Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain names are identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Identical or confusingly similar
The Complainant’s trade mark registrations for HOGAN and ROGER VIVIER, including those in respect of which full details are provided above, establish its rights in these marks.
For the purpose of comparing the disputed domain names with the Complainant’s mark, it is established practice to disregard the Top-Level Domain, that is “.com” in the case of each disputed domain name, as this is a technical requirement of registration. The remaining elements of each disputed domain name comprise the Complainant’s HOGAN or ROGER VIVIER trade mark, in full and without alteration, and combines it with either geographical terms and/or words apt to be associated with the Complainant’s business, either in the English language or in the language with which the Respondent’s website is likely to be associated having regard to the language of the associated descriptive term.
Where a domain name wholly incorporates a complainant’s registered trade mark that is sufficient to establish confusing similarity for purposes of first element of the Policy; see, for example, CAC Case No. 102382, MAJE v enchong lin. The Complainant’s mark is clearly recognizable within the disputed domain name and the additional elements do not serve to prevent the disputed domain name from being found confusingly similar to it. See, by way of example, CAC Case No. 103016, Novartis AG v unlocking guru; “An addition of common, dictionary, generic, or other descriptive terms is typically insufficient to prevent threshold Internet user confusion”. The Panel accordingly finds that each of the disputed domain names is confusingly similar to a trade mark in which the Complainant has rights.
Rights and legitimate interests
Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interest in a domain name. These are, summarised briefly: (i) if the respondent has been using the domain name in connection with a bona fide offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate non-commercial or fair use of the domain name.
The only known use of the disputed domain name, has been to enable the Respondent to sell allegedly counterfeit copies of the Complainant’s products. Whilst the Complainant has not provided direct evidence that the Respondent’s products are counterfeits, it points to the greatly reduced prices at which the Respondent’s products are sold, relative to the prices of the Complainant’s products, which prior UDRP panels have accepted as amounting to evidence that they are unlikely to be genuine; see, for example Oakley, Inc. v. Victoriaclassic.Inc, WIPO Case No. D2012-1968. Indeed, the Respondent has not denied the Complainant’s assertions of counterfeiting. As explained at section 2.13.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “Panels have categorically 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”. See also CAC Case No. 101969, Under Armour Inc. v Convey srl.
In these circumstances, the Respondent’s activities cannot amount to a bona fide offering of goods and services. Furthermore, the current inactive use of the disputed domain name <hogansinaldo.com> does not amount to a bona fide offering of goods and services or provide the Respondent with a right or legitimate interest in it on any other basis.
There is no evidence that the Respondent has been commonly known by any of the disputed domain names, and the uses made of them are such that the Respondent’s holding of them does not amount a legitimate non-commercial or fair use. Furthermore, as each of the disputed domain names, is confusingly similar to the Complainant’s mark and any additional terms within each disputed domain name is apt to reinforce the association with the Complainant, they carry with them a risk of implied affiliation with the Complainant which prevents their use from being considered fair.
The Complainant having made out a prima facie case in relation to the second element, the burden of proof shifts to the Respondent to rebut it; see, for example, CAC Case No. 102333, Amedei S.r.l. v sun xin. In the absence of any response by it to the Complaint, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
Bad faith
The Panel accepts the Complainant’s submission that the distinctive nature of the Complaint’s mark and its repute means that it is highly improbable that the Respondent registered the disputed domain names without an awareness of the Complainant and its trade mark rights. This is particularly the case when the only known use to which the disputed domain names have been put is to point to web pages purporting to offer for sale the Complainant’s products, which points clearly to an awareness by the Respondent of the Complainant’s HOGAN and ROGER VIVIER trade marks as at the date of registration of the disputed domain names. In these circumstances, the registration by the Respondent of the disputed domain names, leads to a presumption of bad faith; see, for example, CAC Case No. 101448, Severina Kojić v Orbis d.o.o. The Panel therefore finds that the disputed domain names were registered in bad faith.
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out in paragraph 4(b)(iv) of the Policy is if a 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 its website.
The uses to which the Respondent has put the disputed domain names, namely to resolve to websites offering goods for sale which are, most likely, counterfeit copies of the Complainant’s products fall precisely within these circumstances. The websites to which each disputed domain name resolves are clearly intended to deceive Internet users into believing that they are operated by the Complainant or with its authorisation. Such a belief will be reinforced because of the confusing similarity between the disputed domain names and the Complainant’s HOGAN and ROGER VIVIER trade marks. The additional components to the disputed domain names, such as “uksale”, “shopgr” (“gr” being a recognised abbreviation for Greece) and “outlets”, accentuate the false impression of a connection with the Complainant’s business and further increases the likelihood of confusion to Internet users. Moreover, there is no conceivable good faith use which the Respondent could make of the disputed domain names. Finally, the Respondent has not made any attempt to justify its conduct or to rebut the Complainant’s assertions. The overall circumstances clearly point to bad faith registration and use; see, by way of similar example, the decision of the panel in CAC Case No. 101953, G&P Net v zheng zhang.
Finally, the present inactive status of the disputed domain name <hogansinaldo.com>, does not prevent a finding of bad faith registration and use under the doctrine of passive holding; see CAC Case No. 102333, Amedei S.r.l. v sun xin; the factors set out in that decision as indicating bad faith passive holding are fully present in the case of this disputed domain name.
The Panel accordingly finds that all the disputed domain names were both registered and are being used in bad faith.
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