is a consensus view among UDRP panels (see WIPO Overview 3.0, section 1.8) that a domain name reproducing a trademark with the mere addition of a geographic term, is confusingly similar to said trademark under the first element of the Policy. It is also already well established that the addition of a gTLD such as ".com" is typically irrelevant when determining whether a domain name is confusingly similar to a complainant's trademark. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests The burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, the burden of production then shifts to the Respondent, which has then to demonstrate rights or legitimate interests in the disputed domain name. On the basis of the submitted evidence, the Panel considers that the Complainant has successfully established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name: the Respondent is not commonly known under the disputed domain name, nor owns any page 4 registered rights on the disputed domain name or has been authorized by the Complainant to use the prior trademarks in any way. The inactive holding of the disputed domain name in these circumstances is not a legitimate noncommercial or fair use within paragraph 4(c)(iii) of the Policy. There is no contrary evidence from the Respondent showing that it is making use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services within paragraph 4(c)(i) of the Policy. On the contrary, the Respondent answered by stating "Hi, If someone is not happy with my domain they can buy it from me I don't need it anyway". Given such evidence, the Panel considers that it is not possible for the Respondent to establish that it has rights or legitimate interests in the disputed domain name. The Panel therefore finds, noting the Complainant's prima facie arguments, that the Respondent has no rights or legitimate interests in the disputed domain name within paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Given the strong reputation of the Complainant's INTER PARFUMS trademarks, the Panel considers that the Respondent knew or should have known of said trademarks at the time of the registration of the disputed domain name. Noting the circumstances of the case, such knowledge is sufficient to establish that the disputed domain name was registered in bad faith. Regarding the previous use of the disputed domain name (resolving to a pay per click hosting page redirecting to Complainant's competitors such as DYPTIQUE, L'OCCITANE), it is well established that bad faith is established if, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliations, or endorsement of its website or location or of a product or service on its website or location. With respect to the current use of the disputed domain name, the passive holding of the domain name does not prevent a finding of bad faith (See section 3.3 of the WIPO Overview 3.0.). In these circumstances the Panel finds that the disputed domain name was registered and being used in bad faith within 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, be transferred to the Complainant. /Elise Dufour/ Elise Dufour Sole Panelist Date: April 7, 2023
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