WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Skullhead Luxemourg v. Sylvain Barriant
Case No. D2019-2928
1. The Parties
The Complainant is The Skullhead Luxemourg, Luxembourg, represented by Atlan & Boksenbaum Avocats, France.
The Respondent is Sylvain Barriant, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <thekooplessale.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 November 28, 2019. On November 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2019, 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 December 10, 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 December 12, 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 December 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2020. On December 27, 2019, a third party sent an email communication to the Center claiming that his contact details had been used to register the disputed domain name. The Respondent did not submit any response. Accordingly, the Center notified the Parties that it would proceed to panel appointment on January 10, 2020.
The Center appointed Knud Wallberg as the sole panelist in this matter on January 16, 2020. 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 the owner of the rights to the trademark THE KOOPLES and hold several registrations of this mark including international registration no. 978688 registered on May 28, 2008 for goods in international classes 14, 18 and 25.
The French Company THE SHULLHEAD PRODUCTION The Kooples Production is the exclusive licensee of the Complainant to use the THE KOOPLES mark, and to manufacture and distribute various men’s and women’s ready-to-wear goods and leather goods under this mark internationally.
The disputed domain name was registered on August 6, 2018. The disputed domain name resolves to an website that purportedly sells goods under THE KOOPLES mark at very low prices.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
The Complainant further submits that the Respondent has not been authorized by the Complainant to register and use the disputed domain name and that the Respondent is making an illegitimate commercial and unfair use of the disputed domain name with the intent for commercial gain by misleadingly diverting the consumers to his website.
The Complainant finally submits that the disputed domain name was registered and is being used in bad faith.
The Complainant has requested that the disputed domain name be cancelled.
The Respondent did not reply to the Complainant’s contentions. The Center did, however, receive an email from a person living at the specified address of the Respondent, in which the following was stated:
“Please note you have incorrectly sent me a complaint letter
There is nobody called Sylvain barriant living at this address
You seem to have my address and mobile phone number and I am not clear how you have obtained this but you have contacted the wrong person.”
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the statements and documents submitted by the parties.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:
(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.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.
A. Identical or Confusingly Similar
The disputed domain name <thekooplessale.com> combines the Complainant’s registered trademark THE KOOPLES in its entirety with the addition of the term “sale”.
The Panel finds that the disputed domain name <thekooplessale.com> is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark because it contains the mark in its entirety. The addition of the term “sale” as suffix to the trademark to form the disputed domain name does not, to this Panel, dispel a finding of confusing similarity. It has also long been held by UDRP panels that the generic Top-Level Domain (“gTLD”) suffix does not preclude a finding of confusing similarity as it is disregarded under the first element confusing similarity test, see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
Given the circumstances of this case, the Panel is of the opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this and the way the Respondent has been and is using the disputed domain name (see below in Section C) does not support a finding of rights or legitimate interests.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the disputed 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 holder’s website or location or of a product or service on the holder’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case, in particular the distinctive nature of the Complainant’s trademark and the long-time use of the mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, due to the nature and use of the disputed domain name, the Panel finds that the Respondent could not have been unaware of the fact that the disputed domain name he chose could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The disputed domain name is being used for a website which, inter alia by reproducing the Complainant’s trademark and logo and gives Internet users the impression that the website is an official website of the Complainant or its licensee and that the Respondent is an authorised reseller of the Complainant’s products. This appears not to be the case, and the Panel therefore finds that the Respondent by registration and use of the disputed domain name intentionally creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name with the purpose of attracting Internet users to the website for commercial gain as per paragraph 4(b)(iv) of the Policy.
Noting that the disputed domain name incorporates a registered and well-established trademark, that no response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <thekooplessale.com> be cancelled.
Date: January 28, 2020