ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION The Conran Shop Limited v. Dupuis Suzanne Case No. D2024-3804 1. The Parties The Complainant is The Conran Shop Limited, United Kingdom, represented by Demys Limited, United Kingdom. The Respondent is Dupuis Suzanne, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with Sav.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2024. On September 18, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 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 (Redacted For Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 19, 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 September 19, 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 September 24, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2024.
page 2 The Center appointed Pablo A. Palazzi as the sole panelist in this matter on October 18, 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 British retailer specialized in contemporary furniture, home accessories, and gifts. The Complainant company was established by Sir Terence Conran, a British designer, restaurateur, and writer, who inaugurated the first eponymous store in London in the year 1973. The Complainant expanded its reach by opening additional stores across the United Kingdom and internationally including branches in Japan, Republic of Korea, and Kuwait. Currently the Complainant operates with two distinct entities: The Conran Shop Limited (the Complainant in this procedure) and Conran IP Limited. The Complainant entity operates the retail business, maintaining its portfolio of physical stores and online platforms. The legal entity Conran IP Limited was established to manage the intellectual property assets associated with the Conran brand, these include trademarks, design rights, and the licensing of the Conran name. The Complainant was granted an exclusive license to use Conran IP Limited and Sir Terence Conran’s rights, according to the Trademark license agreement available in Annex 3 of the Complaint. Thus, via this license, Complainant has, among others, rights over the Swiss trademark for CONRAN numbered 371348, registered on August 14, 1989; the United Kingdom trademark numbered UK00001289516 and registered on January 7, 1994 and the United Kingdom trademark for THE CONRAN SHOPS numbered UK00002409799 and registered on May 4, 2007. The Complainant operates a website at “www.theconranshop.com”. The disputed domain name was registered on May 12, 2024. The disputed domain name resolves to a website that imitates the look and feel of the Complainant's official website. Furthermore, the Respondent’s website prominently features the Complainant’s logotype, product images and product descriptions translated into French language. 5. Parties’ Contentions A. Complainant According to the Complainant, each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case. First, the Complainant submits that the disputed domain name is identical or confusingly similar to the trademark registrations of the Complainant. Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the disputed domain name. Third, the Complainant submits that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions.
page 3 6. Discussion and Findings Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements with respect to each disputed domain name: (i) the disputed domain name is 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 name; and (iii) the disputed domain name has been registered and is being used in bad faith. The burden of proof of each element is borne by the Complainant. The Respondent’s default does not by itself mean that the Complainant is deemed to have prevailed. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), WIPO Overview 3.0, section 4.3. 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 3.0, section 1.7. The Complainant has produced evidence demonstrating that, through an exclusive license, it has rights in the CONRAN and the THE CONRAN SHOP word mark. See section 1.4 of the WIPO Overview 3.0. The Panel finds that the Complainant is considered to have trademark rights in the CONRAN and THE CONRAN SHOP for purposes of standing to file a UDRP, as mentioned above. 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 identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms like the letter “s” after the trademark THE CONRAN SHOP 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 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.
page 4 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. The Panel has verified that the disputed domain name resolves to a website that imitates the look and feel of the Complainant's official website, including the Complainant’s trademark, product images and product descriptions translated into French language. Panels have held that the use of a domain name for illegitimate activity like the case here of impersonation/passing off can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. 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 Complainant has been using its trademark for more than 20 years in several jurisdictions; - the Respondent registered the disputed domain name only on May 12, 2024; - the Panel has verified that the disputed domain name resolves to a website that imitates the look and feel of the Complainant's official website, including the Complainant’s trademark, product images and product descriptions translated into French language. Therefore, the Panel concludes that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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. Paragraph 4(b)(iv) of the Policy, and WIPO Overview 3.0, section 3.1.4. 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. /Pablo A. Palazzi/ Pablo A. Palazzi Sole Panelist Date: November 6, 2024
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