WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Molicopi, S.L. v. Julius Bergman and Client Care, Web Commerce Communications Limited

Case No. D2021-3421

1. The Parties

The Complainant is Molicopi, S.L., Spain, represented by PADIMA TEAM SLP, Spain.

The Respondents are Julius Bergman, France, and Client Care, Web Commerce Communications Limited, Malaysia.

2. The Domain Names and Registrars

The disputed domain names <pikolinosaustralia.com>, <pikolinoscanada.com>, <pikolinoschaussures.com>, <pikolinosireland.com>, <pikolinosmalaysia.com>, <pikolinosphilippines.com>, <pikolinosrebajas.com>, <pikolinossouthafrica.com>, and <pikolinosuk.com> are registered with 1API GmbH (the “Registrar”).

The disputed domain name <pikolinosrebaja.com> is registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2021. On October 18, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 18, 2021 and October 19, 2021, the Registrars transmitted by email to the Center its verification response disclosing registrants and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint.

On October 19, 2021, and October 21, 2021, the Complainant filed the first amended Complaint. On October 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the added disputed domain name. On October 21, 2021, 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 November 2, 2021, providing the registrants and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

On November 5, 2021, the Complainant filed the second amended Complaint. On November 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the added disputed domain names. On November 17, 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 sent an email communication to the Complainant on November 23, 2021, regarding multiple underlying registrants.

On November 24, 2021, the Complainant filed the third amended Complaint. On November 25, 2021, the Center issued a Notification of (Partial) Withdrawal regarding several domain names that the Complainant removed from the present proceedings via the third amended Complaints.

The Center verified that the Complaint together with the amended Complaints 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 November 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 29, 2021.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on January 31, 2022. 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 based in Spain and manufactures and sells leather goods and accessories in various countries as well as through its website available at “www.pikolinos.com”. It is the owner of the following (Annex 4 to the Third Amended Complaint) trademark registrations:

- European Union registration No. 003813177 for the word and device mark PIKOLINOS, registered on August 27, 2010, in classes 3, 35 and 39; and

- European Union registration No. 009426776 for the word and device mark PIKOLINOS, registered on March 9, 2012, in classes 3, 9, 10, 14, 16, 18, 25, 26 and 35.

The domain names under dispute are the following:

5. Parties’ Contentions

A. Complainant

According to the Complainant, the disputed domain names are under common control given that (i) the disputed domain names have a similar naming pattern, all of them consisting of the reproduction of the Complainant’s trademark with the addition of either the name of a country (“Australia”, “Canada”, “Ireland”, “Malaysia”, “Philippines”, “South Africa”, or “UK”) or a term (“chaussures”; “rebaja” or “rebajas”); (ii) the webpages to which the disputed domain names resolve are almost identical, all reproducing the Complainant’s trademark, logo and official images; (iii) the disputed domain names were registered within a relatively short time window (five on September 18, 2021; two on October 12, 2021; two on October 18, 2021 and a last one on November 10, 2021); (iv) nine of the ten disputed domain names have the same registrant indicated (“Julius Bergman”) and the Complainant believes that the remaining disputed domain name, <pikolinosrebaja.com>, is under the same control with the other nine disputed domain names, as the disputed domain name <pikolinosrebajas.com> redirects Internet users to <pikolinosrebaja.com>.

The Complainant asserts to be a well-known leather goods and accessories manufacturer whose goods are sold throughout the world under the PIKOLINOS trademark.

Under the Complainant’s view, the disputed domain names incorporate the Complainant’s PIKOLINOS trademark in its entirety, and the addition of country names or abbreviations or terms (“Australia”, “Canada”, “Ireland”, “Malaysia”, “Philippines”, “South Africa”, “UK”, “chaussures” (shoes in French), “rebaja” (“sale”, in Spanish) or “rebajas” (“sales”, in Spanish)) does not prevent a finding of confusing similarity.

Regarding the absence of the Respondents’ rights or legitimate interests, the Complainant argues that:

i) the disputed domain names were registered without the Complainant’s authorization;
ii) the selection of the disputed domain names, including country names or terms associated with the Complainant’s products and trade shows the Respondent’s intent to induce confusion amongst Internet users; and
iii) the Respondent is not commonly known by the disputed domain names.

As to the registration and use of the disputed domain names in bad faith, the Complainant states that:

i) the Respondents knew of the Complainant’s trademark when registering the disputed domain names given the reproduction of the Complainant’s trademark and products in the websites relating to the disputed domain names;

ii) the use of the disputed domain names evidently seeks to capitalize on the reputation of the Complainant’s trademark by diverting Internet users seeking PIKOLINOS products to its websites for financial gain, by intentionally creating a likelihood of confusion with the Complainant’s registered trademarks as to the source, sponsorship, affiliation, or endorsement of its websites and/or the goods offered or promoted through said websites.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain names.

In accordance with paragraph 14(a) of the Rules, if the Respondents do not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

Before turning to these questions, however, the Panel needs to address the issue of the consolidation of multiple Respondents.

A. Consolidation of Multiple Respondents

The Complainant requests that this Panel accept multiple Respondents in a single proceeding in view of the facts enumerated at the section 5.A. above.

Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) establishes that “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”

All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have the ten disputed domain names dealt with in the same proceedings, given that: (a) the disputed domain names were registered in bulks and within the months from September to November 2021; (b) all disputed domain names share a similar naming pattern; (c) all of the disputed domain names resolve or redirect to identical or extremely similar websites featuring the PIKOLINOS trademark, logo and products prominently displayed; (d) (iv) nine of the ten disputed domain names have the same registrant indicated (“Julius Bergman”) and one of the above mentioned disputed domain name <pikolinosrebajas.com> redirects Internet users to the remaining disputed domain name <pikolinosrebaja.com>; and (e) no objection was made by the Respondents regarding consolidation.

This Panel is satisfied, in view of the evidence submitted and on balance that the disputed domain names are indeed subject to a common control and that consolidation would be fair and equitable to all Parties.

B. Identical or Confusingly Similar

The Complainant has established rights over the PIKOLINOS trademark duly registered.

The disputed domain names reproduce the Complainant’s trademark in its entirety. The addition of terms (“chaussures” (shoes in French); “rebaja” (“sale”, in Spanish) or “rebajas” (“sales”, in Spanish)), country names (“Australia”, “Canada”, “Ireland”, “Malaysia”, “Philippines” or “South Africa”) or country abbreviation (“uk” for United Kingdom) do not prevent a finding of confusing similarity.

It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name” (WIPO Overview 3.0, section 1.7).

For the reasons above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondents’ rights or legitimate interests in the disputed domain names. These circumstances are:

(i) before any notice of the dispute, the Respondents’ use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondents (as individuals, businesses, or other organizations) have been commonly known by the disputed domain names, in spite of not having acquired trademark or service mark rights; or

(iii) the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondents, in not responding to the Complaint, have failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondents under the second UDRP element.

In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondents, which have not been commonly known by the disputed domain names and neither have received the Complainant’s consent to use the PIKOLINOS trademark in connection with the disputed domain names, also not being affiliated or connected with the Complainant.

Also, according to the evidence submitted by the Complainant, the use made of the disputed domain names in connection with online shops depicting the Complainant’s products and trademark clearly suggests at least an affiliation with the Complainant which in fact does not exist. Such use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain names in these circumstances.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondents do not have rights or legitimate interests with respect to the disputed domain names.

D. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, both the registration and use of the disputed domain names in bad faith can be found pursuant to Policy, paragraph 4(b)(iv) in view of the reproduction of the Complainant’s products and trademark on the online shops available at the disputed domain names.

Two other factors that corroborate the Panel’s finding of bad faith of the Respondents are:

a. the absence of a formal Response by the Respondents; and
b. the indication of what appears to be false or incomplete contact details provided in WhoIs information relating to the disputed domain names, communications not being delivered to them by courier.

For the reasons above, the Respondents’ conduct has to be considered, in the Panel’s view, as bad faith registration and use of the disputed domain names.

7. Decision

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, <pikolinosaustralia.com>, <pikolinoscanada.com>, <pikolinoschaussures.com>, <pikolinosireland.com>, <pikolinosmalaysia.com>, <pikolinosphilippines.com>, <pikolinosrebaja.com>, <pikolinosrebajas.com>, <pikolinossouthafrica.com> and <pikolinosuk.com>, be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: February 14, 2022