WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mariline Fiori p/k/a Garance Doré v. Private Registrations Aktien Gesellschaft
Case No. D2012-1620
1. The Parties
The Complainant is Mariline Fiori p/k/a Garance Doré of New York, United States of America, represented by D H Cavanaugh Associates, United States of America.
The Respondent is Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and The Grenadines.
2. The Domain Name and Registrar
The disputed domain name <garancedore.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2012. On August 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 17, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 23, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 28, 2012.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 31, 2012. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2012.
The Center appointed Brigitte Joppich as the sole panelist in this matter on September 28, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
4. Factual Background
The Complainant is an international fashion photographer, illustrator, writer and blogger. The Complainant has been engaged for over six years in photographing and commenting on international fashion trends, has been working for major fashion magazines and has been consulting on fashion trends. The Complainant’s fashion photographs, illustrations and writings are accessed by many thousands of people around the world through her daily blog available at “www.garancedore.fr”.
The Complainant is registered owner of the United States trademark registration no. 4,124,451 GARANCE DORÉ, applied for on April 12, 2011 and registered on April 10, 2012 in connection with services in classes 38 and 41 (hereinafter referred to as the GARANCE DORÉ Mark). The trademark claims first use in commerce on June 1, 2006.
The disputed domain name was first registered on June 1, 2007 and is used to forward Internet users to the website available at “www.searchremagnified.com/?dn=garancedore.com”, which provides links to ads for third parties’ websites, including websites related to “Fashion Blog” and other fashion related topics.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The Complainant states that the disputed domain name is identical and confusingly similar to the GARANCE DORÉ Mark because it incorporates the mark in its entirety.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name, as it is not commonly known by the disputed domain name, as it had never had any contact with the Complainant and as it has not acquired any rights in the disputed domain name.
(3) With regard to bad faith, the Complainant states that the GARANCE DORÉ Mark is a unique name and identifier that is internationally recognized as identifying the Complainant and that the Respondent trades on and profits from the GARANCE DORÉ Mark’s reputation and goodwill by misdirecting the public from the disputed domain name to its own website, thereby causing confusion among Internet users who seek the Complainant’s business and services by entering its well-known mark into a browser or search engine such as Google, which clearly constitutes bad faith under paragraph 4(b)(iv) of the Policy, stating that using the disputed domain name to divert Internet users shall be evidence of the registration and use of a domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name incorporates the Complainant’s GARANCE DORÉ Mark by merely omitting the acute accent above the final letter “e” and is therefore confusingly similar to such mark. Firstly, it is clear that the omission of an accent does not significantly affect the overall impression of the GARANCE DORÉ Mark and therefore does not have any bearing as regards the question of confusing similarity (cf. L’Oréal, Laboratoire Garnier et Compagnie, Lancôme Parfums et Beauté et Compagnie v. Zhao Ke, Zeng Wei, Zhu Tao, Yang Yong, Ma Yun, Ye Genrong, Ye Li, ChinaDNS Inc., DomainJet, Inc., Hao Domains Services, WIPO Case No. D2011-1608; L’Oréal, Lancôme Parfums Et Beauté & Cie v. Jack Yang, WIPO Case No. D2011-1627; Kelemata S.p.A. v. Mr. Hugo Bazzo, WIPO Case No. D2003-0594). Secondly, it is also well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, the Respondent’s use of the disputed domain name was not bona fide under the Policy. The Respondent uses the disputed domain name in connection with a domain parking website with links to third parties’ fashion related advertisings. Such use does not constitute rights or legitimate interests under paragraph 4(c)(i) of the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 respondent’s documented out of pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, 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 its website or location.
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant. The name “Garance Doré” is highly distinctive and was used by the Complainant on the Internet for exactly one year prior to the registration of the disputed domain name. It is therefore inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant. The fact that the Complainant’s registered and unregistered rights in GARANCE DORÉ might have been established only after the registration of the disputed domain name does not per se hinder a finding of bad faith registration. It is well established that in certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found (cf. paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”); 537397 Ontario Inc. operating as Tech Sales Co. v. EXAIR Corporation, WIPO Case No. D2009-0567; General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598; Moroccan Financial Board v. Abdullah Riahi, WIPO Case No. D2011-0751; Mediobanca Banca di Credito Finanziario S.p.A. v. DomainsByProxy.com/ Alpha Systems, WIPO Case No. D2012-0141).
As to bad faith use, by incorporating the GARANCE DORÉ Mark into the disputed domain name and by using the website at such domain name as a parking website providing links to third parties, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many UDRP decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (cf. L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, with further references).
Consequently, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <garancedore.com> be transferred to the Complainant.
Dated: October 11, 2012