{ "case_number": "CAC-UDRP-102168", "time_of_filling": "2018-09-18 09:30:33", "domain_names": [ "rochasshop.com" ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "INTERPARFUMS" ], "complainant_representative": "Nameshield (Laurent Becker)", "respondent": [ "Congj Buxar" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nThe Complainant is the owner of the trademark “Rochas”, a fashion, beauty, and perfume house founded in 1925 by French designer Marcel Rochas. The Complainant is the owner of several registered international and community trademarks including the distinctive wording ROCHAS. The Complainant also owns several domain names, including the same distinctive wording ROCHAS such as . \r\n\r\nThe disputed domain name was registered on 3 August 2017. The disputed domain name points to a website giving the overall impression of being relating to the Complainant.\r\n", "other_legal_proceedings": "The Panel is not aware of any other proceedings related to the disputed domain name.", "no_response_filed": "PARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\nThe disputed domain name is confusingly similar to the protected mark combined with generic term. \r\n\r\nThe Complainant contends that the disputed domain name is confusingly similar to its well-known and distinctive trademark ROCHAS. The Complainant contends the addition of the word “SHOP”, and the gTLD “.COM” are not sufficient elements to escape the finding that the disputed domain name is confusingly similar to the Complainant’s trademarks and do not change the overall impression of the designation as being connected to the trademark ROCHAS. See WIPO Case No. D2017-2187 LEGO Juris A\/S v. Torsten Kruger (“The addition of the descriptive term \"shop\" does nothing to dispel the confusing similarity between the disputed domain name and the Complainant's LEGO trademark”). Further, the website in connection with the disputed domain name makes clear reference to the Complainant. Thus, it does not avoid the likelihood of confusion between the disputed domain name and the Complainant, its trademark ROCHAS and its domain names associated.\r\n\r\nThe Respondent does not have any rights or legitimate interests in the disputed domain name. According to the WIPO case no. D2003-0455, Croatia Airlines d.d. v. Modern Empire Internet Ltd., the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a) (ii) of the Policy.\r\n\r\nThe Complainant does not carry out any activity for, nor has any business with the Respondent. Neither license nor authorization has been granted to the Respondent to make any use of the trademark ROCHAS, or apply for registration of the disputed domain name by the Complainant. The website used in relation to the disputed domain name displays content that is about the Complainant. Indeed, the website pretends to be the Complainant in order to sell products branded ROCHAS. The Complainant argues that Respondent uses the disputed domain name to pass off as Complainant in order to sell counterfeit products. See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Thus, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, and has registered and used it only in order to create a likelihood of confusion with the Complainant’s trademarks.\r\n\r\nThe disputed domain name has been registered and is being used in bad faith. \r\n\r\nThe disputed domain name is confusingly similar with the Complainant's well-known trademarks ROCHAS. The combination of the term \"ROCHAS\" with the word \"SHOP\" further indicates that the Respondent was conscious of the reputation of the Complainant's mark and the kind of business it is engaged in. The term “SHOP” reinforces the false impression that there is some sort of legitimate connection with the Complainant. See WIPO Case No. D2017-2187 LEGO Juris A\/S v. Torsten Kruger (“The term \"shop\" tends to reinforce the false impression that there is some sort of legitimate connection with the Complainant, as its goods are commonly sold through retail shops.”). Thus, given the distinctiveness of the Complainant's trademarks and reputation, the Complainant contends that it is inconceivable that the Respondent could have registered the disputed domain name without actual knowledge of Complainant's rights in the trademark. Past Panels have held that a registration is constitutive of bad faith. Please see for instance, registration of other domain names which include third party trademarks, may be evidence of bad faith under paragraph 4(b)(ii) of the Policy. See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the Respondent’s previous registration of domain names such as , , and and subsequent registration of the domain name evidenced bad faith registration and use pursuant to paragraph 4(b)(ii) of the Policy). In addition, the Complainant asserts that the Respondent is intentionally attempting to attract for commercial gain — Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Using a confusingly similar domain name to mislead users for the purpose of offering counterfeit products can evince bad faith registration and use per paragraph 4(b)(iv) of the Policy. See Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per paragraph 4(b)(iv) of the Policy by creating confusion as to the complainant’s connection with the website by selling counterfeit products). On these bases, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith. Thus, the Complainant contends that the Respondent has registered the disputed domain name and is using it in bad faith. See WIPO Case No. D2017-2187 LEGO Juris A\/S v. Torsten Kruger (above) and Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per paragraph 4(b)(iv) of the Policy by creating confusion as to the complainant’s connection with the website by selling counterfeit products).\r\n\r\n\r\nRESPONDENT:\r\n\r\nNO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.\r\n \r\nPanel Request for Additional Information\r\n\r\non 15 October 2018, the Panel communicated this request to the parties. \r\n\r\n\"This is a request from the Panel for additional information from the parties under rule 12 of the UDRP rules. The Complaint alleges that the goods offered at the website to which the disputed domain name resolves, are counterfeit goods and not genuine goods. This is a request for evidence to support that allegation. The Respondent is also invited to submit evidence on this issue. Both parties are also asked to make submissions on the applicability to this case of the OKI Data principles from WIPO Case No. D2001-0903. The further information requested is to be provided by noon on Friday, 19 October 2018, GMT. \"\r\n\r\nThe Complainant responded as follows:\r\n\r\n In accordance to the applicability to this case of the OKI Data principles from WIPO Case No. D2001-0903, the Complainant contends that the “The site must accurately disclose the registrant's relationship with the trademark owner”.\r\n\r\nRegarding the allegation of counterfeit goods and not genuine goods, the Respondent uses the trademarks, names, products and images of Complainant’s products without authorization. \r\n\r\nThe Complainant offers its products through authorized sales or service agent of trademarked goods. The Respondent is not listed. On those facts, any products sold by another seller (non-listed by the Complainant) are considered as unauthorized and therefore not genuine goods. Moreover, the Respondent has not provided any response to prove his good faith and the Complainant contends that the Respondent has engaged in a pattern of such conduct in other decisions:\r\n\r\nWIPO case n° D2018-1672 Dansko, LLC v. Congj Buxar “Complainant has received several consumer correspondences about DANSKOSHOP.COM whereby consumers have asked if the DANSKOSHOP.COM website is indeed affiliated with Complainant, and complaining that they never received the footwear they purchased from the DANSKOSHOP.COM website” Respondent has used the DANSKOSHOP.COM domain name to create a website that seeks to misdirect potential consumers from Complainant’s legitimate website”; and “[t]he website associated with the DANSKOSHOP.COM domain looks virtually identical to Complainant’s website, including the use of Complainant's DANSKO® marks, the names and images of Complainant’s products, as well as the overall ‘look and feel’ of Complainant’s copyright protected website.” Complainant does not specify which, if any, of the enumerated factors is applicable here. However, Complainant’s allegations that Respondent created a website that falsely appears to be a website for or associated with Complainant, where Respondent fails to deliver promised merchandise, appears to be consistent with paragraph 4(b)(iv) of the Policy. Indeed, numerous previous UDRP panels have found bad faith under such circumstances. See, e.g., Medac Gesellschaft für klinische Spezialpräparate mbH v. Cancero Pharma, Cancer Foundation & CanceroPharma, WIPO Case No. D2016-1129 (finding bad faith where complainant alleged that respondent “is using the disputed domain name to sell products from the Complainant and its competitors, and a test purchase showed that the Respondent, after having received payment, failed to deliver the order”).\r\n\r\nWIPO case n° D2018-1007 Seafolly IP Co. Pty Ltd Seafolly Pty Limited of Seafolly v. Congj Buxar \r\n\r\nThe disputed domain name resolves to a website which purpose is selling swimwear and related accessories by reference to the SEAFOLLY trademark, without the consent of Complainants. Then the disputed domain name is only used to divert Internet users to another site selling swimwear and related accessories under or by reference to the SEAFOLLY trademark, and other competing products. On the basis of the above, the Panel finds that Respondent registered the disputed domain name to attract Internet users, for commercial gain, by creating a likelihood of confusion with Complainants' trademarks and domain names (Paragraph 4(b)(iv) of the Policy). WIPO case n° D2017-2558, Na’ale Naot Agricultural Cooperative Society for Business Ltd. Yaleet, Inc. v. Congj Buxar \"Respondent's website linked to the Disputed Domain Name offers the sale of Complainants' footwear under NAOT trademarks. Respondent's website lifted copyrighted images of Complainants' NAOT products, increasing the likelihood that Internet users would be confused into believing Respondent's website emanated from or was sponsored or authorized by Complainants. Complainants received complaints from Internet users who had attempted to purchase Complainants' NAOT footwear and had not received their orders, indicating that the users had indeed been attracted to Respondent's website by the confusion Respondent created with Complainants' mark, and that Respondent was not acting as a legitimate reseller of Complainants' footwear.\"\r\n\r\nFORUM case n° 1761720 Zimmermann Wear Pty Ltd v. Congj Buxar \r\n\r\n“Complainant asserts, without objection from Respondent, that Respondent uses the domain name to deceive Internet users who inadvertently land on the website resolving from the domain name into believing that the competing products displayed there are associated with Complainant, and that Respondent seeks to profit commercially from the operation of that resolving website […] Respondent’s registration and use of the disputed domain name, which we have found to be confusingly similar to Complainant’s ZIMMERMANN trademark and service mark, is an attempt by Respondent to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s affiliation with the domain name. Under Policy ¶ 4(b)(iv), this further demonstrates Respondent’s bad faith in registering and using the domain name. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015): The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”\r\n", "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 not, 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 not, 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.", "decision": "Rejected", "panelists": [ "Victoria McEvedy" ], "date_of_panel_decision": "2018-10-18 00:00:00", "informal_english_translation": "The Complainant relies on its two international marks, numbers 451949 and 697119 of 1980 and 1998 for the word marks Rochas Paris and Rochas in classes 3,9,14, 18, 21,24, 25, 34 and 14,18 and 25 respectively. Together these are registered in over 50 countries. It also relies on its EU Trade Mark (or CTM) for a figurative mark with the word element, Rochas, in class 3 of 2013, no. 2863249. It relies on these registered regional and international rights and also has various national marks and rights arising from use. Its main website is at www.Rochas.com.", "decision_domains": { "ROCHASSHOP.COM": "REJECTED" }, "panelist": null, "panellists_text": null }