WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Minelli SAS v. Domain Administrator, See PrivacyGuardian.org / Dorota Borowska / Gretchen Aquino
Case No. D2019-0770
1. The Parties
The Complainant is Minelli SAS, France, represented by SafeBrands, France.
The Respondents are Domain Administrator, See PrivacyGuardian.org, United States of America / Dorota Borowska, United States of America / Gretchen Aquino, Canada.
2. The Domain Names and the Registrar
The disputed domain names <minellibottes.com>, <minelliventes.online> and <millivente.online> (the “Domain Names”) are registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2019. On April 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 4, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 15, 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 April 18, 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 Respondents of the Complaint, and the proceedings commenced on April 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2019. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 15, 2019.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on May 23, 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 is a French company in the shoe industry for more than 45 years. The Complainant’s trademark, MINELLI, is a shoe brand with over 245 boutiques throughout the world.
The Complainant owns numerous trademark registrations for MINELLI, alone or combined with another element, such as French registration No. 1283850, dated September 13, 1984, French registration No. 4081461, dated April 4, 2014, International registration No. 1232065, dated August 7, 2014, and International registration No. 491992, dated March 13, 1985.
In addition, the Complainant operates websites through the domain name, e.g. <minelli.fr> registered September 19, 1997.
Pursuant to the Registrar, the Domain Names were registered in December 2018 (<minellibottes.com> on December 4, <minelliventes.online> on December 12 and <millivente.online> on December 19, 2018). At the time of filing the Complaint, the Domain Names resolved to websites with the Complainant’s logo selling shoes to a discounted price, shoes supposedly coming from the Complainant. At the time of drafting the decision, two of the Domain Names still resolved to similar websites, whereas the third, <minellibottes.com>, resolved to an error webpage.
5. Parties’ Contentions
According to the Complainant, the Domain Names are confusingly similar to the Complainant’s trademark, as the Domain Names reproduce its trademark, with the addition of the French words “bottes”, “vente”and “ventes” (“boots,”sale and “sales” in English). These words refer to the Complainant’s products and business.
The Complainant asserts that the Respondents have no rights or legitimate interests in respect of the Domain Names. The Complainant has not authorized the Respondents to use and register its trademark, or to seek registration of any domain name incorporating said mark. The Complainant’s trademark precedes the registration of the Domain Names for years. The Domain Names resolve to websites that display the Complainant’s trademarks, logo in order to sell heavily discounted goods supposedly coming from the Complainant. Considering the significantly discounted prices, the Complainant suspects the products to be counterfeit. There is no evidence as to the goods offered for sale/advertised are genuine MINELLI products. In any event, given the long-standing use and reputation of the Complainant’s trademark, it appears that the Respondents try to mislead Internet users into believing that the websites are connected with the Complainant, and divert Internet users looking for the Complainant’s products.
The Complainant argues that it is implausible that the Respondents were unaware of the Complainant when the Domain Names were registered. The Complainant has distinctive trademark for over 45 years. The addition of the words “bottes”, “vente” and “ventes” suggests the Respondents knew of the Complainant and its mark. The offering of the Complainant’s goods (counterfeited or not), is further proof of such knowledge. The Respondents have not provided any evidence of use in good faith of the Domain Names. The Domain Names include the well-known registered trademark of the Complainant, registered by the Complainant many years before the Domain Names were registered. Moreover, the Respondents employ a proxy service. This is further evidence of bad faith. With reference to the use in bad faith, the Domain Names link to unauthorized and misleading websites, which offers products supposedly coming from the Complainant at discounted price. Such conduct, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation of the website or of products available at the websites, indicates bad faith. No clarification as to Respondents’ relationship with Complainant is made on the websites. Internet users are led to believe that the website are either the Complainant’s site or the site of an official authorized agent. Finally, according to the Complainant, by registering the three Domain Names, it appears that the Respondents are engaged in a pattern of unfairly disrupting the business of the Complainant.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Complaint consolidated against the Respondents
Pursuant to the Registrar’s data, the registrant of <millivente.online> and <minelliventes.online> is Gretchen Aquino, the registrant of <minellibottes.com> is Dorota Borowska. The Complainant asserts that the three Domain Names are all registered in December 2018 with the same Registrar, and use the same DNS servers. The hosting provider for all Domain Names is the same. All three Domain Names have at one point resolved to similar webpages. The same visuals, colors and information are used. The source codes of the websites are similar.
In the absence of a response, the Panel finds that the Domain Names are more likely than not to be subject to common control. A consolidation against the two respondents is fair and equitable, see the WIPO Overview of WIPO Panel Views on the selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.
B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established rights in the trademark MINELLI.
The test for confusingly similarity involves the comparison between the trademark and the Domain Names. In this case the Domain Names <minellibottes.com> and <minelliventes.online> reproduce the trademark, with the addition of the French words “bottes”, “vente” and “ventes” (“boots”, “sale” and “sales” in English). This does not prevent a finding of confusing similarity. As to the Domain Name <millivente.online> there is a partial reproduction of the trademark but it remains recognizable. The Panel also notes the Respondent’s use of the Domain Name <millivente.online> and the pattern of targeting the Complainant’s trademark, which supports a finding of confusing similarity (See WIPO Overview 3.0, section 1.7). For the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, one may ignore the generic Top-Level Domains.
The Domain Names are confusingly similar to a trademark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant has not authorized the Respondents to use its trademark or register the Domain Names. The Respondents have not made any use of, or demonstrable preparations to use, the Domain Names or a corresponding name in connection with a bona fide offering of goods or services. The Respondents are not making any legitimate noncommercial or fair use of the Domain Name. The Domain Names resolve, or have resolved, to websites that displays the Complainant’s trademarks/logo in order to sell discounted goods supposedly coming from the Complainant. The Complainant suspects the products to be counterfeit. There is no evidence on the case file as to the goods offered are genuine MINELLI products. The Panel agrees with the Complainant, it appears that the Respondents’ aim is to mislead Internet users into believing that the websites are connected with the Complainant. This is not legitimate use of a trademark.
The Panel finds that the Complainant has made out a prima facie case. The Respondents have not responded and the Panel is unable to conceive how the Respondents could have any rights or legitimate interests in respect of the Domain Names.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
D. Registered and Used in Bad Faith
The Panel is satisfied that the Respondents were aware of the Complainant and its trademark when the Respondents registered the Domain Names. The Complainant has used its trademark decades before the registration of the Domain Names. The addition of the words “bottes”, “vente” and “ventes” suggests the Respondents knew of the Complainant and its mark. The offering of the Complainant’s goods (counterfeited or not), is further proof of such knowledge. The Respondents use of a proxy service may under the circumstances further indicate bad faith. As to the Respondents unauthorized sale of the Complainant’s, or counterfeited, products, (through domain names confusingly similar to the trademark with the addition of a term related to the Complainant’s business or activity) such conduct creates a confusion with the Complainant’s trademark as to the source, sponsorship. It is a clear indication of bad faith.
The Panel concludes that the Domain Names were registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <millivente.online>, <minellibottes.com> and <minelliventes.online> be transferred to the Complainant.
Date: May 27, 2019