WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Industria de Diseño Textil, S.A. v. Whois Agent. Domain Protection Services, Inc. / Nadav Simhoni

Case No. D2018-1611

1. The Parties

The Complainant is Industria de Diseño Textil, S.A. of Arteixo, A Coruña, Spain, represented internally.

The Respondents are Whois Agent. Domain Protection Services, Inc. of Denver, United States of America ("United States") and Nadav Simhoni of Abu Dhabi, United Arab Emirates ("UAE").

2. The Domain Name and Registrar

The disputed domain name <zarafranchise.com> is registered with Name.com, Inc. (Name.com LLC) (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 17, 2018. On July 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 20, 2018 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 23, 2018.

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 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 16, 2018.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on August 22, 2018. 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 in the fashion retail business. It is the owner, amongst others, of the following trademark registrations (Annex 4 to the Complaint):

- United States Trademark registration No. 1629592 for ZARA, in class 42, registered on December 25, 1990;

- United States Trademark registration No. 2392637 for ZARA, in class 25, registered on October 10, 2000;

- United States Trademark registration No. 4030529 for ZARA, in classes 14, 16, 20, 21 and 35, registered on September 27, 2011.

The disputed domain name <zarafranchise.com> was registered on November 30, 2016. While the disputed domain name does not resolve to an active website, it appears to have been used in connection with a fraudulent email scheme.

5. Parties' Contentions

A. Complainant

The Complainant asserts to be one of the world's largest fashion retailers, owning, managing or franchising 7,475 stores in 96 markets around the world. It is the parent group of more than 100 companies operating in the textile design, manufacturing, production and distribution all over the world. One of these companies is its whole-owned subsidiary Zara USA, Inc., of 500 Fifth Avenue, Suite 400, 10110, NY, NY.

According to the Complainant, the ZARA trademark was first used in 1975 and since then has been actively promoted, having reached the status of a global well-known trademark, what can be evidenced by having ranked the 24th position in the prestigious Interbrand Global Brands Inform of 2017, being worth USD 18,573 m.

Under the Complainant's view, the disputed domain name incorporates the entirety of its well-known trademark with the addition of the generic term "franchise", which in the context of the fraudulent activities carried out by the Respondent only enhances the likelihood of confusion with the Complainant and its franchise structure.

Also according to the Complainant, the disputed domain name has been used to create email addresses "[…]@zarafranchise.com" which were used to send emails misleading recipients into believing that the emails came from the Complainant where in fact they did not (Annexes 8 and 9 to the Complaint), and what constitutes a clear violation of the Complainant's trademark rights.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:

(i) the use of the disputed domain name to impersonate the Complainant for fraudulent purposes and to target the Complainant's prospective franchisees and third parties under false pretenses does not characterize a legitimate use or a bona fide offering of goods and services;

(ii) the Complainant has not licensed or authorized the Respondent to represent it, nor has he been authorized to register the disputed domain name or develop any activity under the ZARA trademark;

(iii) there is no evidence that the Respondent is the holder of any trademark or any registered name that may legitimate him to register and use the disputed domain name;

(iv) given the overwhelming renown and popularity of the ZARA trademark worldwide it is not conceivable that the Respondent could possibly establish any rights or legitimate interests in the disputed domain name (as in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Complainant contends, as to the bad faith in the registration and use of the disputed domain name that it arises from the fact that the disputed domain name has been used by the Respondent in connection with a fraudulent scheme whereby the Respondent claimed to act as a franchising manager on behalf of the Complainant, offering prospective franchisees to set up franchise business under the Complainant's ZARA trademark.

Furthermore, the Complainant submits as evidence the attachments to emails sent by the Respondent which comprise of a "ZARA Franchise Brochure", "ZARA Franchisee Applicant Information" and "ZARA Franchise Store Approval Order" as well as a request for a five figure deposit fee in US dollar to secure the granted franchise together with a "ZARA Franchise Refundable Commitment Fee Contract" (Annexes 8 and 9 to the Complaint).

The Complainant further indicates that the Respondent's knowledge of the Complainant's ZARA trademark is undoubtful given that the Respondent reproduces multiple times the Complainant's logo and devices as well as the address of the registered office of the Complainant's subsidiary Zara USA, Inc. In addition to that the Respondent, according to the Complainant, has forged the Complainant's stamps and manager signatures in an attempt to pass off as one of the Complainant's legitimate officials.

The Complainant also conducted technical verifications on the emails sent from the disputed domain name as well as from the metadata included in the respective headers (Annex 6 to the Complaint) submitting that such communications have come from the servers set up under the disputed domain name, which is under the control of the Respondent.

In view of the aforementioned, the Complainant asserts that the intention of the Respondent to create a false association with it with the purpose of taking advantage of the Complainant's reputation is clear in view of the email addresses created and used to send emails misleading recipients into believing that the emails came from the Complainant where in fact they did not.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:

(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 respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.

In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Complainant has established its rights in the well-known ZARA trademark duly registered.

The disputed domain name reproduces in its entirety the Complainant's trademark with the addition of the generic term "franchise". Given the misuse made by the Respondent in connection with fraudulent emails attempting to impersonate the Complainant, clearly targeting the Complainant and its prospective franchisees, the Panel finds that there is an enhanced likelihood of confusion between the disputed domain name and the Complainant's trademark.

As section 1.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") indicates, "[i]n some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.". In the present case it is not the contents of the website relating to the domain name but the use made of the disputed domain name that create an enhanced likelihood of confusion between the Complainant's trademark and the disputed domain name.

For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the respondent's rights or legitimate interests in the disputed domain name. These circumstances are:

(i) before any notice of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, in spite of not having acquired trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant's side to make a prima facie case against the Respondent.

In that sense, the Complainant indeed states that the Respondent has not been licensed or authorized to represent it, nor has he been authorized to register the disputed domain name or develop any activity under the ZARA trademark.

Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel's finding of the absence of rights or legitimate interests.

According to the emails attached to the Complaint (Annexes 8 and 9) the Respondent has indeed used the disputed domain name in a manner to impersonate inappropriately the Complainant. The Panel finds that such use does not constitute a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the disputed domain name.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in the use of the disputed domain name, with an intentional attempt to attract, for commercial gain, Internet users to the 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 the website or location or of a product or service on the website or location.

The Respondent's knowledge of the Complainant appears to be evident both from the choice of the disputed domain name adding the term "franchise" to the well-known ZARA trademark given the Complainant's activities and franchise structure as well as from the fraudulent emails sent by the Respondent (Annexes 8 and 9 to the Complaint).

In this case, the use of the disputed domain name in connection with fraudulent emails impersonating the Complainant can indeed mislead Internet users for commercial gain by profiting from the similarity between the disputed domain name and the Complainant's trademark.

Also, as already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name.

Lastly, the Respondent's choice to retain a privacy protection service in an attempt to hide its true identity as well as what may be false contact information in the WhoIs information after the shield was lifted further support in the circumstances of this case the Panel's finding of bad faith.

For the reasons stated above, the Respondent's conduct has to be considered, in this Panel's view, as bad faith registration and use pursuant to paragraph 4(b)(iv) 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 name <zarafranchise.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: September 4, 2018