ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Pyrenex v. karl kamda Case No. D2025-1651 1. The Parties The Complainant is Pyrenex, France, represented by Strato-IP, France. The Respondent is karl kamda, France. 2. The Domain Name and Registrar The disputed domain name
is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2025. On April 25, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 2025, 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 (GDPR Masked) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 28, 2025, 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 April 28, 2025. On April 28, 2025, the Respondent sent an email communication to the Center enquiring about the nature of the communications to which he was copied. On April 29, 2025, the Center sent an email communication explaining the situation to the Respondent. 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 May 6, 2025. In accordance with the Rules, paragraph 5,
page 2 the due date for Response was May 26, 2025. The Respondent did not submit any formal response. Accordingly, the Center notified the commencement of panel appointment process on June 2, 2025. The Center appointed Fabrice Bircker as the sole panelist in this matter on June 11, 2025. 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, Pyrenex, is a French company with a history of over 160 years that manufactures and sells down-filled bedding and clothing. The Complainant’s activities are notably protected through the following trademark registrations: PIRENEX, French trademark No. 3685170 filed on October 20, 2009, registered on April 2, 2010, duly renewed since then, and designating products of classes 20, 22, 24, and 25; and European Union trademark No. 018136208 filed on October 11, 2019, registered on May 22, 2020, and designating products of classes 20, 22, 24, and 25. The Complainant has also an online presence through the domain name, which resolves to a website presenting its activities and retailing its products. The disputed domain name, , was registered on December 7, 2024. Originally, it resolved to a website mimicking the Complainant’s website (it prominently reproduced the Complainant’s trademark, the corresponding logo, and pictures of its website) and purporting to offer for sale PYRENEX clothes at discounted prices. Then, further to a takedown notice sent by the Complainant to the Registrar, the disputed domain name has been deactivated. Very little is known about the Respondent, except that it is apparently located in France, based on the information disclosed by the Registrar. 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 its PYRENEX trademark, because it reproduces the latter, and the added elements do not prevent it from being recognizable. Besides, the Complainant argues that the Respondent has no rights or legitimate interests in respect with the disputed domain name, in substance because:
page 3 - the Respondent is not affiliated with the Complainant in any way, and is not authorized by the latter to use its PYRENEX trademark; - the Respondent cannot have prior rights in the disputed domain name because the registration of the PYRENEX trademarks precedes the registration of the disputed domain name by more than 15 years; - the Respondent is not commonly known under the “pyrenex” denomination; and - the Respondent did not use the disputed domain name in connection with a bona fide offering of goods or services as it resolved to a merchant website intended to deceive the Internet users into believing that they were visiting the Complainant’s official website. At last, the Complainant contends that the disputed domain name has been registered and is being used in bad faith, notably because: - the disputed domain name fully incorporates the Complainant’s trademark which is highly distinctive and has a repute; - the “officiel” element within the disputed domain name conducts the Internet users to believe that said disputed domain name is related to the Complainant’s official website; - the website under the disputed domain name mimicked the Complainant’s website; - the Respondent tried to impersonate the Complainant to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s PYRENEX trademark; and - the fact that the disputed domain name is currently inactive does not constitute a legitimate noncommercial use as this situation results of the takedown notice sent by the Complainant to the Registrar. B. Respondent Although on April 28, 2025, the Respondent sent an email communication to the Center enquiring about the nature of the current proceedings (to which the Center replied on the following day), he has been remaining silent since then, and he did not formally 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. Based on the available record (Annex 11 of the Complaint), the Panel finds the Complainant has established registered trademark rights 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. Indeed, although the addition of other term (here, “officiel”) 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 because the PYRENEX trademark remains recognizable within the disputed domain name. WIPO Overview 3.0, section 1.8. Regarding the “.com” generic Top-Level Domain (“gTLD”) in the disputed domain name, it is well established that a gTLD is generally disregarded in the assessment of a domain name for the purpose of determining identity or confusingly similarity. WIPO Overview 3.0, section 1.11.1. The Panel finds the first element of the Policy has been established.
page 4 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. Indeed, the Complainant contends that it has not given its consent to the Respondent to use its PYRENEX trademark in a domain name registration or in any other manner. In addition, there is nothing in the record of the case likely to indicate that the Respondent may be commonly known by the disputed domain name. Besides, the Respondent used the disputed domain name to operate a website: - purporting to offer for sale, at discounted prices, clothes under the Complainant’s PYRENEX trademark; - prominently displaying the Complainant’s PYRENEX trademark, including the corresponding logo; and - reproducing pictures from the Complainant’s website. This situation opens the question of whether the website available through the disputed domain name was genuinely offering for sale PYRENEX products, or if the goods were counterfeits, or if it was a fake shop. Of course, if the products were counterfeits or if the online store was fake, there would be a clear absence of rights or legitimate interests. Indeed, panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. On the other side, even if doubtful, one cannot exclude that the products offered for sale on the website under the disputed domain name were genuine PYRENEX goods. In this respect, there is a consensus view that a reseller using a domain name containing a complainant’s trademark to undertake sales related to a complainant’s goods may constitute a bona fide offering of goods and services and thus has a legitimate interest in the domain name if the following cumulative requirements are met (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, and WIPO Overview 3.0, section 2.8): 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;
page 5 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. Here, the Panel notably finds that the Respondent’s website did not accurately and prominently disclose its (lack of) relationship with the Complainant. Rather, the Respondent sought to create an impression of association with, and even of impersonation of, the Complainant, by using a domain name associating the PYRENEX trademark with the term “officiel” (i.e. the French adjective for “official”) and by operating a website that repeatedly and prominently displayed the Complainant’s trademark and reproduced pictures from the Complainant’s website. In these conditions, even assuming that the Respondent would be offering for sale genuine PYRENEX goods, it would not be in a position to claim any rights or legitimate interests in the disputed domain name. 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 finds that: - the PYRENEX trademark predates the registration of the disputed domain name by 15 years; - “pyrenex” is a coined word, therefore the corresponding trademark is intrinsically distinctive; - the Complainant has evidenced that its PYRENEX trademark has a repute on the market; - as detailed in Sections 4 and 6.B of the Decision, the disputed domain name resolved to a website purporting to offer for sale the Complainant’s products and mimicking the latter’s website; - because of its composition, in as far as it associates the Complainant’s trademark with the term “officiel” (which means “official” in French), the disputed domain name caries a risk of implied affiliation with the Complainant; - the Respondent is located in France, where the Complainant originates from and where it appears very active on the market; and - while invited to defend its case once the proceeding commenced, the Respondent has remained silent. In these circumstances, the Panel considers that the Respondent was well aware of the Complainant’s trademark when it proceeded with the registration of the disputed domain name. Besides, it results from the above-mentioned conditions of use of the disputed domain name that the Respondent used it to intentionally attempt 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, affiliation, or endorsement of the Respondent’s website.
page 6 In sum, this case clearly falls within the scope of paragraph 4(b)(iv) of the Policy. Finally, and for sake of completeness, the fact that the disputed domain name is currently inactive is irrelevant to the above findings, as the deactivation results from the takedown notice sent by the Complainant to the Registrar. 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. /Fabrice Bircker/ Fabrice Bircker Sole Panelist Date: June 24, 2025
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