WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
K-Swiss Inc. v. Cedric Pradines
Case No. D2015-0221
1. The Parties
Complainant is K-Swiss Inc. of Westlake Village, California, United States of America, represented by Cabinet Germain & Maureau, France.
Respondent is Cedric Pradines of Toulouse, France.
2. The Domain Name and Registrar
The disputed domain name <palladium.shoes> is registered with Instra Corporation Pty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2015. On February 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 12, 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 sent an email communication to Complainant on February 17, 2015 requesting confirmation by Complainant of the sending of a copy of the Complaint to Respondent. Complainant sent an email attaching the Complaint and the corresponding Annexes to Respondent on February 17, 2015.
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 March 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 23, 2015.
The Center appointed Mrs. Ustun Ekdial as the sole panelist in this matter on April 1, 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
Palladium is an American company founded in 1920 to make tires for the fledgling aviation industry. Although not entirely clear from the Complaint, the Palladium brand seems to be owned by Complainant. After World War II, it started producing footwear. Complainant’s products (boots and shoes) are now sold across the World, through Palladium flagship stores in New York, Amsterdam, London, Hong Kong, China, Panama City, and Johannesburg, etc.
According to the documentary evidence and contentions submitted, Complainant owns a number of trademark registrations for the trademark PALLADIUM for shoes, clothing and headgear including Madrid System Trademark Registrations Nos. 197760, registered on January 12, 1957; 565742, registered on January 2, 1991; and French Trademark Registration No. 415, registered on June 16, 1956. In addition, Complainant is the owner of a number of domain names containing the registered trademark namely: <palladiumboots.com> and <palladiumboots.nl>.
The disputed domain name was registered on March 6, 2014.
5. Parties’ Contentions
Complainant argues that the disputed domain name is confusingly similar to the trademark PALLADIUM because (i) it incorporates the trademark PALLADIUM and the common word “shoes” which is internationally understood in the fashion field, and (ii) if a domain name incorporates a distinctive trademark it is confusingly similar to that trademark.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent has no association or affiliation with Complainant and has not received any authorization to use the trademark PALLADIUM in a domain name or in any other matter; (ii) Respondent is not commonly known by the disputed domain name; (iii) Respondent registered the disputed domain name after Complainant established its trademark rights; (iv) Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; (v) Respondent is intentionally using the disputed domain name to attract consumers to Respondent’s website for commercial gain.
Finally, Complainant contends that the disputed domain name has been registered and is being used in bad faith by Respondent because: Complainant also alleges that Respondent’s purpose when registering the disputed domain name was to offer the domain for sale, at a price substantially greater than what he paid for it.
Complainant also highlights that the fact that the disputed domain name is not currently associated with an active web site does not exclude bad faith registration and use. The disputed domain name points towards a parking page displaying sponsored links which are related to shoes and in particular to Palladium shoes and boots.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, Complainant bears the burden of showing:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has 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.
A. Identical or Confusingly Similar
Complainant holds several marks for PALLADIUM. These trademarks are registered for various goods especially for footwear in many countries of the world. The trademarks put forward by Complainant are sufficient to ground the Complaint, at least under the first UDRP element, i.e. the issue of identity or confusing similarity.
The Panel concludes that the disputed domain name is confusingly similar to the PALLADIUM marks. The addition of the top-level domain suffix “.shoes” does not detract from the confusingly similar nature of the disputed domain name, given the nature of such top-level domain suffix, and the nature of Complainant’s products.
Therefore, the Panel finds that the disputed domain name <palladium.shoes> is confusingly similar to the trademark PALLADIUM and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests. Complainant showed, inter alia, that Respondent has neither a license nor any other permission to use the disputed domain name. Respondent has failed to demonstrate such rights or legitimate interests. Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the disputed domain name. It is clear that Respondent has not demonstrated any bona fide offering of goods or services by its use of the disputed domain name and has not rebutted Complainant’s prima facie case. Nor has Respondent shown that it has been commonly known by the disputed domain name.
The Panel further finds that given the use made of the disputed domain name, when Respondent registered the disputed domain name it must have known the PALLADIUM trademark of Complainant. It registered the disputed domain name because it would be recognized as such.
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
The Panel considers it an inescapable conclusion from the undisputed facts and circumstances reflected in the record that Respondent must have known of and had in mind Complainant and its trademark when registering the disputed domain name. See generally Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant, the very use of the domain name by a registrant with no connection to the complainant suggests “opportunistic bad faith”. See also Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453. In view of the foregoing, the Panel can ascribe no motive for Respondent’s registration and use of the disputed domain name as reflected in the record except to trade on the goodwill associated with Complainant.
In addition: the offer to sell the disputed domain name is further evidence of bad faith.
It appears from the screenshots of the underlying webpage submitted within the Complaint that the disputed domain name resolves to website which provide sponsored pay-per-click links to websites associated with shoes products.
The Panel is persuaded that Respondent’s registration and use of the disputed domain name for re-directing Internet users, particularly customers and potential customers of Complainant, to companies which directly compete with Complainant, constitutes bad faith registration and use. Prior UDRP decisions also support this conclusion. See Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”); Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (“Respondent’s registration and continued use of the contested domain name for re-directing Internet users, i.e., particularly customers and potential customers of the Complainant from the Complainant’s web site to the web site of Bestnet, Inc., a company which directly competes with the Complainant, constitutes bad faith registration and use.”).
The only reason for its registration must have been with bad faith intent to use it to exploit Complainant’s reputation for commercial gain. As demonstrated above, Respondent has used the disputed domain name for precisely that purpose (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).
Therefore, in the view of cumulative circumstances, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to the Policy, paragraph 4(a)(iii).
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, <palladium.shoes> be transferred to Complainant.
Dilek Ustun Ekdial
Date: April 15, 2015