ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Humeau Beaupreau v. Felix Dresn Case No. D2024-3084 1. The Parties The Complainant is Humeau Beaupreau, France, represented by Casalonga Avocats, France. The Respondent is Felix Dresn, France. 2. The Domain Name and Registrar The disputed domain name is registered with 1API GmbH (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2024. On July 29, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2024, 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 (Anonymous third party, REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 6, 2024, 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 August 6, 2024. 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 August 19, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2024.
page 2 The Center appointed Elise Dufour as the sole panelist in this matter on September 19, 2024. 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 simplified joint-stock company (Société par actions simplifiée) registered and headquartered in France. Founded in 1905, the Complainant manufactures and markets footwear, notably plastic (PVC) sandals (espadrilles) and the like. The Complainant employs around 240 persons in France and elsewhere; the Complainant reports that it sells more than 2.3 million pairs of shoes a year. The Complainant is well known for manufacturing and marketing a model of injected plastic “SUN” sandals sold under the brand name MEDUSE, as shown below, in a wide range of colors including translucent, fluorescent, citrus and glitter. The Complainant manufactures around 500,000 Meduse sandals each year in its French factories; 400,000 pairs of Meduse sandals were sold in 2021 and around 700,000 in 2022, in France and abroad. The Complainant has registered numerous trade and service marks for its MEDUSE brand; these include: - French word trademark MEDUSE No. 3303805, registered on July 19, 2004, in classes 18, 25, and 28; - International word trademark MEDUSE No. 1115451, registered on March 19, 2012, in classes 18, 25, and 28. The Complainant also underlines that a number of European Union trademarks for MEDUSE in stylised script with a logo were also registered, for example, No. 014578843, registered on June 24, 2016. The Complainant further reports and documents that it promotes its MEDUSE brand extensively, including through a significant presence on the Internet and in social media; as part of this promotion the Complainant registered the domain name on March 27, 1996, of which the website is active in promoting the Complainant’s business. The disputed domain name was registered on May 8, 2024. As evidenced by the Complainant, it used to resolve to a website purportedly selling counterfeit MEDUSE shoes and reproducing the Complainant’s trademarks MEDUSE, official photos and its original products. After notifying the Registrar of the website associated with the disputed domain name, the Registrar decided to suspend the website content (“etat du site web : suspect”). The website is still not active to date. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is confusingly similar and substantially identical to its trademarks; that it has no relationship with the Respondent who has no permission to use the Complainant’s trademarks or rights or any valid interests in doing so and that the disputed domain name can only have been registered in bad faith with knowledge of the Complainant’s rights, and was subsequently
page 3 used in bad faith to direct Internet users to a website selling counterfeit MEDUSE shoes in wrongful imitation of the Complainant’s legitimate online site. The Complainant has sent notifications via the Registrar demanding the removal of all material or content that reproduces its trademark or infringes on its intellectual property rights, notification which resolved to the suspension of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the entirety of the MEDUSE trademark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel also finds that the MEDUSE trademark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms, here “france”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The addition of a Top-Level Domain in the disputed domain name is typically disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
page 4 Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Furthermore, there is no evidence that the Respondent is commonly known by the name “meduse-france”. Nothing in the file of this matter gives any indication that the Respondent has used the disputed domain name in connection with a bona fide offering of goods and services or that there is any legitimate noncommercial or fair use of the Complainant’s trademark, and the Complainant; to the contrary there is evidence of illegitimate and wrongful use, as discussed below. Finally, the composition of the disputed domain name is such to carry a risk of implied affiliation to the Complainant, which cannot constitute fair use. WIPO Overview 3.0, section 2.5.1. Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the composition of the disputed domain name and its subsequent use indicate that Respondent was aware of the MEDUSE trademark prior to registration of the disputed domain name. While the word “meduse” does have an ordinary meaning in French (“jelly fish”) there is no suggestion in this case that the Respondent was registering the disputed domain name based on that French-language meaning or for any good faith purpose. In sum, it appears that the choice of the disputed domain name was not serendipitous; it was registered with a bad faith intent to cause confusion with the Complainant’s trademarks and business. This finding is confirmed by the evidence of the actual use that the Respondent made of the disputed domain name. The inherently misleading disputed domain name was used to direct Internet users to a site selling purportedly counterfeit products and reproducing the Complainant’s MEDUSE trademark and logo, as well as its official photos and original products. This is clear bad faith use and further demonstrates that the disputed domain name was registered in bad faith. Accordingly, the Panel finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark. Based on the available record, the Panel finds that the Complainant has established the third element 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: October 4, 2024
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