The Complainant is Winter Holding GmbH & Co. KG., Germany, represented by Bardehle Pagenberg Partnerschaft mbB, Germany.
The Respondent is Name Redacted. 2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2020. On April 21, 2020, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On April 25, 2020, the Registry 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 May 11, 2020 providing the registrant and contact information disclosed by the Registry, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 27, 2020. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”). In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 27, 2020. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was July 8, 2020. On June 3, 2020, the Center received an email communication from a third party claiming identity theft. Accordingly, the Center notified the Respondent’s default on July 12, 2020. The Center appointed José Ignacio San Martín Santamaría as the sole panelist in this matter on July 21, 2020. 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 ADR Rules, Paragraph B(5). 4. Factual Background The Complainant (Winter Holding) is the owner of the BETTY BARCLAY brand, a ladies’ outerwear company based in Nußloch near Heidelberg, Germany. The Complainant owns the following registrations for BETTY BARCLAY: - European Union Trade Mark (“EUTM”) No. 005705405 BETTY BARCLAY (fig.),granted on July 30, 2008, for products in classes 3, 9, 14, 18, 24, 25. The disputed domain name was registered on April 23, 2019, according to the evidence provided by the Complainant it resolved to a website purporting to sell women’s clothing under the BETTY BARCLAY brand, and does not currently host any active website. 5. Parties’ Contentions A. Complainant The Complainant’s arguments can be summarised as follows: - The Complainant is the owner of the BETTY BARCLAY brand, a ladies’ outerwear company. The company produces and distributes women clothing in the medium price segment under the brand name BETTY BARCLAY and has other own women fashion brands in its range. Perfume, bags and eyewear are distributed through licenses for the company’s various brands. - The Complainant owns the abovementioned trademark registrations for its BETTY BARCLAY mark in different countries. - The disputed domain name - The Complainant has not found that the Respondent has any registered trademarks or trade names or even personal names corresponding to the designation BETTY BARCLAY or the disputed domain name. Neither the name of the Respondent, nor the name of the entity promoting goods and services under the disputed domain name is in any way related to the term BETTY BARCLAY. - The disputed domain name was registered and is being used in bad faith. There can be no reasonable doubt that the Respondent, when registering the disputed domain name which is now being used for offering counterfeits, was aware of the Complainant’s rights when registering the disputed domain name. - The “Contact Us” information under the disputed domain name does not contain any actual contact information and does not comply with the German legal requirements either. As a consequence, the Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. However, as mentioned above, the named-Respondent sent an email to the Center claiming that the registration of the disputed domain name has been made without her knowledge or authorization by a third party using her identity. 6. Discussion and Findings According to ADR Rules, Paragraph B(10)(a): “In the event that a Party does not comply with any of the time periods established by these ADR Rules or by the Panel, the Panel shall proceed to a decision on the Complaint and may consider this failure to comply as grounds to accept the claims of the other Party.” The fact that the Respondent did not submit a reply could lead directly to acceptance of the Complainant’s claims. However, in the interest of equity, the undersigned Panelist will reach his decision after assessing the circumstances surrounding the case. Pursuant to Paragraph B(11)(d)(1), of the ADR Rules, the Panel shall grant the remedies requested if the Complainant proves that: (i) The disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or European Union law and; either (ii) The disputed domain name has been registered by the Respondent without rights or legitimate interests in the name; or (iii) The disputed domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union law The Complainant has a right in the European Union for the word mark BETTY BARCLAY for purposes of filing a complaint under the ADR Rules. The disputed domain name is confusingly similar to the Complainant’s registered trademarks in the European Union since it reproduces the Complainant’s mark BETTY BARCLAY, merely adding the term “vip” at the beginning. The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark as provided under Paragraph B(11)(d)(1)(i) of the ADR Rules. B. Rights or Legitimate Interests The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Having done so, the burden of production shifts to the Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests, as discussed in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), whose criteria can also be applied to the present ADR procedure 1: given that the Respondent has defaulted, it has not met that burden. In addition, the Panel notes the composition of the disputed domain name, which carries a risk of implied affiliation with the Complainant. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered or Used in Bad Faith According to Paragraph B(11)(f)(4) of the ADR Rules, registration or use of a domain name in bad faith will be considered in bad faith when: “the domain name was intentionally used to attract Internet users, for commercial gain to the Respondent’s website or other online location, by creating a likelihood of confusion with a name on which a right is recognized or established, by national and/or European Union law, or it is a name of a public body, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the Respondent.” The Complainant’s BETTY BARCLAY trademark is well-known precisely in relation to online retail services, well before the registration of the disputed domain name. The Respondent’s registration and use of the disputed domain name wholly incorporating a well-known third-party mark is, in the Panel‘s view, indicative of bad faith, since, as proven by the Complainant, the disputed domain name resolved to a website for the same activities as the Complainant’s website, reproducing the Complainant’s trademark, and creating an appearance of association or affiliation with the Complainant. As mentioned in Andrey Ternovskiy dba Chatroulette v. Alexander Ochki,WIPO Case No. D2017-0334. “It is clear in the Panel’s view that in the mind of an Internet user, the disputed domain names could be directly associated with the Complainant’s trademark, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (see AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327).” As reminded in section 3.1.4 of the WIPO Overview 3.0: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” Furthermore, from the communication sent by the individual identified as the Respondent to the Center it appears that there has been identity theft in the present case. Obviously, the use of false contact details clearly constitutes bad faith behavior. ADR and UDRP panels additionally view the provision of false contact information (or an additional privacy or proxy service) underlying a privacy or proxy service as an indication of bad faith (see WIPO Overview 3.0, section 3.6). In view of this, the Panel has decided to redact the Respondent’s name from the decision. 2 The Panel therefore concludes in all the circumstances that the disputed domain name has been registered and is being used in bad faith. 7. Decision For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name José Ignacio San Martín Santamaría 1 Given the similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”) the Panel will refer to UDRP jurisprudence. 2 The Panel has attached as Annex 1 to this decision an instruction regarding the transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Parties, the Registrar and the Registry as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Lidl Stiftung & Co. KG v. Name Redacted,WIPO Case No. DEU2018-0012. 3 The remedy sought is transfer of the disputed domain name to the Complainant, which is established in Germany. The Panel notes Article 4(2)(b) of Regulation (EC) 733/2002 as amended by Regulation (EU) 2019/517 of the European Parliament and of the Council of 19 March 2019, and finds that the Complainant satisfies such general eligibility criteria.
- EUTM No. 009476425 BETTY BARCLAY, granted on February 25, 2011, for products in classes 3, 9, 14, 18, 24, 25.
- International registration (“IR”) No. 378147 Betty Barclay (fig), granted on April 6, 1971, for products in class 25.
- IR No. 488666 BETTY BARCLAY (fig), granted on October 25, 1984, for products in classes 3, 14, 18, 24.
- IR No. 536641 BETTY BARCLAY (fig), granted on April 24, 1989, for products in classes 3, 14, 18, 24.
- IR No. 585701 BETTY BARCLAY (fig), granted on March 16, 1992, for products in class 3.
- IR No. 646807 BETTY BARCLAY (fig), granted on November 8, 1995, for products in class 25.
- IR No. 673516 BETTY BARCLAY (fig), granted on April 29, 1987, for products in classes 3, 14, 18, 24.
- IR No. 793492 BETTY BARCLAY (fig), granted on November 15, 2002, for products in classes 3, 9, 14, 18, 24, 25.
- IR No. 802613 BETTY BARCLAY (fig), granted on April 11, 2003, for products in class 9.
- IR No. 1434800 BETTY BARCLAY, granted on September 29, 2018, for products in classes 3, 18, 25.
- IR No. 1445068 BETTY BARCLAY (fig), granted on September 29, 2018, for products in classes 3, 9, 18, 25.
Sole Panelist
Date: July 28, 2020
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