WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Etam SAS v. Domain Administrator, See Privacyguardian.org / Carry Wong
Case No. D2019-0205
1. The Parties
The Complainant is Etam SAS of Clichy, France, represented by Domgate, France.
The Respondent is Domain Administrator, See Privacyguardian.org of Phoenix, United States of America (“United States”) / Carry Wong of Yichang, China.
2. The Domain Name and Registrar
The disputed domain names <maillotdebainetam.com>, <maillotdebainundiz.com> are registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2019. On January 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 29, 2019, 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 Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 30, 2019 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 January 31, 2019.
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 February 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2019.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on March 4, 2019. 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 has 99 trademark registrations in France and as a European Union trademark for the trademark ETAM alone or combined with other elements.
The Complainant has 14 trademark registrations in France and as a European Union trademark for the trademark UNDIZ alone or combined with other elements.
The Respondent registered the disputed domain names on September 28, 2018. The disputed domain names resolve to websites displaying articles about the trademarks ETAM and UNDIZ.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark or a service mark in which the Complainant has rights. The Etam group existed since 1916, has 1405 stores all over the world, sells its products on line and achieves sales in the range of hundreds of millions of Euros. The trademarks UNDIZ and ETAM are owned by the Complainant who sells underwear and bathing suits. The Complainant owns the trademarks ETAM and UNDIZ, which are wholly incorporated in the disputed domain names. The use of the generic terms “maillot de bain”, which means “bathing suit” in French, does not eliminate the similarity between the Complainants’ trademarks and the disputed domain names. In fact, the use of a generic name of a product sold by the Complainant only reinforces the confusion.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain names. The Complainant sent a number of communications to the Respondent but all of these remained unanswered. Both trademarks ETAM and UNDIZ enjoy notoriety in France. The use of the French words for bathing suit by the Respondent confirms its knowledge of these trademarks. Both domain names resolve to websites where bathing suits can be bought and where articles about the trademarks ETAM and UNDIZ are posted. The sold items do not bear said trademarks but users of the site are led to believe that the sold items are ETAM or UNDIZ items. Further, there are no information on these websites about the company operating them. These could be scam sites. These sites clearly target French customers. The Respondent’s intent must have been to attract traffic to its websites where bathing suits are sold. As a result, the Respondent is not making a bona fide, noncommercial or fair use of the disputed domain names. The Complainant never authorized or licensed the Respondent the use of the trademarks ETAM and UNDIZ. The Respondent is not commonly known by the dispute domain names and is not the owner of the two trademarks.
The Complainant contends that the disputed domain names were registered and are being used in bad faith. The Respondent must have known of the trademarks of the Complainant as it is using the term bathing suits in French, and this is a product sold by the Complainant. Furthermore, the websites to which the disputed domain names resolve include articles on the trademarks ETAM and UNDIZ. One of the sites also leads to the official website of ETAM. Generally, the sites resolve to a commercial website. It is however not possible to ascertain that the two commercial websites belong to the Respondent but there are strong indications that they do. The domain names are protected by a privacy service. The Respondent is making a commercial gain by attracting Internet traffic.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant holds many trademark registrations for the trademarks ETAM and UNDIZ. The Panel is satisfied that the Complainant has established its ownership of the trademarks ETAM and UNDIZ.
The disputed domain names comprise the Complainant’s trademarks in their entirety. The disputed domain names contain the generic terms “maillot de bain”, which means bathing suit in French. The use of generic terms do not help eliminate the confusing similarity. On the contrary, it reinforces in the current scenario the confusion as the Complainant sells bathing suits.
The gTLD “.com” may typically be ignored when assessing confusing similarity as held by prior UDRP panels.
Consequently, the Panel finds that the disputed domain names are confusingly similar to the trademarks of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Pursuant to the Complainant’s contestations set out above, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain names, particularly by asserting that it never authorized the Respondent to use its trademarks as part of the disputed domain names.
The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain names. Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain names. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent clearly knew the Group ETAM, its trademarks and its products. The Respondent’s knowledge is proven by the facts that the trademark ETAM is very well-known and particularly in the French market, that the Group ETAM has been in existence for a century, that the disputed domain names include the French equivalent of the term bathing suit, which is a product of the Complainant and that articles about the ETAM group and the UNDIZ brand are posted on the websites to which the disputed domain names resolve. In fact, the website to which the disputed domain name <maillotdebainetam.com> resolves includes a link to the official site of the Complainant. This is an indication of bad faith registration.
Another indication of bad faith is the use of privacy service and the lack of response to the various communications sent by the Complainant. Additionally, the disputed domain names resolve to websites which allow accessing websites where bathing suits are sold. It is therefore clear that the domain names are being used to attract Internet traffic for commercial gain.
Therefore, the Panel concludes that the disputed domain names are registered and are being used in bad faith. Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied 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 names <maillotdebainetam.com> and <maillotdebainundiz.com> be transferred to the Complainant.
Date: March 5, 2019