The Complainant is Promod of Marcq-en-Baroeul, France, represented by Dreyfus & associés, France.
The Respondent is Caroline Kayes-hall of Bournemouth, Dorset, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2018. On October 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 26, 2018, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on October 31, 2018 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 November 5, 2018.
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 November 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2018. On November 9, 2018, November 17, 2018 and November 23, 2018, informal email communications from the alleged father of the named Respondent were received by the Center claiming that the Disputed Domain Name was registered without the knowledge of the Respondent by an unknown third-party. No further Response was submitted. Accordingly, the Center notified the Parties that it would proceed to panel appointment on November 29, 2018.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on December 10, 2018. 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, Promod, is a multinational clothing and accessories company established in France. The Complainant was founded in 1975 and sells its clothing online and in more than 1000 shops in more than 50 countries, including the United Kingdom.
The Complainant is the holder of a multitude of trade- and service mark registrations across various jurisdictions throughout the world for the mark PROMOD, which it uses in connection with its clothing business. The Complainant’s trademark portfolio includes, inter alia, the following trade- and service mark registrations:
- PROMOD, word mark registered with the United Kingdom Intellectual Property Office (“UKIPO”) under No. UK00002023049 on February 16, 1996, in classes 3, 14, 18 and 24.
- PROMOD, word mark registered with UKIPO under No. UK00002484786 on November 14, 2008, in class 25.
- PROMOD, international word mark registered under No. 597138 on February 8, 1993, in classed 24, 25 and 26.
The Disputed Domain Name was registered by the Respondent on July 14, 2018. The Disputed Domain Name currently resolves to a standard parking page of the Registrar GoD, LLC. Before the filing of the Complaint, the Disputed Domain Name used to redirect to the Complainant’s own official website connected to the domain name . Additionally, the Respondent has set up an email server connected to the Disputed Domain Name.
On August 14, 2018, the Complainant sent a notification letter to the registrar via email, asserting its trademark rights and requesting the disclosure of the identity and contact details of the Respondent. The Complainant does not indicate whether it has received a response to this communication.
At the same time, on August 14, 2018, the Complainant sent a notification letter via email to the email service provider for the Disputed Domain Name, requesting the deactivation of the applicable email server. As the Complainant did not receive a response to this communication, the Complainant sent three additional reminders on August 16, 2018, August 20, 2018 and August 22, 2018 without success.
After the filing of the Complaint, on November 9, 2018, November 17, 2018 and November 23, 2018, the Center received several informal communications from a third party claiming to be the father of the named Respondent. In these communications, the third party asserted that the identity and contact information of the named Respondent was used without its knowledge or permission to register the Disputed Domain Name, raising suspicion of identity theft. 5. Parties’ Contentions A. Complainant
The Complainant considers the Disputed Domain Name to be confusingly similar to trademarks and service marks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent registered and uses the Disputed Domain Name to attract for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location. B. Respondent
On November 9, 2018, November 17, 2018 and November 23, 2018, the Center received email communications from the alleged father of the named Respondent claiming that her name was used by a third party without her knowledge to register the Disputed Domain Name. The Respondent did not submit a formal response to the Complaint. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.
Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
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 Panel will therefore deal with each of these requirements. A. Identical or Confusingly Similar
To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there is a trademark in which the Complainant has rights. The Complainant’s PROMOD trademark has been registered and used in connection to its clothing business.
The Disputed Domain Name incorporates the Complainant’s PROMOD trademark in its entirety, merely adding the non-distinctive suffix “s”.
The addition of the letter “s” does not add to the distinctiveness of the Disputed Domain Name as it potentially refers to the plural form of the Complainant’s trademark. The addition of a mere letter does not significantly affect the appearance or pronunciation of the Disputed Domain Name.
Additionally, it is well established that the applicable country-code Top Level Domain (“ccTLD”) suffix in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see section 1.11 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”))1 .
Accordingly, the Complainant has made out the first of the three elements of the Policy that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
It is well established that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.
Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, the Respondent is currently not making any use of the Disputed Domain Name in connection with an active website. Neither the Respondent nor the facts of the case indicate any demonstrable preparations to use the Disputed Domain Name. The Disputed Domain Name does not seem to be comprised of or refer to a dictionary word or phrase. The passive holding or non-use of domain names is, in appropriate circumstances, evidence of a lack of rights or legitimate interests in the domain names (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; American Home Products Corporation v. Ben Malgioglio,WIPO Case No. D2000-1602;Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci,WIPO Case No. D2000-1244).
Before filing the Complaint, the Respondent had apparently used the Disputed Domain Name to redirect to the Complainant’s own official website connected to the domain name . Evidently, such a use cannot be considered a legitimate noncommercial or fair use of the Disputed Domain Name as it misleads Internet users into believing that the Disputed Domain Name is somehow controlled by or connected to the Complainant and/or its business (seeMandarin Oriental Services B.V. v. Domain Administrator, Matama,WIPO Case No. D2017-0615; Altavista Company v. Brunosousa, aka Bruno Sousa,WIPO Case No. D2002-0109).
The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempted to attract, for commercial gain, Internet users to a 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 website or location or of a product or service on the website or location.
In the present case, it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Disputed Domain Name includes the Complainant’s distinctive PROMOD trademark in its entirety with the addition of a single letter. Considering the distinctive character and the established reputation of the Complainant’s trademark, the Respondent must have had knowledge of the Complainant’s rights at the time of registering the Disputed Domain Name. Furthermore, the Respondent has previously used the Disputed Domain Name to specifically redirect to the Complainant’s own official website. The Panel therefore finds that the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith registration (see Red Bull GmbH v. Credit du Léman SA, Jean‑Denis Deletraz, supra; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007).
The Respondent is not presently using the Disputed Domain Name. The passive holding of the Disputed Domain Name may amount to bad faith when it is difficult to imagine any plausible future active use of the Disputed Domain Name by the Respondent that would be legitimate and not infringe the Complainant’s well-known mark (see Inter-IKEA v. Polanski,WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh,WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, supra). Additional factors to support a finding of bad faith in relation to the passive holding of a domain name include the degree of distinctiveness or reputation of the complainant’s mark, the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and the respondent’s concealing its identity or use of false contact details (see section 3.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
In the present case, the Panel is of the opinion that the Complainant’s PROMOD trademark is distinctive and widely established, which makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Name by the Respondent.
Additionally, the Respondent seems to have previously used the Disputed Domain Name to redirect to the Complainant’s own official website. The redirection of the Disputed Domain Name to the Complainant’s own official website may further support a finding of bad faith as such use may confuse Internet users into believing that the Disputed Domain Name is somehow associated with or controlled by the Complainant (see PayPal Inc. v. Jon Shanks,WIPO Case No. D2014-0888). Additionally, the Respondent could at any time decide to redirect Internet traffic to a different website that is not held by, or associated with, the Complainant (see MySpace, Inc. v. Mari Gomez,WIPO Case No. D2007-1231).
Lastly, on the basis of the third party communications sent to the Center on November 9, 2018, November 17, 2018 and November 23, 2018, the Panel also takes note of the fact that the present case could potentially constitute a case of identity theft, where the Disputed Domain Name was registered using the named Respondent’s identity and contact information without the Respondent’s knowledge or approval. However, the Panel is not in a position to verify such third party’s contentions. Nevertheless, such finding would not result in the Panel deciding on a different outcome in the present proceedings. 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.
Flip Jan Claude Petillion
Sole Panelist
Date: December 17, 2018
1 As the applicable dispute resolution policy for .co domain name disputes is the Uniform Domain-Name Dispute Resolution Policy (UDRP), the Panel finds UDRP precedent to be relevant to this case.
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