WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thierry Mugler v. Carmen Jimenez/Domain Discreet Privacy Service
Case No. D2014-0602
1. The Parties
The Complainant is Thierry Mugler of Paris, France, represented by Tmark Conseils, France.
The Respondent is Carmen Jimenez of Waukegan, Illinois, United States of America; Domain Discreet Privacy Service of Jacksonville, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <thierrrymugler.com> (the “Domain Name”) is registered with Register.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2014. On April 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar informed the Center that “the current domain name is in an expiration status and needs to be renewed by the Respondent or the Complainant before Register.com can proceed with the UDRP process”. On April 15, 2014, the Center informed the parties that the Complainant or the Respondent should contact the Registrar directly regarding renewal of the Domain Name. On April 22, 2014, the Complainant informed the Center that it had paid for the renewal fee of the Domain Name. On April 23, 2014, the Registrar confirmed that the Domain Name had been renewed by the Complainant successfully.
On April 24, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on the same day 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 April 24, 2014.
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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2014.
The Center appointed Karen Fong as the sole panelist in this matter on May 26, 2014. 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, a French company, is one of the leading perfume and fashion houses. It owns and trades under the well known brand THIERRY MUGLER (the “Trade Mark”) which is also the company name of the Complainant. The Complainant launched its first Thierry Mugler perfume called Angel in 1992. This perfume is still a worldwide best seller and many different celebrities have promoted it since its launch including Jerry Hall, Naomi Watts and Eva Mendes. The Complainant owns trade mark registrations for the THIERRY MUGLER signature mark in many different territories including France, the European Union, United States of America, China and Australia, the earliest submitted in evidence dates back to 1992. The Complainant also owns the domain name <mugler.com> which was registered on February 16, 2000.
The Domain Name was registered on March 15, 2013. It was connected to a pay per click website with sponsored links to other websites selling competitor’s perfumes such as “www.cosmeticscart.com”. At the time of writing the decision, the Domain Name appears not to be active.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Name is made up of a misspelling of the Trade Mark. The first name “Thierry” in Thierry Mugler has been misspelt with an extra “r” – Thierrry Mugler. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is typically permissible for the Panel to ignore the generic domain suffix. Further, the addition of the extra letter “r” does not negate the confusing similarity encouraged by the Respondent’s complete integration of the THIERRY MUGLER Trade Mark in the Domain Name. The deliberate misspelling of a trade mark or typosquatting have been found in many previous UDRP decisions to be confusingly similar to the trade mark in question.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant alleges that it is not affiliated in any manner with the Respondent and has not authorized the Respondent to use its well known THIERRY MUGLER Trade Mark in the Domain Name or any other manner. The Respondent is not making a noncommercial fair use of the Domain Name as it is providing Internet users sponsored links to competitors’ websites.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Trade Mark when it registered the Domain Name. The Complainant has provided sufficient evidence that the registration of the Domain Name post dates the registration and extensive use of the Trade Mark. The misspelling of the Trade Mark is clearly deliberate as the extra “r” in the name “Thierrry” is not the usual or common spelling of the name. It is well-settled by various UDRP panel decisions that the practice of typosquatting is, by itself, evidence of the bad faith registration of a domain name.
Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Panel also finds that the actual use of the Domain Name was in bad faith. The website that was connected to the Domain Name was set up to deliberately mislead Internet users that it is connected to, authorised by or affiliated to the Complainant.
From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the website connected to the Domain Name is somehow authorised or endorsed by the Complainant.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) 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 Domain Name <thierrrymugler.com> be transferred to the Complainant.
Date: June 3, 2014