ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Etablissements Richard Pontvert Et Cie v. Charles Jones Case No. D2024-3442 1. The Parties The Complainant is Etablissements Richard Pontvert Et Cie, France, represented by Cabinet Lavoix, France. The Respondent is Charles Jones, United States of America. 2. The Domain Name and Registrar The disputed domain name
is registered with Dynadot Inc (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2024. On August 23, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 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 (Super Privacy Service LTD c/o Dynadot) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 26, 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 27, 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 28, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2024. The Center appointed Halvor Manshaus as the sole panelist in this matter on September 27, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
page 2 Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant commercializes shoes and models under the trademark PARABOOT. The Complainant holds the following trademarks comprising of the mark PARABOOT: - The French trademark registration number 4135107, registered on March 13, 2015, for various goods in classes 18 and 25; - The European Union Trade Mark number 001434307, registered on February 12, 2001, for various goods in class 18; - The United Kingdom (“UK”) trademark number 00801249091, registered on April 6, 2016, for various goods in classes 18 and 25; - The International trademark registration number 1249091, registered on March 17, 2015, for various goods in classes 18 and 25. Further, the Complainant holds the domain name , registered on December 25, 1999. The disputed domain name was registered on June 12, 2024, and hosts a website offering similar goods as the Complainant and showcasing the Complainant's trademark. 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 to the Complainant's trademark as the disputed domain name reproduces the Complainant's trademark in its entirety. The inclusion of the geographic term “london” further enhances the confusing similarity as it implies that the disputed domain is affiliated with the Complainant's presence in the UK. Further, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed nor authorized the Respondent to use the Complainant's trademark. Moreover, the Respondent has neither used nor prepared to use the disputed domain name in connection with a bona fide offering and is not commonly known under the disputed domain name. Additionally, the Respondent is not making legitimate noncommercial use of the domain name, but uses the disputed domain name to host a website offering similar goods as the Complainant under the Complainant's trademarks. The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Complainant's trademark is both distinctive and well-known, and the Complainant's registrations predates the registration of the disputed domain name. Further, the disputed domain name comprises of the Complainant's trademark in its entirety with the addition of the term “london” indicating that the disputed domain name is associated with the Complainant's UK presence. As such, the disputed domain name is being used to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant's trademark. Moreover, the disputed domain name hosts a website offering similar goods as the Complainant under the Complainant's trademark at highly reduced price, showcasing a fraudulent nature.
page 3 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 entirety of the mark is reproduced 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, “london”, 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. In the present case, the Complainant's trademark remains recognizable within the disputed domain name. 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 the 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. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the 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. Moreover, the nature of the disputed domain name combining the Complainant’s trademark with the term “london”, carries a risk of implied affiliation. WIPO Overview 3.0, section 2.5.1. Panels have held that the use of a domain name for illegitimate activity here, claimed as impersonation/passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.
page 4 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. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In the present case, the Panel notes that the registration of the Complainant's well-known trademark predates the registration of the disputed domain name. Furthermore, the disputed domain name incorporates the Complainant's trademark in its entirety with the addition of the term “london” suggesting an affiliation with the Complainant's UK presence. As such, the Panel finds it likely that the disputed domain name was registered and is being used to attract internet users for commercial gain by creating a likelihood of confusion between the Complainant's trademark and the disputed domain name. Further, the disputed domain name hosts a website displaying the Complainant's trademarks and offerings of similar goods as the Complainant at a highly reduced price, approximately 70 percent off, indicating fraudulent intent, likely with the aim of obtaining sensitive personal or financial information from unsuspecting Internet users seeking the Complainant’s goods. Panels have held that the use of a domain name for illegitimate activity, here claimed impersonation/passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. 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. /Halvor Manshaus/ Halvor Manshaus Sole Panelist Date: October 10, 2024
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