Decision for dispute CAC-UDRP-106551

The Panel is not aware of any other legal proceedings that are pending or decided and that relate to the Disputed Domain Name.

Complainant states that it owns “several trademarks” for COURIR, including Int’l Reg. No. 941035 (registered September 25, 2007) for use in connection with, inter alia, “footwear”; and EU Reg. No. 006848881 (registered November 26, 2008) for use in connection with, inter alia, “footwear.”  These registrations are referred to herein as the “COURIR Trademark.”

Complainant states that it sells “sneakers, ready-to-wear and fashion accessories for men, women and children” that are “aimed at an urban clientele from 15 to 25 years old,” via “187 stores and 70 affiliated stores in France” as well as “57 stores located in Spain, Belgium, Luxembourg and in the Maghreb, the Middle East and overseas territories.”

The Disputed Domain Name was created on May 10, 2024, and, according to Complainant, “resolves to a website offering discounted sport shoes, clothes and accessories for sale.”  An annex provided by Complainant confirms this.

Complainant contends, in relevant part, as follows:

Paragraph 4(a)(i): Complainant states that the Disputed Domain Name is confusingly similar to the COURIR Trademark because, inter alia, “the domain name includes [the trademark] in its entirety” and “the addition of the geographical abbreviation ‘FR’ for ‘France’… does not change the overall impression of the designation as being connected to the Complainant’s trademark.”

Paragraph 4(a)(ii): Complainant states that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not known as the disputed domain name”; “the Respondent is not affiliated with nor authorized by the Complainant in any way”; “[n]either license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark COURIR, or apply for registration of the disputed domain name by the Complainant”; and “Respondent uses the disputed domain name to disrupt Complainant’s business and to attract users by impersonating the Complainant.”

Paragraph 4(a)(iii): Complainant states that the Disputed Domain Name was registered and is being used in bad faith because, inter alia, Respondent registered the Disputed Domain Name “many years after Complainant had established a strong reputation and goodwill in its mark”; “Complainant’s trademark COURIR is widely known”; “the disputed domain name points to an online store displaying the Complainant’s trademark and logo COURIR and selling namely clothes and shoes at discounted prices”; “[u]sing a domain name in order to offer competing goods or services is often been held to disrupt the business of the owner of the relevant mark is bad faith”; and “[b]y using the domain name, the Complainant contends that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the respondent’s website or location.”

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 UDRP).

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 UDRP).

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 UDRP).

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.

Identical or Confusingly Similar: Paragraph 4(a)(i):

Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the COURIR Trademark.

As to whether the Disputed Domain Name is identical or confusingly similar to the COURIR Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “courirfr”) because “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”  WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.

Here, the Disputed Domain Name contains the COURIR in its entirety, simply adding the geographic abbreviation “fr” for France, where Complainant is based and where most of its stores are located.  As set forth in section 1.8 of WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”

Accordingly, the Panel finds that Complainant has proven the first element of the Policy. 

Rights or Legitimate Interests: Paragraph 4(a)(ii)

Complainant states that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not known as the disputed domain name”; “the Respondent is not affiliated with nor authorized by the Complainant in any way”; “[n]either license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark COURIR, or apply for registration of the disputed domain name by the Complainant”; and “Respondent uses the disputed domain name to disrupt Complainant’s business and to attract users by impersonating the Complainant.”

WIPO Overview 3.0, section 2.1, states: “While the overall burden of proof in UDRP proceedings is on the complainant, 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Panel finds that Complainant has established its prima facie case and, without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the UDRP.

Registered and Used in Bad Faith: Paragraph 4(a)(iii)

Whether a domain name is registered and used in bad faith for purposes of the UDRP may be determined by evaluating four (non-exhaustive) factors set forth in paragraph 4(b) of the UDRP: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.

Section 3.1.4 of WIPO Overview 3.0 states 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” and that “redirecting the domain name to… a competitor’s[] website” is evidence of bad faith under paragraph 4(b)(iv) of the Policy.

Accordingly, the Panel finds that Complainant has proven the third element of the Policy.