WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SALOMON S.A.S v. Larionova-Krechetova Anna Aleksandrovna
Case No. D2015-1557
1. The Parties
The Complainant is SALOMON S.A.S of Metz-Tessy, France, represented by Nameshield, France.
The Respondent is Larionova-Krechetova Anna Aleksandrovna of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <salomon.moscow> is registered with REG.RU LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 1, 2015. On September 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 2, 2015, 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 and that the language of the registration agreement is English and Russian
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 and 4, the Center formally notified the Respondent in English and Russian of the Complaint, and the proceedings commenced on September 18, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 13, 2015 default.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on November 20, 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.
In response to an email after the Notification of Respondent default, the Respondent stated in Russian it would transfer the domain name. The Center requested confirmation from the Complainant whether it wished to suspended the proceedings. The Complainant sent the request for suspension of the proceeding on October 13, 2015. On October 15, 2015 the Center notified the Parties of the suspension.
The Complainant sent the Standard Settlement Form to the Center signed only by the Complainant. Despite various communication from the Respondent, it has not submitted the signed Standard Settlement Form as required by paragraph 17(a)(iii) of the Rules. Therefore, the Complainant filled a request for reinstitution of the proceeding.
4. Factual Background
The Complainant is a sports equipment manufacturing company that originates from Annecy, France. It was founded in 1947.
The Complainant is the owner of several SALOMON international trademarks registered and used in many countries, including Russia. It owns inter alia:
- SALOMON international trademark, registered on November 24,1970, registration No. 375807 for goods and services in classes: 9,12,22,25,28,40;
- SALOMON international trademark, registered on July 19, 1984, registration No. 489108 for goods and services in classes: 6,8,9,12,16,18,34;
- SALOMON international trademark, registered on March 22, 1988, registration No. 526127 for goods and services in classes: 1,2,6,7,8,9,12,16,18,25,28,35,36,4;
- SALOMON international trademark, registered on June 8, 2007, registration No. 940740 for goods and services in classes: 35.
The SALOMON trademark is also registered in the Trademark Clearinghouse (TMCH) since July 12, 2013.
The Complainant owns many domain names including its distinctive such as: <salomon.com> and <salomon.ru>.
The disputed domain name <salomon.moscow> was registered on July 13, 2015.
5. Parties' Contentions
Firstly, the Complainant contends that the disputed domain name is identical to its international trademark SALOMON as it includes the trademark in its entirety, without any adjunction of letter or word. The addition of the new generic Top-Level Domain (gTLD) suffix ".moscow" is not sufficient to escape the finding that the disputed domain name is identical to the SALOMON trademark.
Moreover, as the SALOMON trademark is registered in the TMCH, the Respondent was made aware of the Complainant's trademark when she registered the disputed domain name <salomon.moscow>.
In further, Yandex and Google searches on a word "Salomon" provide several results, all of them being linked with the Complainant.
Secondly, according to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name <salomon.moscow> and she is not related in any way to the Complainant. The Complainant does not carry out any activity for, nor has any business relationship with the Respondent. Neither license nor authorization has been granted to the Respondent to make any use of the SALOMON trademark, or apply for registration of the disputed domain name by the Complainant. The Complainant states that there is no indication in the record of the Respondent's use or even demonstrable preparation to use the disputed domain name with legitimate interests.
Thirdly, the Complainant alleges the disputed domain name was registered and is being used in bad faith. According to the Complainant the Respondent has registered the disputed domain name with the sole aim to deprive the Complainant of its trademark rights in SALOMON. Given the distinctiveness and reputation of the Complainant's trademark, together with the TMCH registration, the Complainant contends that the Respondent has registered the disputed domain name <salomon.moscow> with full knowledge of the Complainant's rights in its mark. Moreover, the website in relation to the disputed domain name has been used as a parking page since its registration.
The Complainant maintains that the disputed domain name appears to have been registered in order to prevent the Complainant from reflecting its trademark rights in the domain name, and that the Respondent appears to be engaged in a pattern of such conduct. It also states that the email address of the Respondent is associated with many domain names including well-known trademarks, such as DIOR or CHOPARD for example.
A part from the emails received from the Respondent regarding transfer of the disputed domain name, no official response was received to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(i) the disputed domain name 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 in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the respondent in bad faith.
The requested remedy may only be granted if the above criteria are met.
A. Identical or Confusingly Similar
The Complainant holds many valid SALOMON trademark registrations. The disputed domain name incorporates the Complainant's SALOMON mark in its entirety without any other word or letter. As stated by previous UDRP panels, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696).
In the Panel's opinion, the gTLD suffix ".moscow" does not serve to distinguish the disputed domain name from the Complainant's registered trademarks. It does not change the overall impression of the designation as being connected to the SALOMON trademarks and the Complainant's domain names.
Therefore, the Panel finds that the disputed domain name is identical to the SALOMON trademarks and as a consequence, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant's contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is neither licensed nor authorized by the Complainant to use the SALOMON trademark; (c) there is no evidence that the Respondent has been commonly known by the disputed domain name; (d) the website which the disputed domain name resolve to is the Registrar's parking page.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant's unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Firstly, the disputed domain name was registered in July 2015 and incorporates the SALOMON trademark, which was registered years before and is commonly known worldwide in the sports equipment industry. The worldwide reputation of the Complainant has been recognized in previous UDRP cases (see SALOMON SAS v. Jim McManus, WIPO Case No. D2008-1880). In the Panel's opinion, the notoriety of use of the SALOMON trademark together with the fact that the SALOMON trademark is registered in the TMCH indicate that the Respondent knew or should have known about the Complainant's rights when registering the disputed domain name.
Secondly, the Respondent has registered the disputed domain name but has not put it to any material use, merely having it parked with the Registrar. The Panel considers this lack of material use as though the Respondent is holding the disputed domain name passively. It has long been generally held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark, without obvious use for a legitimate purpose, does not necessarily circumvent a finding that the domain name is in use within the requirements of paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
However, the Panel finds that the Complainant has not proved that the Respondent has engaged in the pattern of conduct which would fit into circumstances named in paragraph 4(b)(ii) of the Policy. According to the WIPO Overview 2.0, paragraph 3.3, the pattern of conduct should involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to trademarks. The Complainant presented only a list of domain names which were registered under the same email address of the Respondent but has not pointed to any other UDRP proceedings involving the Respondent.
The above does not undermine the finding that the disputed domain name was registered and used in bad faith under paragraph 4(a)(iii) of the Policy. It should be noted that paragraph 4(b) of the Policy does not limit the circumstances which may be evidence of the registration and use of a domain name 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 <salomon.moscow> be transferred to the Complainant.
Date: December 4, 2015