Decision for dispute CAC-UDRP-105525

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the owner of the European Union trademark KARL LAGERFELD, registered on July 3, 2006 (Reg. No. 4451225) in classes 18, 25 and 35.

Karl Lagerfeld B.V. (the “Complainant”) is the owner of the European Union trademark KARL LAGERFELD, registered on July 3, 2006 (Reg. No. 4451225), in classes 18, 25 and 35.

The Complainant also owns domain names containing the trademark KARL LAGERFELD (eg. the domain name <karllagerfeldparis.com>).

The Complainant is globally known for its brand of fashion items and accessories. KARL LAGERFELD was founded by the eponymous world-famous fashion creator in 1984 and has grown to become one of the best-known brands in fashion today.

The disputed domain name <karllagerfeldjeans.com> was registered on June 14, 2023, i.e. many years after the first registration of the Complainant’s widely known trademark.

The Complainant submits that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED. 

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).

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).

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).

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.

The Panel agrees with the Complainant that the disputed domain name is confusingly similar to the Complainant's trademark KARL LAGERFELD. The Complainant’s trademark is included to the disputed domain name in its entirety. The addition of the term “jeans” is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark (see WIPO Overview 3.0, section 1.8). On the contrary, the addition of the generic word “jeans” increases the likelihood of confusion with the Complainant’s trademark, because “jeans” refers to the Complainant‘s business related to clothing (Nice class 25).

The Panel acknowledges that the Complainant presented prima facie evidence that the Respondent is not sponsored by or affiliated with Complainant in any way. Furthermore, the Complainant has not licensed, authorized, or permitted Respondent to use Complainant’s trademarks in any manner, including in domain names. The Respondent's name does not resemble the disputed domain name in any manner. Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use.

As no administratively compliant response has been provided to the Panel and the prima facie evidence was not challenged by the Respondent, the Panel concludes that the Respondent meant Complainant's trademark KARL LAGERFELD, when he/she registered the disputed domain name <karllagerfeldjeans.com> (see WIPO Overview 3.0, para. 3.1.3 and 3.2). Previous UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. Accordingly, the Panel finds that the disputed domain name was registered in bad faith.

The disputed domain name was used only for listing it for sale on <dynadot.com> (the listing being accessible via an automatic redirect when attempting to visit the domain name itself) and made available for purchase for a sum of EUR 475. These circumstances indicate that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling it to the Complainant who is the owner of the trademark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name (see para. 4(b)(i) of the Policy). Although Respondent’s offer of the disputed domain name for sale was not made specifically to the Complainant or its competitor, “offers for sale to the public may nevertheless constitute evidence of bad faith under the Policy […] The offering for sale of a domain name, even to a third party, supports bad faith” (see eg. WIPO Case No. D2020-0668).