WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thierry Lasry, Société Maudal v. Nancy Lewis
Case No. D2013-1611
1. The Parties
Complainants are Thierry Lasry and Société Maudal of Boulogne Billancourt, France, represented by Jean-Marc Felzenszwalbe, France.
Respondent is Nancy Lewis of China.
2. The Domain Name and Registrar
The disputed domain name <thierrylasryeyewear.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2013. On September 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 9, 2013.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on October 14, 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
Complainant Thierry Lasry is an eyewear designer from France, who sells optical and sunglasses under his name/trademark in different countries.
Complainant Thierry Lasry owns the following trademark registrations (as per Annexes 4-6 of the Complaint):
- French trademark registration No. 3416214, for THIERRY LASRY, granted on March 14, 2006;
- European trademark registration No. 9666108, for THIERRY LASRY, granted on March 15, 2011;
- International registration No. 1083113, for THIERRY LASRY, granted on May 5, 2011.
Complainant Société Maudal is the owner of the domain name <thierrylasry.com> (as per Annex 3 of the Complaint). The THIERRY LASRY collections are presented on the website “www.thierrylasry.com”.
The disputed domain name <thierrylasryeyewear.com> was registered on March 14, 2013.
5. Parties’ Contentions
Complainants allege that Thierry Lasry is a famous eyewear designer, and that his products are sold under his name/trademark, THIERRY LASRY worldwide, with his collections presented on the website “www.thierrylasry.com”.
Complainants state that Respondent is using the name/trademark THIERRY LASRY without authorization and that the disputed domain name <thierrylasryeyewear.com> creates a false idea of authenticity, making consumers believe that such website is an authorized retailer of Complainants glasses; but Respondent is in fact only selling counterfeit glasses presented falsely as Complainants’ authentic eyewear, through its website at the disputed domain name <thierrylasryeyewear.com>.
Complainants argue that the disputed domain name <thierrylasryeyewear.com> has no commercial relation with Thierry Lasry or Société Maudal.
Complainants further claims that the disputed domain name is confusingly similar to its trademarks and name THIERRY LASRY, and that Respondent has no rights or legitimate interests in the disputed domain name.
Complainants also allege that no trading agreement has ever been discussed between Respondent and Complainants.
Complainants also claims that Respondent has registered and is using the disputed domain name in bad faith since it is benefitting from misleading the public in order to sell counterfeit products.
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
In order to succeed in a UDRP proceeding, Complainants must prove each of the following requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
These three elements are considered hereinafter.
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
A. Identical or Confusingly Similar
Complainants have duly proved the first element under paragraph 4(a) of the Policy by evidencing that Complainant Thierry Lasry it is the owner of several trademark registrations for THIERRY LASRY, worldwide and that such trademark is entirely incorporated in the disputed domain name <thierrylasryeyewear.com>.
The Panel therefore finds that the disputed domain name is confusingly similar to Complainants’ trademark THIERRY LASRY.
B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on UDRP Questions, Second Edition (“WIPO Overview, 2.0”) as follows: “[A] complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If Respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If Respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on Complainant.”
In this case, Complainants have provided sufficient prima facie proof of “no rights or legitimate interests”, so the burden of production shifts to Respondent. As Respondent has not filed any response, that burden has not been discharged, and the Panel has considered Complainant’s prima facie proof to be sufficient evidence to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <thierrylasryeyewear.com>.
The Panel recognizes that Respondent is not commonly known as “Thierry Lasry” or “Thierry Lasry Eyewear” and does not own any trademark bearing the word “Thierry Lasry”, and since Respondent has not chosen to present any argument in this matter or attempted to prove any right or legitimate interest, it is apparent that its only intention when registering and using the disputed domain name was to attract for commercial gain Internet users to its website, by creating a false association with Complainants’ name and trademark.
In view of the above, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the disputed domain name, Respondent having intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.”.
The Panel finds it is highly unlikely that Respondent had no knowledge of Complainants’ company and legal rights in the trademark THIERRY LASRY at the time of registration of the disputed domain name, considering that the disputed domain name includes Complainants’ trademark and the word “eyewear”, and is used to offer for sale purportedly counterfeit THIERRY LASRY products.
The Panel believes that paragraph 4(b)(iv) of the Policy states clearly what has occurred in this administrative dispute, and agrees with Complainants that Respondent is using the disputed domain name to intentionally attempt to attract Internet users to the website, by creating a likelihood of confusion with Complainants’ trademark. The Panel notes in this regard that the website associated with the disputed domain name appears to offer for sale purportedly counterfeit THIERRY LASRY products, and furthermore it offers products of Complainants’ competitors. Also, the website at the disputed domain name does not disclose Respondent’s relationship with the trademark owner. As such, the Panel cannot see in this case any good faith of Respondent when registering and using the disputed domain name.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
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 <thierrylasryeyewear.com> be transferred to Complainant.
Gabriel F. Leonardos
Date: October 28, 2013