FIRST CONDITION
It is commonly accepted that the first condition functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. It this comparison, the cc- or g- TLD is usually not taken into account.
The disputed domain names are composed of:
- the Complainant’s trademark where the last letter "E" is replaced by a "X";
- a generic word referring directly to the Complainant's activity (beauty, cosmetics, etc.).
The Panel is of the opinion that the replacement of a letter (and also, in this specific case, the fact that this replacement does not change the phonetic pronunciation of the trademark), and/or the adjunction of generic terms do(es) not generally change the assessment as far as the first condition is concerned. (see also WIPO, Swiss Re, No. D2014-1873).
SECOND CONDITION
Panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.
The Complainant claims, without being contradicted, that:
- The Complainant has not licensed or authorized the Respondent to register or use the disputed domain names;
- The Respondent has used the disputed domain names to open temporary websites, on which it offered for sale products similar to those manufactured by the Complainant. The short life of the sites is a way for the Respondent to try to escape the Complainant's surveillance.
The Respondent has chosen not to answer to the Complaint.
Based on the elements presented by Complainant, the Panels finds that the second condition is satisfied.
THIRD CONDITION
Safe for the replacement of a letter, the first part of the disputed domain names incorporates entirely the Complainant’s trademark. The second part of the disputed domain names is a generic word referring directly to the Complainant's activity. The Respondent has acted this way on (at least) three occasions. In the absence of any credible explanation, such registrations appear as a direct reference to the Complainant’s trademark. It is even more probable when the notoriety of the Complainant's trademark is taken into account. There is no apparent plausible reason for the Respondent to register the disputed domain names, except its probable intention of taking advantage of the distinctiveness of the Complainant's trademark. It is therefore prima facie highly probable that the Respondent registered and used the disputed domain names having the Complainant in mind, and acted in order to attract traffic by using the notoriety of the Complainant.
Also, the disputed domain names are prima facie not used for any bona fide offerings, temporary websites are a curious way to proceed. The Panel would have welcomed some explanations but the Respondent has chosen not to answer to the Complaint.
Based on the elements presented by Complainant, the Panel finds that the third condition is satisfied.
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