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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Salomon S.A.S. v. Juan Carlos Otero Varas

Case No. D2014-2213

1. The Parties

The Complainant is Salomon S.A.S. of Metz-Tessy, France, represented by LegalBase (Pvt) Limited, Sri Lanka.

The Respondent is Juan Carlos Otero Varas of Madrid, Spain.

2. The Domain Name and Registrar

The disputed domain name <salomonshoesoutlets.com> (the “Disputed Domain Name”) is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2014. On December 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 22, 2014, the Registrar transmitted by email to the Center its verification response confirming that Juan Carlos Otero Varas is listed as the registrant and 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 January 6, 2015, 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 amendment to the Complaint on January 6, 2015, substituting the name of Juan Carlos Otero Aras as the Respondent.

The Center verified that 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 January 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2015.

The Center appointed Michael D. Cover as the sole panelist in this matter on February 11, 2015. 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 corporation organized under the laws of France. The Complainant was founded in 1947. The Complainant is the proprietor of the trademark SALOMON globally and uses the trademark in relation to ski equipment and accessories. The turnover of the group of which the Complainant is part was EUR 650 million in 2012. The Complainant has in addition spent and continues to spend substantial sums on advertising and promoting its products under the trademark SALOMON. The Complainant has registered more than 320 domain names consisting of or incorporating the trademark SALOMON, which points to the main website of the Complainant at “www.salomon.com”.

The Disputed Domain Name was registered on January 23, 2014. It resolves to an online shop which offers for sale various products which have attached to them the name “Salomon”. The Complainant sent a cease and desist letter to the Respondent by email on February 3, 2014. There was no response.

The Respondent did not file a Response to the Complaint in this UDRP proceeding. The Disputed Domain Name was registered on January 24, 2014, and would otherwise been due to expire during the course of this UDRP proceeding and was accordingly renewed by the Complainant,

5. Parties’ Contentions

A. Complainant

The Complainant submits that the Disputed Domain Name is an infringement of its trademark SALOMON in which it has rights. The Complainant notes that it sent a cease and desist letter by email to the address provide on the Whois database in respect of the Disputed Domain Name but there was no response.

The Complainant further submits that the Disputed Domain Name is confusingly similar to its SALOMON trademarks. It says that the addition of the non-distinctive and minor elements “shoesoutlets” and “.com” do not alter that fact and states that this is supported by the decisions of numerous UDRP panels. It notes that the Disputed Domain Name contains the trademark SALOMON in its entirety.

The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant states that its trademark SALOMON is well-known and that the selection of the name “Salomon” as the main part of the Disputed Domain Name cannot be considered to be bona fide. It also notes that the Respondent has not been authorized or licensed to use the Complainant’s trademark SALOMON.

The Complainant maintains that the Disputed Domain Name has been registered and is being used in bad faith. It states that the Respondent must have been aware of the Complainant’s trademark SALOMON, which is well known. It notes again that the Complainant’s trademark is incorporated in its entirety in the Disputed Domain Name and that “Salomon” is not a descriptive or generic term. The Complainant submits that, by the use of the website to which the Disputed Domain Name resolves, the Respondent is attempting to attract consumers to that website by seeking to mislead consumers into believing that the website was operated or authorized by the Complainant.

The Complainant requests that the Panel decide that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant is required to demonstrate, on the balance of probabilities, that the Disputed Domain Name is identical or confusingly similar to Complainant’s trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Disputed Domain Name is confusingly similar to the Complainant’s trademark SALOMON in which the Complainant has rights. The Complainant has extensive registered rights in its trademark and the Panel also finds on the balance of probabilities that the Complainant has common law rights in its trademark. The Panel accepts the evidence of the Complainant that its trademark SALOMON has been in use for many years.

The Disputed Domain Name incorporates the Complainant’s trademark in its entirety and this with the addition of the non-distinctive elements “shoesoutlets” and “.com”. The Panel finds that the addition of these non-distinctive elements does not alter the fact that the Complainant’s trademark is the dominant element of the Disputed Domain Name and thus, the Disputed Domain Name is confusingly similar to the Complainant’s trademark.

Accordingly, the first element of the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has demonstrated that the Respondent has not been authorized or licensed to use the Complainant’s trademark SALOMON.

There is no evidence to suggest that that the Respondent has, before notice of the dispute, made demonstrable preparations to use the Dispute Domain Name in connection with a bona fide offering of goods or services. There is also no evidence to suggest that the Respondent has been commonly known by the Disputed Domain Name or that the Respondent is or has been making legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain misleadingly to divert consumers or tarnish the Complainant’s trademark. The evidence in fact points strongly in the other direction, with the Disputed

Domain Name being used for a website which seeks to create a false impression that the Respondent is affiliated with or endorsed by the Complainant to attract consumers by the use of the Disputed Domain Name, which incorporates the Complainant’s widely known trademark SALOMON in its entirety.

Accordingly, the second element of the Policy is satisfied.

C. Registered and Used in Bad Faith

The Panel also accepts that the Respondent has registered and is using the Disputed Domain Name in bad

faith. The Complainant’s trademark is widely known and it is a reasonable inference for the Panel to make that the Respondent was not unaware of the Complainant’s trademark when registering the Disputed Domain Name. The Panel finds that, by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with Complainant’s trademark SALOMON as to the source, sponsorship or affiliation of that website.

Accordingly, the third element of the Policy is satisfied.

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 <salomonshoesoutlets.com> be transferred to the Complainant.

Michael D. Cover
Sole Panelist
Date: February 27, 2015

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