The Complainant is Yves Salomon Fourreur of Paris, France, represented by Marie-Emmanuelle Haas, France.
The Respondent is Shane Younger of New York, United States of America ("United States"). 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 2, 2017. On October 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 3, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on October 12, 2017.
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 discharged its responsibility to employ reasonably available means calculated to achieve actual notice to the Respondent of the amended Complaint, and the proceedings commenced on October 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 7, 2017.
The Center appointed Alan L. Limbury as the sole panelist in this matter on November 15, 2017. 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
Established in 1920, the Complainant is a French furrier company operating in many countries worldwide, including the United States. It is the proprietor of numerous trademark registrations for YVES SALOMON, including United States trademark No. 3841646, registered on August 31, 2010, in classes 18 and 25. It is also the registrant of numerous "yvessalomon" and "yves-salomon" domain names in extensions relevant for its business and also in other extensions, registered defensively, because of cybersquatting practices.
The Domain Name was registered on July 21, 2017. It resolves to a parking website that provides
pay-per-click links to third parties' websites. One of these links redirects to a website that offers Yves Salomon branded goods. Other links redirect to websites selling Salomon branded sport articles, while most redirect to websites selling fashion articles under third parties' trademarks. The Domain Name is also offered for sale on the website for USD 1,500. 5. Parties' Contentions A. Complainant
With only a hyphen between the two words, the Domain Name is identical to the YVES SALOMON trademarks. The Respondent has no rights or legitimate interests in respect of the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, The Respondent is not a licensee of the Complainant and was not authorized to register the Domain Name. The Respondent is not well known under the YVES SALOMON trademark, which is a well-known trademark for fashion and furs, protected worldwide. The Respondent is not known by the Domain Name and does not own any trademarks that could justify the use of the YVES SALOMON sign. The Respondent's use of the Domain Name misleads Internet users seeking to access the Complainant's official website. It is not a fair use and it tarnishes the YVES SALOMON trademark.
It is well established that:
"A parking page would not by itself confer rights or legitimate interests in a domain name. This is especially the case where a disputed domain name was registered with a trade mark owner's mark in mind in the hope and expectation that confused Internet users searching for the trade mark owner will be directed to the respondent's parking page for commercial gain. Such activity does not provide a legitimate interest in that domain name under the Policy. In this case, the parking page to which the Disputed Domain Name resolves includes direct references and pay-per-click links to the Complainant's website and to the websites of the Complainant's competitors. Therefore, the Panel finds that the Respondent registered the Disputed Domain Name to trade off the goodwill of the Complainant's trade mark in order to increase its pay-per-click revenue, which cannot amount to a legitimate interest or right."Blue Apron, LLC v. Tulip Trading Company,WIPO Case No. D2017-1035.
As to bad faith registration, the Respondent chose to register the Domain Name , copying the structure of the Complainant's domain names. It uses the Domain Name in relation to fashion articles, for which the YVES SALOMON trademark is protected worldwide and well known. As announced on each page of the parking website available under the Domain Name, the Respondent registered the Domain Name in order to resell it at a price of USD 1,500, being far above the registration cost. Moreover, the Respondent benefits from pay-per-click revenues.
The Respondent is also the registrant of the domain name . Carlo Pignatelli is an Italian fashion designer who gave his name to the trademark CARLO PIGNATELLI, just like Yves Salomon did. The domain name also resolves to a parking website, which has the same interface as the website at "www.". It shows a pattern of conduct that is further proof of bad faith registration.
As to bad faith use, the Domain Name resolves to a parking website that generates pay-per-click revenues to the benefit of the Respondent. The Respondent intentionally attempts to attract, for commercial gain, Internet users to its parking website by creating a likelihood of confusion with the Complainant's trademark, in the meaning of paragraph 4(b)(iv) of the Policy.
A search on the MX server on "" shows that the Respondent uses a messaging service and is therefore able to attempt to engage in business transactions by sending emails to third parties from "xxx@", thereby mimicking the Complainant and misleading Internet users for commercial gain by using the reputation of the YVES SALOMON trademark. Such a risk is unacceptable.
Moreover, in violation of the registration agreement, when registering the Domain Name the Respondent provided to the Registrar false WhoIs data for itself (since the post code mentioned in the WhoIs is in Jacksonville, Florida, not New York), as well as for the administrative, billing and technical contacts. The provision of false data in order not to be identified is further proof of the Respondent's bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, to obtain transfer of the Domain Name, the Complainant must prove the following three elements: (i) the Respondent's 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 the Domain Name; and (iii) the Respondent has registered the Domain Name and is using it in bad faith.
Under paragraph 15(a) of the Rules, "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonably asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant. See Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441. A. Identical or Confusingly Similar
It is well established that "essential" or "virtual" identity is sufficient for the purposes of the Policy: The Stanley Works and Stanley Logistics Inc. v. Camp Creek Co., Inc.,WIPO Case No. D2000-0113; and that the specific Top-Level Domain, in this case ".co", typically does not affect the domain name for the purpose of determining whether it is identical or confusingly similar: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
In the present case, taking the hyphen into account, the Panel finds the Domain Name to be identical to the Complainant's YVES SALOMON trademark. See Intesa Sanpaolo S.p.A. v. ZhangXin,WIPO Case No. D2016-2643.
The Complainant has established this element. B. Rights or Legitimate Interests
The Panel finds that the YVES SALOMON mark is distinctive and widely known. The Complainant's assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of the Respondent. The burden of production therefore shifts to the Respondent to show that it does have rights or legitimate interests in the Domain Name. See Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited,WIPO Case No. D2004-0753. The Respondent has made no attempt to do so, and there is no evidence in the case file to suggest that the Respondent's use of the Domain Name falls within any of the "safe harbours" of paragraph 4(c) of the Policy.
In the circumstances of this case, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant has established this element. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy sets out the conjunctive requirement that the Complainant establish both that the Respondent has registered the Domain Name in bad faith and that the Respondent is using the Domain Name in bad faith. Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the Domain Name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on its website or location.
Although the Domain Name is offered for sale on the website to which it resolves, in the absence of any evidence that the Respondent actively has sought to sell, rent, or otherwise transfer the Domain Name to the Complainant or to a competitor of the Complainant, the Panel does not conclude that the Respondent registered the Domain Name primarily for the purpose set out in the Policy, paragraph 4(b)(i).
As for paragraph 4(b)(ii), although the Respondent's registration and use of the domain name could suggest a pattern of conduct by the Respondent, the Domain Name appears to have been registered primarily for the purpose of commercial gain, rather than to prevent the Complainant from reflecting its mark in the ".co" extension, although that is a consequence of the registration.
Paragraph 4(b)(iii) is inapplicable because there is no evidence that the Parties are competitors.
As to paragraph 4(b)(iv), it is well established that the use of a domain name to resolve to a parking page with pay-per-click links to websites selling products competing with those of the complainant is evidence of bad faith and that, even if the advertisements are generated by the parking company, the registrant cannot avoid responsibility for the content of these advertisements. See Serta Inc. v. Charles Dawson,WIPO Case No. D2008-1474.
Accordingly, the Panel finds that by using the 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, affiliation, or endorsement of the Respondent's website. This is evidence of both bad faith registration and bad faith use. The Panel also notes that the post code provided in the WhoIs data for the Domain Name corresponds to Jacksonville, Florida, and not Jacksonville, New York, as indicated in the WhoIs. The provision of false or misleading whoIs information further reinforces the Panel's finding of bad faith.
The Complainant has established this element. 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 Domain Name be transferred to the Complainant.
Alan L. Limbury
Sole Panelist
Date: November 21, 2017
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