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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ann Demeulemeester v. Transure Enterprise Ltd / Above.com Domain Privacy

Case No. D2013-0507

1. The Parties

The Complainant is Ann Demeulemeester of Kessel-Nijlen, Belgium, represented by Olswang LLP, Belgium.

The Respondent is Transure Enterprise Ltd / Above.com Domain Privacy of Tortola, Virgin Islands, Oversea Territory of United Kingdom of Great Britain and Northern Ireland, and Beaumaris, VIC, Australia, respectively.

2. The Domain Name and Registrar

The disputed domain name <anndemeulemeester.net> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2013. On March 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 14, 2013, 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 March 14, 2013 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 March 14, 2013 and supplemental filings on March 14 and 18, 2013.

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 March 19, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 9, 2013.

The Center appointed Brigitte Joppich as the sole panelist in this matter on April 16, 2013. 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 a Belgian fashion designer selling clothing, boots etc. under her own name all over the world, including in her own shops in Antwerp (Belgium), Tokyo, Hong Kong (China) and Seoul. The Complainant is one of the "Antwerp Six", a fashion collective of six influential avant-garde fashion designers.

The Complainant is registered owner of the International trademark registration no. 547416 ANN DEMEULEMEESTER and the Community trademark registration no. 923532 ANN DEMEULEMEESTER, which are registered in connection with goods in classes 3, 15, 18 and 25 (hereinafter referred to as the ANN DEMEULEMEESTER Marks).

The disputed domain name was registered on June 1, 2012 and is used in connection with a parking website offering inter alia products of the Complainant’s competitors for sale.

5. Parties’ Contentions

A. Complainant

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 disputed domain name is identical to the ANN DEMEULEMEESTER Marks as it consists of the words "Ann" and "Demeulemeester" and as the top level domain is not to be taken into consideration when considering the identity or confusing similarity of a domain name with a trademark. Furthermore, the Complainant states that she has rights in her well-known personal name under the UDRP as well.

(2) The Respondent has no rights or legitimate interests in the disputed domain name as it does not have any identical or similar registered trademark, nor is it a reseller of the Complainant's goods.

(3) The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant argues that the Respondent’s use of the disputed domain name is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy. She states that the choice of the mark ANN DEMEULEMEESTER in the disputed domain name is no coincidence but meant to be a tool to generate revenue from click-through referrals. Furthermore, the Complainant argues that the fact that the Complainant owns registered rights and has worldwide reputation in the words “Ann Demeulemeester” and the fact that the Respondent has no rights or interests in the disputed domain name lead to the conclusion that it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain name. The Complainant further submits that it is not possible either to conceive a plausible situation in which the Respondent would have been unaware of this fact at the time of registration and thus that the disputed domain name has been registered and is being used by the Respondent in bad faith. Finally, the Complainant states that the Respondent’s offer to sell the disputed domain name for an amount of USD 600.00 is further evidence of bad faith registration and use of the disputed domain name under paragraph 4(b)(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The first point to be dealt with is the admissibility of the Complainant’s supplemental submissions which refer to an email communication from the Respondent in reply to the Complaint. The Rules do not allow the parties to file supplemental submissions on their own volition, and paragraph 12 of the Rules provides that a panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admission of additional arguments or evidence. Grounds justifying new submissions are generally those regarding the existence of new pertinent facts that did not arise until after the complaint was filed. The Complainant refers to the fact that she received the Respondent’s offer for sale after having filed the Complaint and argues that such offer to transfer the disputed domain name against payment in the amount of USD 600.00 is further evidence of bad faith. Under these circumstances, the Panel elects to accept the Complainant's supplemental submission and has relied on it in reaching this Decision.

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 a trademark or service mark in which the Complainant has rights; 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 fully incorporates the Complainant’s ANN DEMEULEMEESTER Marks and is identical to such marks. It is 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 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 domain name, it is the consensus view among UDRP 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 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 Panel cannot find any rights or legitimate interests of the Respondent either. In particular, the Respondent’s use of the disputed domain name in connection with a parking website with links to products of the Complainant’s competitors is no bona fide use under 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 and thus in bad faith under paragraph 4(a)(iii) of the Policy. The mark ANN DEMEULEMEESTER is highly distinctive and, to the Panel’s best knowledge, does not correspond to any word in the Respondent’s first language English. It is therefore almost inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant.

As to bad faith use, by fully incorporating the ANN DEMEULEMEESTER Marks 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 to its own for the purpose of earning click-through revenues from Internet users searching 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 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). The finding of bad faith is supported by the fact that the Respondent offered to transfer the disputed domain name to the Complainant against payment of USD 600.00, which is in all likelihood in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name.

The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith and consequently finds, that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

The Panel wishes to note that this case is on the borderline with regard to the very limited facts and evidence made available by the Complainant, but considering all of the information in the case file, the Panel is satisfied that the Complainant has met the requirements of paragraph 4(a) of the Policy.

7. Decision

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 <anndemeulemeester.net> be transferred to the Complainant.

Brigitte Joppich
Sole Panelist
Date: April 26, 2013

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