WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eleven v. Howword Flower
Case No. D2013-1423
1. The Parties
The Complainant is Eleven of Paris, France, represented by Cabinet Bouchara, France.
The Respondent is Howword Flower of New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <elevenparisfr.com> (“the Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2013. On August 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 12, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on August 14, 2013.
On August 16, 2013, the Center notified the Parties that the Complaint was filed in French but that, according to the information received from the Registrar, the language of the Registration Agreement is English. Accordingly, the Complainant submitted on August 19, 2013 a Complaint translated into English.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed three amended Complaints on August 19, 20 and 28, 2013.
The Center verified that the Complaint together with the amendment to the Complaint and amended Complaints 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and amended Complaints, and the proceedings commenced on August 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2013. On August 14, 2013 and on August 30, 2013, a third party which had offered webhosting services in connection with the Disputed Domain Name sent email communications to the Center (which are of no relevance in this dispute).
The Center appointed Jacques de Werra as the sole panelist in this matter on October 1, 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 the Rules, paragraph 7.
4. Factual Background
The Complainant is a French company doing business in the fashion industry. It is the owner of various trademarks, including a word and design trademark for the terms “Eleven Paris”, which was registered in France under No 3837770 on June 9, 2011 for various goods in classes 3, 14, 18 and 25 (“the Trademark”).
The Complainant operates a website at “www.elevenparis.com” on which it offers for sale its clothing products, shoes and fashion accessories.
The Disputed Domain Name was registered on July 16, 2013. It resolves to a website which closely resembles the website operated by the Complainant on which identical products are offered for sale under the Trademark or other trademarks owned by the Complainant.
The Complainant sent a cease and desist letter to the Respondent on August 9, 2013 to which the Respondent did not answer. The Complainant further had exchanges of communications with various hosting companies (which are of no relevance in this dispute).
5. Parties’ Contentions
The Complainant claims that the Disputed Domain Name reproduces the Trademark, and that figurative elements of other Complainant’s trademarks are reproduced on the website associated with the Disputed Domain Name, whereby the Disputed Domain Name is a reproduction or at least an imitation of the Trademark because only two letters “fr” are added at the end of the denomination, which will be understood as the French country code ending of domain names and therefore will not modify the distinctiveness of the Trademark.
The Respondent must further be considered as having no rights or legitimate interests in respect of the Disputed Domain Name because the use is made in full knowledge of the Complainant’s rights in the Trademark and in the obvious intention to divert its consumers, whereby the Respondent does not own any trademark.
The Disputed Domain Name must finally be considered as having been registered and used in bad faith by the Respondent. By using the Disputed Domain Name, the Respondent has conscientiously tried to divert, in a lucrative purpose, the Internet users by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location and of products on the Respondent’s web site or location. Indeed, the owner of the Disputed Domain Name markets counterfeited products of the Complainant and imitates and reproduces its company name, its domain name and its products.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the complainant proves each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in the Trademark.
A comparison between the Disputed Domain Name and the Trademark owned by the Complainant shows that the Disputed Domain Name is clearly confusingly similar to it to the extent that it reproduces the entirety of the Trademark. In this respect, the addition of the descriptive letters “fr” in the final part of the Disputed Domain Name does not affect this finding of confusing similarity. Quite to the contrary, the addition of the letters “fr” (which is the country code top-level domain for France) rather increases the risk of confusion with the Trademark of the Complainant and with the Complainant itself, given that it directly refers to the country in which the Complainant is based (whereby this connection to France is already reflected in the Trademark itself given that it contains the term “Paris”).
As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity between the Trademark and the Disputed Domain Name, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Name which fully integrates the Trademark owned by the Complainant in a way which can only be explained by reference to the Complainant’s products and business activities. The Panel accepts that the addition of the letters “fr” to the Disputed Domain Name further reinforces the intended reference to the Complainant’s products and activities. The Panel also finds that the website associated with the Disputed Domain Name appears to offer for sale counterfeited goods which are identical or closely similar to the original products sold by the Complainant.
The Complainant has also stated without being contradicted that the Respondent has no rights in the Disputed Domain Name and that it has not registered any trademark corresponding to the Disputed Domain Name. The Panel also understands that the Respondent has not been authorized or licensed to use the Complainant’s Trademark and that the Respondent has not been commonly known by the Disputed Domain Name.
The Panel thus accepts the Complainant’s prima facie showing and it was consequently up to the Respondent to come forward with evidence of rights to or legitimate interests in the Disputed Domain Name, which has not been done given the Respondent’s absence of participation in these proceedings.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name;
(ii) circumstances indicating that the Respondent registered the Disputed 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;
(iii) circumstances indicating that the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent intentionally is using the Disputed Domain Name in an attempt 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 examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
In this case, the Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the Trademark is distinctively identifying the Complainant and the Complainant’s products so that the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to the Trademark owned by the Complainant. In addition, the Respondent’s use of the Disputed Domain Name for selling goods under the Trademark without authorization from the Complainant on the website associated with the Disputed Domain Name also establishes the Respondent’s bad faith use of the Disputed Domain Name.
On this basis, the Panel finds that the Respondent registered and uses the Disputed Domain Name in bad faith pursuant to paragraph 4(b)(iv) of the Policy, thus the condition of paragraph 4(a) (iii) of the Policy is met.
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 <elevenparisfr.com> be transferred to the Complainant.
Jacques de Werra
Date: October 16, 2013