WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SCABAL S.A. v. Paul Lee, Paul Lee / F&C Investment / Yuyang Ren / PremiumDomainSeller / Dilyz, dilyzdavies

Case No. D2021-4035

1. The Parties

The Complainant is SCABAL S.A., Belgium, represented by Gevers, Belgium.

The Respondent is Paul Lee, Paul Lee, United States of America (“United States”) / F&C Investment, Canada / Yuyang Ren, United States / PremiumDomainSeller, United States / Dilyz, dilyzdavies, United Kingdom.

2. The Domain Names and Registrars

The disputed domain name <dealscabal.com> is registered with GoDaddy.com, LLC (the “first Registrar”).

The disputed domain name <scabalbespoke.com> is registered with Network Solutions, LLC (the “second Registrar”).

The disputed domain names <scabal.org> and <scabal.xyz> are registered with Sav.com, LLC (the “third Registrar”).

The disputed domain name <scabals.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “fourth Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2021. On December 3, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On December 3, 2021, the first Registrar transmitted by email to the Center its verification response confirming it is the Registrar for <dealscabal.com> (the “first disputed domain name”) but disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. On December 3, 2021, the second Registrar transmitted by email to the Center its verification response confirming it is the Registrar for <scabalbespoke.com> (the “second disputed domain name“) and the name and the contact information in the Complaint. On December 3, 2021, the third Registrar transmitted by email to the Center its verification response confirming it is the Registrar for <scabal.org> (the “third disputed domain name”) and <scabak.xyz> (the “fourth disputed domain name”) but disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. On December 4, 2021, the fourth Registrar transmitted by email to the Center its verification response confirming it is the Registrar for <scabals.com> (the “fifth disputed domain name “) but disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint.

Each Registrar confirmed that the language of their respective registration agreements was English.

The Center sent an email communication to the Complainant on December 5, 2021, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 9, 2021.

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 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2022. The Center received informal communications from the Respondents on December 31, 2021 and January 2, 2022.

On January 3, 2022, the Center replied to the email from the second Respondent received on December 31, 2021 directing attention to information providing guidelines for the filing of a Response.

On January 3, 2022 following receipt of the email communication on behalf of the first Respondent on January 2, 2022, the Center emailed the parties drawing their attention to the possibility to explore settlement options.

As the parties did not choose to explore settlement options further, the Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 20, 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

According to the Complaint, the Complainant is one of the world’s most prestigious tailors specializing in luxury fabrics and made to measure clothing. Amongst other things, it has provided fabrics and garments to persons such as President Barack Obama and celebrities including Leonardo DiCaprio, Robert De Niro, Marlon Bando, Will Smith, Daniel Craig, and Pierce Brosnan. It has also supplied its fabrics to prestigious fashion houses including Lanvin, Prada, Hermes, Brioni, Ralph Lauren, Tom Ford, and Gucci.

The business now being operated by the Complainant was established as a family company in Belgium in 1946. It has been operating continuously since then under and by reference to the trademark SCABAL. It has annual turnover of EUR 42 million, with its products being distributed in more than 60 markets.

Amongst other things, it has registered trademarks for SCABAL in at least 60 jurisdictions including:

(a) United States Registered Trademark No. 1,004,547, which was filed on March 2, 1972 and registered on February 11, 1975 in respect of textile fabrics for clothing and accessories in International Class 24;
(b) United States Registered Trademark No. 1,354,217, which was filed on March 26, 1984 and registered on August 13, 1985 in respect of clothing in International Class 25;

(c) European Union Trademark No. 003059821, which was filed on February 19, 2003 and registered with effect from that date on December 27, 2004 in in respect of goods and services in International Classes 16, 24, 25 and 35; and

(d) International Registration No. 834872, which was filed on September 13, 2004 in respect of goods and services in International Classes 16, 24, 25 and 35 and designating Benelux, Turkey, Azerbaijan, Russian Federation, and Viet Nam.

The disputed domain names were registered on various dates between March 31, 2021 and November 5, 2021.

Since registration, the first disputed domain name has resolved to a parking page with what appear to be pay-per-click (“PPC”) links to various activities including “Casino Francais en Ligne”, “Formalités Administratives”, “Achat Kamas” and “Location de Smartphones”.

The second disputed domain name resolves to another parking page with a different collection of PPC links such as dry cleaning and various clothing brands or stores which do not appear to be related to the Complainant.

The third and fourth disputed domain names resolve to websites headed, respectively, “The domain name Scabal.org is for sale | Dan.com” and “The domain name Scabal.xyz is for sale | Dan.com”.

The fifth disputed domain name resolves to another parking page displaying PPC links to electronics products.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(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 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

A. Consolidation of complaints

The Complainant has requested consolidation of its complaints as the disputed domain names have been registered in the names of a number of different entities.

Paragraph 3(c) of the Rules expressly permits a complaint to relate to more than one domain name where all the domain names are registered by the same domain name holder. Notwithstanding this express provision, panels have frequently held that the Panel’s powers under paragraph 10(e) of the Rules may permit consolidation of multiple domain name disputes, subject to satisfaction of the other requirements of Policy and Rules. In particular, paragraph 10(b) of the Rules requires the Panel to ensure that all parties are treated equally and each is given a fair opportunity to present his, her or its case.

In accordance with those requirements, panels have typically allowed joinder against multiple respondents who have registered different domain names where, amongst other things, the domain names in question, or the websites to which they resolve, appear to be under common control and consolidation would be fair and equitable to all parties. The onus of establishing that these requirements have been met falls on the party seeking consolidation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.

In the present case, the Panel considers it appropriate to permit consolidation. All of the disputed domain names are based on the same trademark – SCABAL. It also appears from the circumstances discussed in Section 5B below that all the disputed domain names are held by or under the control of the first Respondent. Given the voluntary offer of surrender discussed in Section 5B, no useful purpose would be served by requiring separate proceedings to be filed.

B. Voluntary surrender

The email received by the Center on December 31, 2021 was from the second Respondent in respect of the first disputed domain name. It simply inquired what was expected of the Respondent and, as noted above, the Center replied directing attention to the online information provided to assist with preparation of a Response.

The subsequent email received by the Center on January 2, 2022 was sent under the name “Jac Hsieh”. It stated Mr Hsieh represented the first Respondent and claimed that, as none of the disputed domain names had “been used for any commercial purpose”, the first Respondent wished to surrender them all without any conditions.

Mr Hsieh’s email did not disclose his professional capacity or his connection with any of the Respondents other than that he represented the first Respondent. Mr Hsieh’s email was copied only to the first Respondent and the Complainant’s representatives. In drawing attention to the settlement options, however, the Center’s email on January 3, 2022 was addressed to all parties and all Registrars. Mr Hsieh’s email offering surrender was also attached to the Center’s email. Despite that distribution, no further communications were received from any Respondents.

Where a respondent unilaterally volunteers to surrender the domain name the subject of a complaint under the Policy, it can be appropriate for the Panel to accept that unilateral offer and order transfer. See e.g. WIPO Overview 3.0, section 4.10. As noted there, however, in some cases it is appropriate to consider the case on its merits.

In the present case, three considerations lead to the Panel accepting the unilateral offer and ordering transfer of the disputed domain names to the Complainant.

First, Mr Hsieh’s email was copied by the Center to each Respondent at the electronic co-ordinates confirmed by the respective Registrars. No Respondent denied Mr Hsieh’s claim that the first Respondent was the holder or controlled all the disputed domain names. And no Respondent objected to the offer to surrender the disputed domain names.

Secondly, according to the Complainant, the addresses provided to the Registrars for the second and third Respondents do not exist. While the address for the fourth Respondent does exist, it is Samsung’s headquarters in the United Kingdom. As noted above, the second Respondent did send an email to the Center on December 31, 2021 using the email address confirmed by the Registrar. However, the second Respondent did not contest Mr Hsieh’s authority or communication of the surrender offer.

Thirdly, and in any event, even a cursory consideration of the substantive merits confirms that the Complaint must succeed against each Respondent in respect of all disputed domain names. The Panel will address each of these matters briefly below.

C. Identical or Confusingly Similar

The Complainant has established ownership of several registered trademarks for SCABAL.

Disregarding the Top Level Domain as a functional component of the domain naming system (see e.g. WIPO Overview 3.0, section 1.11), the third disputed and fourth domain names are identical to the Complainant’s trademark.

The other disputed domain names consist of the Complainant’s trademark plus a term or typographical element – the word “bespoke”, the word “deal” or the suffix “s” to read as a plural. This does not avoid a finding of confusing similarity. See e.g. WIPO Overview 3.0, section 1.8. In each case, the Complainant’s trademark is visually and aurally recognizable. Accordingly, the Panel finds that these three disputed domain names are confusingly similar to the Complainant’s trademark.

Accordingly, the Panel finds that the requirement under the first limb of the Policy is satisfied for each disputed domain name.

D. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

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

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.

The disputed domain names were registered in the names of the respective Respondents long after the Complainant registered its trademarks and also long after the Complainant began using its trademark.

The Complainant states that it has not authorised any of the Respondents to use the disputed domain name. Nor are any of the Respondents affiliated with it.

The disputed domain names are not derived from any Respondent’s name. Nor is there any suggestion of some other name by which any of the Respondents is commonly known from which the disputed domain name could be derived. From the available record, the Respondents do not appear to hold any trademarks for the disputed domain names.

According to Wikipedia, SCABAL is an acronym for Société Commercial Anglo Belgo Allemande Luxembourgeoise. So far as the record in this case shows, therefore, the term SCABAL is an invented word without any descriptive or meaning other than its adoption and use by the Complainant as its name and trademark.

In these circumstances, merely offering for sale the third and fourth disputed domain names does not constitute a good faith offer of goods or services. Similarly, using to the first, second and fifth disputed domain names to resolve to websites which merely provide PPC links does not qualify as a good faith offering of goods or services for the purposes of paragraph 4(c)(i). Bearing in mind the name SCABAL appears to be an invented term which has significance solely from its adoption as the Complainant’s name and trademark, both types of use take advantage of the Complainant’s trademark to attract users to those websites. Use of the Complainant’s trademark in that fashion without its permission does not qualify as a right or legitimate interest under the Policy. See e.g. WIPO Overview 3.0, section 2.9.

Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.

E. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain names have been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd., WIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

As the trademark SCABAL appears to be an invented term which has been in use for decades before any Respondent registered any of the disputed domain names, the reasonable inference is that the Respondents adopted the disputed domain names incorporating that trademark with knowledge of it particularly in circumstances where no Respondent has made any attempt to explain how it came to register domain names containing the Complainant’s trademark.

Given the manner of use of the disputed domain names either merely to offer them for sale or to generate revenues through PPC advertising, therefore, it can be inferred that each of the disputed domain names was registered and is being used in bad faith.

Accordingly, the Complainant has established all three requirements under the Policy.

6. 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, <dealscabal.com>, <scabalbespoke.com>, <scabal.org>, <scabals.com>, and <scabal.xyz>, be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: February 3, 2022