WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Repetto v. Hamu Lee
Case No. D2017-1278
1. The Parties
Complainant is Repetto of Paris, France, represented by Nameshield, France.
Respondent is Hamu Lee of Guangzhou, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <repettoshoesus.com> is 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 3, 2017. On July 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2017, 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 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 Respondent of the Complaint, and the proceedings commenced on July 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 9, 2017.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on August 16, 2017. 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
Complainant Respetto is a Paris-based business founded in 1947 by Rose Repetto. Originally Complainant was a manufacturer of technical bullet products, but it has expanded its product line to cover not only ballet shoes, but other forms of footwear as well as apparel, accessories, purses and perfumes.
Complainant’s REPETTO trademark has been registered internationally since as early as 1997, including the following registrations:
REPETTO WIPO Registration No. 1040048 registered on March 29, 2010
REPETTO WIPO Registration No. 679526 registered on September 5, 1997
R REPETTO WIPO Registration No. 433035 registered on October 21, 1977
Complainant has used the domain name <repetto.com> to host its principal website since 1997.
Respondent is identified as Hamu Lee from Guangzhou, China. The disputed domain name was registered in May 2017, and has been used in association with a website actively selling discounted footwear that also displays the REPETTO trademarks.
5. Parties’ Contentions
Complainant submits that it holds registered rights to the REPETTO trademarks as outlined above. The disputed domain name is alleged to be confusingly similar to these registered marks, as it incorporates the entire REPETTO mark along with merely descriptive elements.
In terms of rights or legitimate interests, Complainant states that Respondent has never been affiliated with Complainant’s business in any way and has never been authorized by Complainant to use the disputed domain name. Further Respondent has never been commonly known under the name “Repetto”.
Finally, Respondent is alleged to have registered and used the disputed domain name in bad faith, as it clearly was aware of Complainant’s trademark rights, and has adopted a confusingly similar name to mislead consumers and divert Internet traffic to its site. Respondent has failed to respond to Complainant’s cease-and-desist letter which was dispatched when the disputed domain name was registered in May 2017.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that Complainant owns longstanding registered rights in its REPETTO trademarks. Respondent has chosen to incorporate the entirety of the distinctive REPETTO mark in the disputed domain name. The addition of the descriptive terms “shoes” and “us” does not have the effect of reducing the confusing similarity. In fact, the inclusion of “shoes” increases the likelihood of confusion because it identifies one of the principal categories of goods associated with Complainant’s mark.
Accordingly, Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, by establishing the absence of authorization or affiliation with its business. Respondent is not commonly known by the name REPETTO, and is not related in any way to Complainant. The use of the disputed domain name is designed to divert Internet traffic initially intended for Complainant to Respondent’s website, through the use of a confusingly similar domain name, and products bearing the REPETTO brands and logos which have not been authorized by Complainant. As such, there is a no bona fide offering of goods in connection with the disputed domain name.
Having established a prima facie case under paragraph 4(a)(ii) of the Policy, the burden of proof shifts to Respondent to prove that it holds rights or legitimate interests in its domain name. Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 2.10.1. The Panel notes that no response has been filed in this proceeding.
Accordingly, the Panel finds that Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In the absence of any evidence to the contrary the Panel finds that Respondent has intentionally traded on Complainant’s reputation in the REPETTO trademarks by adopting a confusingly similar domain name, which highlights Complainant’s principal product, namely shoes. It is clear from the contents of Respondent’s website that it was fully aware of Complainant’s trademarks when it created the disputed domain name. Given the appropriation of the REPETTO trademark as the distinctive element of the disputed domain name, and the associated sales activity on Respondent’s website, the Panel concludes that Respondent is deliberately attempting to mislead consumers to believe it is selling Complainant’s products, and that it has been authorized to do so by Complainant, when this is not the case.
Accordingly, the Panel finds that Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.
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 <repettoshoesus.com> be transferred to Complainant.
Christopher J. Pibus
Date: September 4, 2017