WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Les Parfumeries Fragonard v. Nawaf Hariri, Salla
Case No. D2021-2454
1. The Parties
The Complainant is Les Parfumeries Fragonard, France, represented by Inlex IP Expertise, France.
The Respondent is Nawaf Hariri, Salla, Saudi Arabia.
2. The Domain Name and Registrar
The disputed domain name <bringfragonard.com> (the “Domain Name”) is registered with Name.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2021. On July 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 29, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 September 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2021.
The Center appointed Gregor Vos as the sole panelist in this matter on November 4, 2021. 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 active in the perfume industry.
The Complainant is the owner of inter alia the following trademark registrations (hereinafter jointly referred to as: the “Trademarks”):
- French registration No. 1327342 for FRAGONARD registered on October 18, 1985;
- United States of America registration No. 2026820 FRAGONARD registered on December 31, 1996; and
- European Union registration No. 012235941 for FRAGONARD registered on March 12, 2014.
Further, it is undisputed that the Complainant is the holder of inter alia the following domain names:
- <fragonard.co.uk>; and
The Domain Name was registered on July 13, 2021 and currently resolves to a website on which purportedly different perfume articles of the Complainant are offered for sale.
5. Parties’ Contentions
With the Complaint, the Complainant seeks that the Domain Name is transferred to the Complainant. The Complaint is based on the following factual and legal grounds: the Domain Name is identical or confusingly similar to the Trademarks of the Complainant, the Respondent has no rights or legitimate interests in the Domain Name and the Domain Name has been registered and is being used in bad faith.
Firstly, according to the Complainant, the Domain Name is identical or confusingly similar to its well-known Trademarks. The Domain Name reproduces the Trademarks entirely with the mere addition of the generic Top-Level Domain (“gTLD”) “.com” and the verb “bring”.
Secondly, according to the Complainant, the Respondent has no rights or legitimate interests in the Domain Name. The Respondent holds no prior trademark registrations and has never received a license or any other form of authorization from the Complainant to use the Trademarks. Further, on the website linked to the Domain Name, products identical to those of the Complainant are offered for sale by using the Complainant’s logo and visuals. This leads to a risk of confusion, because consumers will think that the website linked to the Domain Name is the official website of the Complainant or that of an authorized reseller, which is not the case. Also, the current use of the Domain Name tarnishes the Complainant’s Trademarks.
Finally, according to the Complainant, the Respondent has registered and is using the Domain Name in bad faith. In light of the well-known character of the Complainant’s Trademarks, it is inconceivable that the Respondent selected the Domain Name without knowledge of the Complainant’s Trademarks. Therefore, the Respondent registered the Domain Name with the sole purpose of taking undue advantage of the Complainant’s Trademarks. Also, the Complainant is convinced that the Respondent has provided false information when registering the Domain Name, which amounts to bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(f), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complainant’s undisputed factual presentations.
For the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
(i) the Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) the 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.
Only if all three elements have been fulfilled, the Panel is able to grant the remedy requested by the Complainant. The Panel will deal with each of the requirements in turn.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the Domain Name is (i) identical or confusingly similar to a trademark or service mark, (ii) in which the Complainant has rights.
With respect to having rights pursuant to paragraph 4(a)(i) of the Policy, it is noted that the Complainant is registered as the owner of numerous Trademarks FRAGONARD. Consequently, the Panel finds that the Complainant has proven that it has rights in the Trademarks.
With regard to the assessment of identity or confusing similarity of the Domain Name with the Trademarks, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between the Complainant’s Trademarks and the Domain Name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark (see section 1.7 of the WIPO Overview 3.0).
In the present case, the Trademarks are incorporated in their entirety in and are recognizable within the Domain Name. The addition of the gTLD “.com” and the term “bring” does not prevent a finding of confusing similarity with the Trademarks (see sections 1.8 and 1.11 of the WIPO Overview 3.0). Consequently, the Panel finds that the requirement under paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name. The onus of proving this requirement, like each element, falls on the Complainant. Given the difficulty in proving a negative, however, it is usually sufficient for a complainant to make out a prima facie case that a respondent lacks rights or legitimate interests. If a complainant does establish a prima facie case, the burden of production shifts to the respondent (see, e.g.,WIPO Overview 3.0, section 2.1; Sanofi v. Cimpress Schweiz GmbH, WIPO Case No. D2017-0522).
Paragraph 4(c) of the Policy lists three non-limitative examples of instances in which a respondent may establish rights or legitimate interests in the disputed domain name.
The Complainant has substantiated that none of these circumstances apply in this case. By defaulting, the Respondent has failed to rebut the prima facie case established by the Complainant. Furthermore, based on the record before it, the Panel does not see an indication that any of the circumstances of paragraph 4(c) of the Policy is present.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. Paragraph 4(a)(ii) of the Policy is thereby fulfilled.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, a complainant must show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four non-limitative circumstances which may be considered as evidence of registration and use in bad faith of a domain name.
In the present case, the Trademarks are registered by the Complainant and have been used for many years. The Complainant’s rights to the Trademarks predate the registration date of the Domain Name. In light of the well-known character of the Trademarks, the Panel agrees with the Complainant that it is not conceivable that the Respondent chose the Domain Name without knowledge of the Complainant’s activities and its Trademarks under which the Complainant is doing business. The well-known character of the Trademarks of the Complainant has been confirmed by earlier UDRP panels (see, e.g., Les Parfumeries Fragonard v. Sunny Elemba, WIPO Case No. D2020-1648; Les Parfumeries Fragonard v. Jean -Claude Maitre, WIPO Case No. D2020-0709).
Further, the Domain Name resolves to a website purportedly offering for sale different perfume articles of the Complainant without accurately and prominently disclosing the Respondent’s relationship with the Complainant. In light of the lack of any rights to or legitimate interests in the Domain Name by the Respondent and in the absence of any conceivable good faith use of the Domain Name, the Panel finds from the present circumstances that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s Trademarks as to the source, sponsorship, affiliation or endorsement(see, e.g., “Dr. Martens” International Trading GmbH / “Dr. Maertens” Marketing GmbH v. Joan Mitchell, WIPO Case No. D2018-0226).
Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith and that the third element of paragraph 4(a)(iii) of the Policy is fulfilled.
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 <bringfragonard.com> be transferred to the Complainant.
Date: November 18, 2021