WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sandro Andy v. Jonathan Barzel

Case No. DAU2017-0004

1. The Parties

The Complainant is Sandro Andy of Paris, France, represented by Nameshield, France.

The Respondent is Jonathan Barzel of Carnegie, Victoria, Australia.

2. The Domain Name and Registrar

The disputed domain name <sandro.com.au> is registered with Web Address Registration Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 24, 2017. On February 24, 2017, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the disputed domain name. On February 27, 2017, Web Address Registration Pty Ltd 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 .au Dispute Resolution Policy (the "Policy"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 2, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2017. On March 23, 2017, the Center received two email communications from the Respondent, requesting an extension of time. The Center granted the Respondent an extension of four calendar days and informed the Parties that the new Response due date was March 26, 2017. The Respondent did not submit any response. Accordingly, on March 27, 2017, the Center notified the Parties that panel appointment would commence.

The Center appointed Andrew F. Christie as the sole panelist in this matter on April 4, 2017. 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 in the fashion industry, created in 1984. Its fashion articles for men and women are sold in France and other countries, including Australia.

The Complainant owns a trademark registration for the word mark SANDRO in a number of countries, including Australia. The earliest of these trademark registrations dates from March 4, 2004. The Australian trademark registration dates from October 13, 2014. The Complainant is the registrant of a number of domain names incorporating its trademark SANDRO, including <sandro.fr>, <sandro-paris.com>, <sandro.ie> and <sandro.sg>.

The disputed domain name was registered on December 21, 2015. It does not resolve to any website.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to a trademark in which it has rights because it includes in its entirety the Complainant's trademark SANDRO, and the country code Top-Level Domain ("ccTLD") identifier ".au" and Second-Level Domain ("2LD") identifier ".com" do not change the impression of the disputed domain name as being connected with the trademark of the Complainant.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Respondent is not related in any way with the Complainant; (ii) the Complainant does not carry out any activity for, nor has any business with, the Respondent; (iii) the Complainant has not granted a license or authorization to the Respondent to make use of the Complainant's SANDRO trademark; (iv) the Respondent is not known by the name "Sandro" or "sandro.com"; (v) the disputed domain name points to an inactive page since its registration; and (vi) the Respondent is not engaged in a bona fide offering of goods or services, but has used the disputed domain name in connection with a website that misleads consumers into thinking that the Respondent is the Complainant, and is now passively holding the disputed domain name.

The Complainant contends that the disputed domain name was registered or is being used in bad faith because: (i) the disputed domain name is identical to the Complainant's trademark SANDRO and the Respondent is not known by the disputed domain name, and therefore the Respondent registered the disputed domain name in the knowledge of the Complainant; and (ii) the disputed domain name has been inactive since its registration demonstrating a lack of legitimate interest in it, and a passive holding of it, which is considered by numerous panels to be bad faith use.

B. Respondent

The Respondent did not submit any response to the Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

When the ccTLD identifier ".au" and the 2LD identifier ".com" are ignored (as is appropriate in this case), the disputed domain name <sandro.com.au> consists solely of the Complainant's registered trademark SANDRO. Accordingly, the Panel finds that the disputed domain name <sandro.com.au> is identical to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its SANDRO trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The Complainant made two seemingly inconsistent assertions about the Respondent's use of the disputed domain name: (i) that "the domain name points to an inactive page since its registration"; and (ii) that the Respondent "has used the disputed domain name in connection with a website that misleads consumers into thinking that the Respondent is the Complainant". The only evidence provided by the Complainant about the Respondent's use of the disputed domain name is a screenshot stating (in French) that the Complainant's web browser could not find the server at the address of the disputed domain name. The Panel concludes that the Complainant's second assertion (that the Respondent used the disputed domain name in connection with a website) was made in error, and that the first assertion (that the disputed domain name has been inactive since registration) is correct. On that basis, the present record shows that the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate non‑commercial or fair use. Accordingly, on balance, and without any further explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered or Subsequently Used in Bad Faith

The disputed domain name was registered a number of years after the Complainant first registered its SANDRO trademark. The evidence on the record provided by the Complainant with respect to its use of its SANDRO trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant's trademark and knew that it had no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the disputed domain name was registered in bad faith.

Because paragraph 4(a)(iii) of the Policy expresses the bad faith requirement in the alternative ("has been registered or subsequently used in bad faith"), this requirement is satisfied by the Panel's finding that the disputed domain name was registered in bad faith. There is, therefore, no need for the Panel to address – and, consequently, the Panel does not address – the Complainant's assertion that the Respondent has used the disputed domain name in bad faith.

7. Decision

For all 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 <sandro.com.au> be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: April 18, 2017