WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bourjois SAS v. oleidun
Case No. D2015-1736
1. The Parties
The Complainant is Bourjois SAS of Puteaux, France, represented by Boehmert & Boehmert, Germany.
The Respondent is oleidun of Chongqing, China.
2. The Domain Name and Registrar
The disputed domain name <bourjoismall.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2015. On September 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 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.
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 of the Complaint, and the proceeding commenced on October 8, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2015.
The Center appointed Douglas Clark as the sole panelist in this matter on November 9, 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 French cosmetic company. The Complainant is the registered proprietor of the trademark BOURJOIS in various countries in numerous classes. These registrations include international registration no. 318754 in Class 3 which designates China.
The disputed domain name <bourjoismall.com> was registered on August 11, 2015.
The Respondent is an individual based in China.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant argues that the disputed domain name <bourjoismall.com> is made entirely up of the registered trademark BOURJOIS and the generic description “mall” to which generic Top-Level Domain (“gTLD”) “.com” has been added. It is therefore confusingly similar to the Complainant’s registered trademark BOURJOIS.
No rights or legitimate interests
The Complainant submits that the Respondent has not been known by the disputed domain name and the Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for BOURJOIS.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in the BOURJOIS trademark and registered the disputed domain name to attract business to its website. The Complainant provided print outs to show that the website to which the disputed domain name resolved to was at the time the Complaint was filed used to sell apparently counterfeit cosmetics under the BOURJOIS trademark. As such, the Complainant alleged registration and use of the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name <bourjoismall.com> is made up of the registered trademark BOURJOIS, the generic term “mall” and the gTLD “.com”. The disputed domain name is confusingly similar to the registered trademark BOURJOIS.
The first part of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Paragraph 2.1 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the 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.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
The second part of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel has no hesitation in finding that the disputed domain name <bourjoismall.com> was registered in bad faith and is being used in bad faith.
This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The evidence filed by the Complainant shows that the website under the disputed domain name was clearly being used to sell products similar to the Complainant’s. There can be no doubt that the disputed domain name <bourjoismall.com> was registered and is being used in bad faith.
The third part of paragraph 4(a) of the Policy is therefore satisfied.
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, <bourjoismall.com>, be transferred to the Complainant.
Date: November 15, 2015