WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

INTS IT IS NOT THE SAME GMBH v. Manuel Guitián Lopez / Domains By Proxy, LLC and vitor Whoiscontactsprotection.com

Case No. D2016-1463

1. The Parties

The Complainant is INTS IT IS NOT THE SAME GMBH of Zug, Switzerland, represented by Fabregat, Perulles, Sales Abogados SCP, Spain.

The Respondents are Manuel Guitián Lopez / Domains By Proxy, LLC of Badalona, Spain and vitor Whoiscontactsprotection.com of Barcelona, Spain.

2. The Domain Names and Registrar

The disputed domain names <desigualonline.com> and <desigualoutlet.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2016. On July 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 20, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on July 27, 2016 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 July 28, 2016.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2016.

The Center appointed Alexandre Nappey as the sole panelist in this matter on August 29, 2016. 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 part of the Desigual group which is selling, among other products, clothes, accessories, shoes, bedclothes, table linen, decoration and perfumery products, under the DESIGUAL trademark all over the world and online through the website “www.desigual.com”.

The Complainant is the owner, among other, of the following European Union trademarks DESIGUAL:

- DESIGUAL (figurative mark with an inverted “S” (Ƨ)), registered under No. 3805652 on September 12, 2005, in classes 18, 25 and 39;

- DESIGUAL (figurative mark with an inverted “S” (Ƨ)), registered under No. 5887021 on March 18, 2008, in classes 3, 9, 14, 16, 24, 38, 41, and 42; and

- DESIGUAL, word trademark registered under No. 8965261 on August 18, 2010, in classes 3, 9, 12, 14, 16, 18, 20, 24, 25, 28, 35, 38, 39, 41 and 42.

The disputed domain names are:

- <desigualonline.com> registered on February 5, 2015 by Mr. Guitian;

- <desigualoutlet.com> registered on December 19, 2013 by vitor Whoiscontactsprotection.com.

5. Parties’ Contentions

A. Complainant

1. The Complainant first alleges that the disputed domain names <desigualoutlet.com> and <desigualonline.com> are very similar to its earlier marks, to the point of creating confusion

The disputed domain names reproduce the Complainant’s earlier marks DESIGUAL in their entirety.

The Complainant alleges that the disputed domain names respectively add the generic words “online” and “outlet” which add no distinctiveness and do not eliminate the similarity and confusion between the registered trademarks and the disputed domain names, especially considering that both terms refer to two of the most common distribution channels used by the Desigual Group (and for clothing and other products in general).

Moreover, these generic terms may even increase the likelihood of confusion.

2. Secondly, the Complainant alleges that the Respondents have no rights or legitimate interests in respect of the disputed domain names

The Complainant has not granted any authorization to the Respondents to use its trademarks DESIGUAL.

The Respondents carried out an infringing use of the website “www.desigualoutlet.com”, by using without the Complainant’s authorization the DESIGUAL trademarks, and photographs, Desigual campaign images, catalogues, videos and images of the Desigual official website “www.desigual.com”.

There is no connection between the parties.

The Respondents have never been commonly known by the disputed domain names.

The Respondents have not acquired any trademarks, and have no rights whatsoever in connection with the names “desigualoutlet” and “desigualonline”, as far as the Complainant is aware.

The DESIGUAL trademarks owned by the Complainant are famous and well-known.

3. Finally, the Complainant claims that the disputed domain names were registered and are being used in bad faith

Given that the Complainant has been operating, commercializing and extensively advertising its products since 1984 with widespread reputation in more than 100 countries, it is implied that the Respondents must have had knowledge of the Complainant’s rights in the DESIGUAL trademarks at the moment it registered the disputed domain names.

Therefore, based on the strong notoriety and global renown of the Complainant’s trademarks, the Respondents could not ignore that the registration of the disputed domain names very well violated the Complainant’s rights.

The website at the disputed domain name <desigualoutlet.com> included and displayed, without the Complainant’s authorization, not only the Complainant’s DESIGUAL trademarks, but also pictures used by DESIGUAL on its website and in its advertisement campaigns and catalogues to mislead the Complainant’s customers.

The front page of the above referenced website reproduced the expression “Desigual Outlet” to falsely indicate that the website is an affiliate of the Complainant as it sells the exact same products as the Complainant but at a cheaper price.

It is undeniable that the Respondents’ aim clearly was to attract Internet users for commercial gain to its website, while creating a likelihood of confusion.

Although there is no commercialization of Desigual products at <desigualonline.com>, as it has always been blank (attached as Annex 19), numerous Panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith.

Considering the notoriety and strong reputation of the trademark DESIGUAL , it is clear that the registration of similar domain names (including the entirety of the trademark DESIGUAL) was to take advantage of the confusion between the disputed domain names and the Complainant’s trademarks.

Moreover, to date, there has still not been any response by the Respondents.

Furthermore, it has been proved that the Respondent Mr. Guitián has been the domain name holder of the disputed domain names, and the changes of ownership indicated by the respective WhoIs searches plus the fact that the disputed domain names were transferred to the Registrar with explicit occultation of the registrant information indicate a clear intention per part of the Respondent to conceal its identity, amounting to acting in bad faith.

Finally, the fact that Mr. Guitián registered and actively commercialized <desigualoutlet.com>, indicates that the registration of <desigualonline.com> perhaps would follow the same pattern of selling and commercializing the same products as Desigual.

B. Respondent

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

6. Discussion and Findings

Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:

(i) The disputed domain names are 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 respect of the disputed domain names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.

Having considered the Parties’ contentions, the Policy, the Rules, the Supplemental Rules and applicable law, the Panel’s findings on each of the above mentioned elements are the following.

A. Preliminary consideration: Multiple Respondents

The Complainant has requested the consolidation of multiple Respondents in respect of the disputed domain names.

Under Paragraph 3(c) of the Rules: “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”.

Under paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), proceedings against more than one respondent may be consolidated where “(i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties”.

In this case, both disputed domain names have been registered by the same person, i.e., Manuel Guitián Lopez, the first Respondent, who was confirmed as the registrant for both domains until May 25, 2016 at the latest. The Complainant has provided evidence that the first Respondent has received each of the cease and desist letters which were sent by the Complainant.

It has to be noticed that both disputed domain names were registered with the same registrar.

After receipt of the formal notice sent by the Complainant, the disputed domain names have been moved to another registrar, and WhoIs details have been obfuscated by the registrant, using premium privacy or proxy services (Domains by Proxy Inc and Whoiscontactprotection respectively).

However the panel notes that both disputed domain names have been moved to the current Registrar, immediately after the formal notices were received by the registrant.

Finally, upon request sent by the Complainant, Domains by Proxy Inc confirmed that Mr. Manuel Guitián Lopez was still the real registrant for the disputed domain name <desigualonline.com> on July 18, 2016.

Based on the above, and taking into consideration that the Respondents did not rebut the Complainant’s assertions, the Panel is satisfied that the disputed domain names are subject to common control, and it would be fair and equitable to all parties to proceed with the consolidation.

In light of the above, the Respondents will hereinafter be referred to as the “Respondent”.

B. Identical or Confusingly Similar

The Panel is satisfied that the Complainant owns exclusive trademark rights in DESIGUAL, which predate the registration of the disputed domain names.

The Panel finds that the disputed domain names <desigualonline.com> and <desigualoutlet.com> are confusingly similar to the registered DESIGUAL trademarks owned by the Complainant.

Indeed, the disputed domain names both incorporate the entirety of the Complainant’s DESIGUAL trademark.

The addition of the respective words “online” and “outlet” does nothing to avoid confusing similarity between the disputed domain names and the earlier trademark DESIGUAL, since these words are rather fitted to give the impression that the websites at the disputed domain names are online shops operated by the Complainant or an affiliate.

See for instance Swarovski Aktiengesellschaft v. Ming Robot, WIPO Case No. D2012-1200
“It is also established that the addition of a generic term (such as here the words “onlineoutlets” which simply suggest an online sales operation of some kind) to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).”

Therefore, the Panel finds that the disputed domain names are both confusingly similar to the Complainant’s mark under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names under paragraph 4(a)(ii) of the Policy and then the burden of productions shifts to the Respondent to demonstrate its rights or legitimate interests.

The Complainant has stated that it has not authorized, licensed or consented to the Respondent’s use of its DESIGUAL trademarks.

The Complainant submitted printouts showing that the website at <desigualoutlet.com> offered for sale DESIGUAL products under the appearance of an official DESIGUAL website.

These printouts show that the website at the disputed domain name contained, without Complainant’s authorization, numerous DESIGUAL photographs, DESIGUAL campaign images, catalogues, videos and images of the Complainant’s official website “www.desigual.com”.

Moreover, the prominent use of the Complainant’s DESIGUAL trademark on this website may lead to Internet user confusion, considering also there is no disclaimer available on the website operated under the disputed domain name <desigualoutlet.com>.

Such use does not give rise to rights or legitimate interests for the purposes of the Policy.

With respect to <desigualonline.com> which is not used, based on the evidence provided by the Complainant and unchallenged by the Respondent, the Panel does not find any such rights or legitimate interests referred to in paragraph 4(c) of the Policy or otherwise.

In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

As the Respondent has not provided otherwise, the Panel finds that the second element of the paragraph 4(a) of the Policy is fulfilled.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a UDRP panel to be evidence of bad faith registration and use of a domain name. It provides that:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or the Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that he is engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location.”

Since DESIGUAL is a distinctive and widely known trademark, which further predates by years the registration of both disputed domain names, and given the Respondent’s use of the disputed domain name, it is evident that the Respondent was aware of the Complainant’s trademark at the time it registered the disputed domain names.

Here, the Panel finds that the Respondent must have had knowledge of the Complainant’s rights in the DESIGUAL trademark at the time of registration of the disputed domain names, since the use that the Respondent made of the website linked to the disputed domain name <desigualoutlet.com> shortly after registration clearly shows that the Respondent knew of the Complainant’s trademark.

In addition, it appears that the Respondent acquired two domain names confusingly similar to the Complainant’s established mark, to which it has no rights whatsoever, and has set up one of the disputed domain names with a commercial website, giving the impression that it is somehow associated with the Complainant.

The Respondent has no apparent connection with the DESIGUAL trademarks. Moreover, the Panel cannot conceive any use that the Respondent could make of the disputed domain names that would not interfere with the Complainant’s trademark rights.

In the circumstances of the present case, the Panel finds that the Respondent’s passive holding of the disputed domain name <desigualonline.com> also amounts to use of the disputed domain name in bad faith for the purpose of the Policy. (See paragraph 3.2 of the WIPO Overview 2.0.)

In the circumstances the Panel holds that the disputed domain names were registered and are being used in bad faith.

The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of paragraph 4(a) of the Policy.

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 names, <desigualonline.com> and <desigualoutlet.com>, be transferred to the Complainant.

Alexandre Nappey
Sole Panelist
Date: September 12, 2016