The Complainant is August & Debouzy et Associes, France, internally represented.
The Respondent is Lanvin Jerome, France.
2. The Domain Name, Registry and RegistrarThe Registry of the disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2021. On July 27, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On July 30, 2021, 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 August 9, 2021 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 amended Complaint on August 25, 2021.
The Center verified that the Complaint, together with the amended 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 August 26, 2021. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was October 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2021
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on October 19, 2021. 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 BackgroundThe Complainant in this administrative proceeding is a French law firm registered with the Paris Bar, founded in 1995 by lawyers Gilles August and Olivier Debouzy.
The Respondent is apparently located in France.
The Complainant owns rights in several AUGUST DEBOUZY trademarks, inter alia European Union Trade Marks no. 015322472 and no. 015322481, both registered on April 9, 2016 (together referred to hereinafter as: “the Mark”).
In addition, the Complainant has registered several domain names, including inter alia
The disputed domain name
The Complainant has submitted evidence that with the disputed domain name, MX servers were activated and a bogus email address created, and that the Respondent used it to send a phishing email to a client of the Complainant.
5. Parties’ Contentions A. Complainant(i) The Complainant submits that the disputed domain name reproduces the Mark, in which the Complainant has rights, and is nearly identical and is confusingly similar, to the Mark, insofar as the disputed domain name,
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it never authorized the Respondent to use the Mark in any manner and that the Respondent has never had any affiliation with the Complainant.
(iii) The Complainant submits that the Respondent has registered the disputed domain name in bad faith and, by its fraudulent phishing attempt, is also using it in bad faith.
(iv) The Complainant requests that the disputed domain name be transferred to the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Procedural Aspects: Admissibility of a request to transfer and failure to complyThe Panel finds that the Complainant satisfies the general eligibility criteria for registration set out in Paragraph 4(2)(b) of Regulation (EC) No 733/2002, as amended by Regulation (EU) No 2019/517, and thus that, pursuant to sub-paragraph B11(b) of the ADR Rules, the transfer of the disputed domain name is a remedy available to the Complainant.
Pursuant to sub-paragraph B11(a) of the ADR Rules, the Panel is empowered to decide a Complaint on the basis of the statements and documents submitted.
Under Paragraph B11(d) of the ADR Rules, it is the Complainant’s burden to establish that all three of the required criteria for granting the remedy sought have been met.
Under the ADR Rules, sub-paragraph B10(a), a failure by the Respondent to comply with any time period is a ground to accept the claims of the Complainant. As noted above, the Respondent has failed to respond within the time period provided.
Under sub-paragraph B10(b) of the ADR Rules, the Panel is empowered to draw from the Respondent’s failure to comply such inferences as it considers appropriate, and under sub-paragraph B7(d) of the ADR Rules, the Panel is empowered to determine in its sole discretion the admissibility, relevance, materiality and weight of the evidence.
In this case, the Panel finds that the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant.
In particular, by failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in sub-paragraph B11(e) of the ADR Rules or otherwise, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
6.2. Requirements of sub-paragraph B11(d) of the ADR Rules 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 lawIn comparing the Mark with the disputed domain name
It is well established that a ccTLD does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity.
The Panel finds that the disputed domain name
Thus, the Complainant has satisfied the requirement of sub-paragraph B11(d)(1)(i) of the ADR Rules.
B. Rights or Legitimate InterestsAlthough a complainant bears the ultimate burden of establishing all three elements of sub-paragraph B11(d)(1) of the ADR Rules, with regard to sub-paragraph B11(d)(1)(ii) of the ADR Rules, this could result in the often impossible task of proving a negative proposition, requiring information that is primarily, if not exclusively, within the knowledge of a respondent.
Thus, the Panel’s view is that sub-paragraph B11(d)(1)(ii) of the ADR Rules shifts the burden of production of evidence to the respondent to come forward with evidence of rights or legitimate interests in a domain name, once the complainant has made a prima facie showing, as the Panel finds the Complainant has made in this case, based on the facts and arguments set out above. For similar views by UDRP panels, see Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270, and WIPO Overview 3.0, section 2.1.
As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name or uses (or has made bona fide preparations to use) the disputed domain name in a business or otherwise.
The disputed domain name redirected Internet users to the Complainant’s website. The nature of the disputed domain name is such that it carries a high risk of implied affiliation with the Complainant, seeing how the disputed domain name is nearly identical to the Mark, the only difference being the hyphen between the words “august” and “debouzy”.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no affiliation with the Complainant and (ii) received no authorization from the Complainant to register or use the disputed domain name.
In the circumstances, the Panel concludes that the Complainant has established the requirement of sub-paragraph B11(d)(1)(ii) of the ADR Rules with respect to the disputed domain name.
C. Registered or Used in Bad FaithAs noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant in registering a domain name nearly identical to the Mark.
It is established in prior UDRP decisions that where the respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Weetabix Limited v. Mr. J. Clarke,WIPO Case No. D2001-0775.
In this case, in the light of the evidence submitted by the Complainant that the disputed domain name was used for fraudulent purposes, the Panel finds it impossible to believe that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark. See Barney’s Inc. v. BNY Bulletin Board,WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs,WIPO Case No. D2001-1384, citing Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092.
Prior UDRP panels have also held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible, considering the specificity of the activity (see Audi AG v. Hans Wolf,WIPO Case No. D2001-0148). The Panel finds it is indeed not possible to imagine any plausible future active use of the disputed domain name that would not be illegitimate, considering the specificity of the Complainant’s activity and the composition of the disputed domain name.
The Panel concludes, notably in the light of the Respondent’s electing not to provide any substantive defense of its position, that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of sub-paragraph B11(d)(1)(iii) of the ADR Rules is also satisfied in this case.
7. DecisionFor the foregoing reasons, in accordance with Paragraph B11 of the ADR Rules, the Panel orders that the disputed domain name,
Louis-Bernard Buchman
Sole Panelist
Date: November 9, 2021
1 Noting the similarities between the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) and the ADR Rules, the Panel has referred to prior UDRP cases and the WIPO Overview 3.0, where appropriate.