On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 102510
Time of Filing 2019-05-28 11:29:32
Disputed domain name SANDROPARISUK.COM
Case Administrator
Name Šárka Glasslová
Complainant
Organization SANDRO ANDY
Authorized Representative
Organization Nameshield (Enora Millocheau)
Respondent
Organization See PrivacyGuardian.org
Other Legal Proceedings
The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.
Identification of rights
Complainant claims ownership of various trademark registrations for the trademark SANDRO in relation to a range of goods and services in the fashion industry. These include the following:

- International trademark No. 827287, registered on March 4th, 2004;
- International trademark No. 1371455 registered on July 20th, 2017;
- International trademark No. 994536, registered on September 12th, 2008;
- European trademark No. 8772568, registered on July 27th, 2010;
- French trademark No. 4259879, registered on March 25th, 2016;
- French trademark No. 4073924, registered on March 6th, 2014;
- French trademark No. 3555337, registered on February 12th, 2008; and
- French trademark No. 3244120, registered on September 4th, 2003
Factual Background
FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

Created in 1984, the Complainant is a French company in the fashion apparel and accessories industry. It is part of the SMCP group. The Complainant sells its products through 646 points of sale in 39 countries around the world and also hosts websites at the domain names <sandro-paris.com> which was registered in 2003 and <sandro.fr> which was registered in 2002.

The disputed domain name <sandroparisuk.com> was registered on May 8, 2019 and resolves to a website that displays the SANDRO trademark along with images of various fashion items that are being offered for sale. Among these items are products that are manufactured and sold by the Complainant’s competitors in the fashion industry.
 
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.
Rights
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).
No rights or legitimate interests
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).
Bad faith
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.
Principal Reasons for the Decision
A. The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights

Paragraph 4(a)(i) of the Policy is a standing requirement which is satisfied if the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. Furthermore, it is not as extensive as the “likelihood of confusion” test for trademark infringement applied by many courts. Rather, under the Policy confusing similarity is commonly tested by comparing the Complainant’s trademark and the disputed domain name in appearance, sound, meaning, and overall impression. See Administradora de Marcas RD, S. de R.L. de C.V. v. DNS Manager / Profile Group, Case No. 101341 (CAC, November 28, 2016).

In this case, Complainant has submitted evidence that it owns various registrations of the SANDRO trademark and that it offers products in the area of fashion apparel and accessories for men and women. Complainant also hosts its company websites at <sandro-paris.com> and <sandro.fr>.

The domain name in dispute reproduces Complainant’s trademark in its entirety and merely adds the words “Paris” and “UK“ and the “.com” TLD. The addition of these geographically descriptive words to the Complainant’s trademark does not reduce the confusing similarity of the disputed domain name since it might lead internet users to wrongly believe that the said domain name is endorsed by Complainant. Please see Kids Brands Group International S.a.r.l. v. Martine Sellenraad, Chinchilla, Case No. D2019-0800 (WIPO, June 19, 2019) (in relation to the disputed domain name <cyrillusparis.com>, “this Panel finds that the addition of the term ‘paris’ does not constitute an element so as to avoid confusing similarity for purposes of the Policy.”).

Further, as it adds no meaning or context, the extension “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the disputed domain name. Please see Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., Case No. D2014-1919 (WIPO, December 26, 2014) (when considering the issue of confusing similarity, “it is well-established that the top-level domain name “.com” may be disregarded for this purpose.“).

Accordingly, this Panel finds that the Complainant has rights to the SANDRO trademark and that the disputed domain name is confusingly similar to the Complainant’s trademark. Thus, the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. The Respondent has no rights or legitimate interests in respect of the disputed domain name

Pursuant to paragraph 4(a)(ii) of the Policy, a complainant has the burden of making a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. Cephalon, Inc. v. RiskIQ, Inc., Case No. 100834 (CAC, September 12, 2014). Once this burden is met, it shifts to the respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy offers respondents several examples of how to demonstrate their rights or legitimate interests to a disputed domain name.

The Complainant states that it has no business with the Respondent and has never authorized the Respondent to use the SANDRO trademark. The Respondent has defaulted in the case and so does not contest this. As such, the Panel concludes that the Respondent is not affiliated with the Complainant, nor is it authorized or licensed to use the trademark SANDRO or to seek registration of any domain name incorporating the aforementioned trademark.

Under Paragraphs 4(c)(i) and 4(c)(iii) of the Policy the Panel considers whether the Respondent is using the disputed domain name to make a bona fide offering of goods or services or whether it is making a legitimate noncommercial or fair use of the disputed domain name. Offering similar goods or services that compete with those offered by a Complainant is, absent specific and limited circumstances, not considered a bona fide offering or a legitimate noncommercial or fair use under past UDRP decisions. See, General Motors LLC v. MIKE LEE, Claim No. FA 1659965 (FORUM, March 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii).”).

Here, the Respondent’s website claims to offer fashion products of the Complainant’s competitors at what appear to be significantly reduced prices. This website also shows links to fashion product categories that display the SANDRO trademark although no indication is offered as to the Respondent’s relationship, or lack thereof, with the Complainant. As such, it does not meet the test for distribution of a complainant’s products under the seminal case of Oki Data Americas, Inc. v. ASD, Inc., Case No. D2001-0903 (WIPO, November 6, 2001). Considering this evidence, it is apparent to this Panel that the Respondent is offering products under the disputed domain name that are substantially identical to, and commercially competitive with those offered by the Complainant under its registered SANDRO trademark. Thus, the Respondent is not using the disputed domain name for a bona fide offering of goods or services or in connection with a legitimate non-commercial or fair use.

With respect to paragraph 4(c)(ii) of the Policy, the Respondent does not appear to be commonly known by the name Sandro nor the name <sandroparisuk.com>. The Whois record for the disputed domain name identifies the Respondent only as “Domain holder (Registrant) / Organization See PrivacyGuardian.org “. As Respondent has filed no Response to the Complaint or made any other submission in this case, this Panel cannot conclude that it is known otherwise than as identified in the Whois record.

For all of the above-cited reasons, this Panel finds, by a preponderance of the evidence, that the Complainant has met its burden of proof and that the Respondent has not refuted this to show that it has any rights or legitimate interests in the disputed domain name. Thus, it is held that the Respondent has no rights or legitimate interests in respect to the disputed domain name under Paragraph 4(a)(ii) of the Policy.

C. The disputed domain name was registered and is being used in bad faith

The Complainant must demonstrate both that the disputed domain name was registered and is being used in bad faith. Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four examples of actions by a respondent that may satisfy this burden of proof. .

A threshold question here is whether, at the time that it registered the disputed domain name, Respondent was aware of the Complainant’s SANDRO trademark. The origin of the Complainant's trademark rights preceded the registration of the disputed domain name by many years. Further, as the Respondent’s website uses the Complainant’s trademark to offer fashion products of both the Complainant’s and its competitors, it is quite certain that the Respondent was aware of the Complainant and its trademark at the time that the disputed domain name was registered. UBS AG v. Frank Kelechi / Harmony House, Claim No. FA 1832240 (FORUM, April 4, 2019) (the respondent was found to be aware of the complainant’s trademark where the website of the disputed domain name displayed the Complainant’s trademark and purported to offer financial services similar to those offered by the Complainant). This Panel thus concludes that the Respondent was aware of and intentionally sought to copy Complainant’s trademark when it registered the disputed domain name.

Next, attention is given to the Complainant’s claim that the Respondent uses the disputed domain name in bad faith. Here, the disputed domain name was created in 2019 which is after the issuance of the Complainant’s cited trademark registrations and after the Complainant’s use of its SANDRO trademark in commerce. Paragraph 4(b)(iii) of the Policy states that disrupting the business of a competitor will suffice as evidence of bad faith registration and use under Paragraph 4(a)(iii) of the Policy. Furthermore, Paragraph 4(b)(iv) of the Policy states that bad faith may be found where a respondent intentionally attempts to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with a complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its products or services. It has been held in many prior UDRP decisions that the operation of a competing business using a confusingly similar domain name is evidence of bad faith. See, Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, Claim No. FA 1790949 (FORUM, July 9, 2018) (finding bad faith per Paragraphs 4(b)(iii) and 4(b)(iv) of the Policy where the Respondent used the disputed domain name to resolve to a website upon which the Respondent passes itself off as the Complainant and offers online cryptocurrency services in direct competition with the Complainant’s business).

Here, the Respondent offers the same or very similar products as the Complainant to the same consumer market using the disputed domain name which is confusingly similar to the Complainant’s SANDRO trademark. As such, the Panel finds that the disputed domain name falls within the descriptions of both Paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.

Consequently, in view of the above-mentioned circumstances including the lack of a response or any other submission in this case by the Respondent, this Panel finds, by a preponderance of the evidence, that the disputed domain name was registered and used in bad faith and that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) is (are) to be
SANDROPARISUK.COM Transferred to the Complainant
Panellists
Name Steven M. Levy, Esq.
Date of Panel Decision 2019-07-03
Publication of the Decision
Publish the Decision