WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Printemps v. WhoisGuard Protected, WhoisGuard, Inc. / Hood UP, Hood-Up INVEST Ltd
Case No. D2020-1094
1. The Parties
Complainant is Printemps, France, represented by Nameshield, France.
Respondent is WhoisGuard Protected, WhoisGuard, Inc, Panama. / Hood UP, Hood-Up INVEST Ltd, United Kingdom, represented internally.
2. The Domain Name and Registrar
The disputed domain name <rose-printemps.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed in French with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2020. On May 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 4, 2020, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 5, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on May 6, 2020.
The Registrar also indicated that the language of the Registration Agreement was English. Since the Complaint was filed in French, the Center sent an email communication to Complainant on May 5, 2020 inviting Complainant to provide sufficient evidence of an agreement between the Parties for French to be the language of proceeding, a Complaint translated into English, or a request for French to be the language of proceedings. Complainant submitted an amended Complaint translated into English on May 6, 2020. Respondent did not submit any comments regarding the language of the proceedings.
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”).
On May 9, 19, and 22, 2020, Respondent sent email communications to the Center that were respectively acknowledged by the Center on May 11, 20, and 25, 2020.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint in English, and the proceedings commenced on May 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2020. The Response was filed in French with the Center on June 13, 2020, to which the Center acknowledged receipt on June 16, 2020.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 23, 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
Complainant was founded in 1855. Complainant describes itself as a French leader in fashion, luxury, and beauty, which operates 19 large retail stores in France under the name PRINTEMPS. Complainant’s annual sales in 2018 in the PRINTEMPS stores and other stores it operates under different names was EUR 1.7 billion. A considerable portion of Complainant’s retail offerings is comprised of women’s clothing and fashion accessories.
Complainant owns numerous registered trademarks for PRINTEMPS in connection with its retail sales, including: French trademark 3971101, registered on December 26, 2012; European Union trademark 001754282, registered on October 31, 2001; and international trademark 1490602, registered on May 20, 2019.
Complainant also conducts its retail business on the Internet. Since 1997, it has owned the domain name <printemps.fr>, and since 1999, it has owned the domain name <printemps.com>.
The Domain Name was registered on July 15, 2019. At first, the Domain Name resolved to a website in French selling women’s clothing and accessories. The Domain Name is currently redirecting to a website operated by Respondent at “www.mode-saison.com”. This site offers women’s clothing and accessories for sale. According to Respondent, it sells clothing and accessories at discount prices, and, unlike Complainant, it does not target the luxury retail consumer.
On April 29, 2020, Complainant sent the web hosting firm an email asking that the content of the site be removed. The hosting firm obtained a response from Respondent’s principal, who claimed that he was unaware of Complainant’s PRINTEMPS mark and that he was from the United Arab Emirates. (It appears from the record that Respondent’s principal is Belgian, and Respondent itself is located in the United Kingdom.) Respondent claimed that it had chosen the Domain Name randomly because it was comprised of two generic words. Finally, Respondent stated: “We could also send an email to […]@galerieslafayette.com to ask their opinion about this.” (Galeries Lafayette is a famous French retailer which sells products similar to those sold by Complainant.)
5. Parties’ Contentions
Based inter alia on the facts set out above, Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent disputes that the Domain Name is confusingly similar to Complainant’s mark, and asserts that it has a legitimate interest in the Domain Name. Respondent also asserts that it did not register or use the Domain Name in bad faith. Respondent also states that it is transitioning its business from “Rose Printemps” to “Mode Saison” but during the transition Respondent needs to maintain its use of the Domain Name because many of its customers have communicated with Respondent via its email address
6. Discussion and Findings
The Panel notes that the Registration Agreement here is in the English language, Complainant submitted an amended Complaint translated into English, and while Respondent submitted its Response in French, the Panel notes that Parties have communicated between each other in English. Therefore, the Panel has opted to accept the Response submitted in French (thus giving Respondent a full and fair opportunity to respond to the allegations made against it) but will render this decision in English.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark PRINTEMPS through widespread registration and longstanding use demonstrated in the record. The Panel also finds that the Domain Name is confusingly similar to the mark. The Domain Name fully incorporates the PRINTEMPS mark, and adds the term “rose-” with a hyphen. The mark is clearly recognizable within the Domain Name (and is moreover the dominant element of the Domain Name).
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. The Panel finds it implausible from this record that Respondent was unaware of Complainant’s well known PRINTEMPS trademark. Respondent is in the same line of business as Complainant, even though Respondent claims to target a less affluent customer base. Removing any doubt, Respondent’s reference, in its communication with Complainant in April 2020, to Galeries Lafayette, makes it even less likely that Respondent was ignorant of the PRINTEMPS mark and retail stores. In addition, Respondent claimed to be from the United Arab Emirates, presumably to bolster the claim that it was unaware of the PRINTEMPS mark, but provides no evidence of this in the record. Indeed, it appears (and Respondent does not dispute) that it is based in the United Kingdom and its principal is Belgian.
The Panel takes note of Respondent’s arguments that the Domain Name is composed of dictionary words (“rose”, a flower, and the French word for “spring”, the season). However, the use of the Domain Name for a fashion-related website aimed at French speakers, noting that Complainant is a large French retail store in the fashion business, coupled with Respondent’s reply to Complainant’s cease and desist letter casts serious doubts on Respondent’s claimed lack of awareness of Complainant, and likewise its claimed intentions with respect to the Domain Name.
In sum, the Panel finds Respondent’s credibility to be dubious in general, given these internal inconsistencies and the implausibility of Respondent’s claim not to have been aware of the PRINTEMPS mark. Because the Panel imputes such knowledge to Respondent, the Panel must conclude that Respondent’s sale of women’s clothing and accessories, which at some level is in competition with one of Complainant’s core activities under the PRINTEMPS mark, is not a bona fide offering of goods or services within the meaning of the UDRP.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the 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 its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent registered and used the Domain Name in bad faith. The Panel incorporates its finding in the previous section that Respondent, on this record, was more likely than not aware of Complainant’s PRINTEMPS brand when registering the Domain Name. The Panel notes that the use of the Domain Name for a fashion-related website aimed at French speakers, and later the redirection of the Domain Name to Respondent’s “mode-saison” domain name, are both actions by Respondent that clearly show the type of attempt to capitalize on Complainant’s mark as described in Policy paragraph 4(b)(iv). The Panel also finds Respondent’s passing threat to bring Complainant’s competitor, Galeries Lafayette, into the discussion surrounding the Domain Name buttresses the Panel’s belief that Respondent is not acting in good faith vis-à-vis the Domain Name. The Panel finds bad faith use within the meaning of the above-quoted Policy paragraph 4(b)(iv).
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <rose-printemps.com> be transferred to Complainant.
Robert A. Badgley
Date: July 6, 2020