WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sorelle Ramonda S.p.a. v. Cedric Costaz
Case No. DEU2019-0020
1. The Parties
The Complainant is Sorelle Ramonda S.p.a., Italy, represented by De Gaspari Osgnach s.r.l., Italy.
The Respondent is Cedric Costaz, France.
2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name <sorelleramondashop.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2019. On December 23, 2019, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On December 24, 2019, the Registry 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 .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 8, 2020. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was February 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2020.
The Center appointed Mihaela Maravela as the sole panelist in this matter on February 27, 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 ADR Rules, Paragraph B(5).
4. Factual Background
The Complainant is an international retailer of clothing articles, footwear, bags, and casual wear in general.
The Complainant is the exclusive owner of several registered trademarks relied on in the Complaint, including:
- the European Union Trademark (“EUTM”) for the word SORELLE RAMONDA with registration number 013627278 registered as of January 20, 2017,
- the EUTM for the word RAMONDASHOP with registration number 013627609 registered as of May 6, 2015,
- the Italian trademark SR stylized with claimed colors red and white, with registration number 0001669846 registered as of April 5, 2016.
The disputed domain name was registered on April 23, 2019, and at the date of the decision resolves to an inactive website. According to the unrebutted evidence put forward by the Complainant, prior to the date of the Complaint the disputed domain name was used to offer for sale goods under the Complainant’s trademarks.
5. Parties’ Contentions
The Complainant argues that the disputed domain name incorporates both the Complainant’s trademarks SORELLE RAMONDA and RAMONDASHOP in their entirety and "SORELLE RAMONDA” or “RAMONDA” is the prevailing and most distinctive element in the disputed domain name, and the word "shop" is mostly descriptive of the retail business.
In addition, the Complainant argues that it has no relationship or association with the Respondent, and it has never authorized him to register the disputed domain name or to use the Complainant’s trademarks, business identifiers, images, pictures, etc. The Respondent is not an agent, licensee or authorized reseller of the Complainant’s goods and the Respondent is not commonly known by the disputed domain name. The Complainant shows that it has learned about the disputed domain name after receiving an email from a customer complaining about a purchase from the website to which the disputed domain name directed. The Complainant shows that at that moment, the disputed domain name directed Internet users to a website which substantially replicated the look, appearance, and content of the Complainant’s website <sorelleramonda.com> and offered the same online retail services. After the Complainant had filed a complaint with the Registrar, the disputed domain name no longer resolved to an active website. The Complainant concludes that the disputed domain name has the sole purpose to confuse consumers into falsely believing that it is affiliated with, connected to, or sponsored by the Complainant for commercial gain.
With regard to the third element, the Complainant contends that the Respondent knew of and targeted the Complainant, its trademarks and business at the time of registering the disputed domain name given that the disputed domain name resolved to a website that closely imitated the appearance of the Complainant’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under Article 21(1) of Regulation (EC) No. 874/2004 and Paragraph B(11)(d)(1) of the ADR Rules, in order for the Complaint to succeed, it is for the Complainant to establish:
(i) that the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law and; either
(ii) that the disputed domain name has been registered by the Respondent without rights or legitimate interests in the name; or
(iii) that the disputed domain name has been registered or is being used in bad faith.
Furthermore Article 22(10) of Regulation (EC) No. 874/2004 provides that “[f]ailure of any of the parties involved in an ADR procedure to respond within the given deadlines or appear to a panel hearing may be considered as grounds to accept the claims of the counterparty”.
A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law
The Complainant has submitted evidence of its rights for the SORELLE RAMONDA and RAMONDASHOP names in the form of registered trademarks rights in the European Union. For the purposes of the present proceedings the Panel holds that the trademark registrations submitted by the Complainant satisfy the requirement of having a right recognized by the European Union law.
The disputed domain name incorporates the Complainant’s trademark SORELLE RAMONDA in its entirety and differs from the said trademark only by the addition of the generic term “shop”.
The fact that a domain name wholly incorporates a complainant’s trademark or a relevant part thereof may be sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The addition of a descriptive term does not serve to distinguish the domain name from the trademark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Here the disputed domain name incorporates the Complainant’s trademark SORELLE RAMONDA in its entirety, in addition to the descriptive term “shop”. The addition of the descriptive term “shop” to the SORELLE RAMONDA trademark of the Complainant does not distinguish the disputed domain name from the Complainant’s trademark.
The country code Top-Level Domain ("ccTLD") ".eu" is disregarded, as ccTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (see Lidl Stiftung & Co. KG v. Name Redacted, WIPO Case No. DEU2018-0012).
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark SORELLE RAMONDA as provided under Paragraph B(11)(d)(1)(i) of the ADR Rules.
B. Rights or Legitimate Interests
Paragraph B(11)(e) of the ADR Rules provides that the following circumstances, without limitation, demonstrate a respondent’s rights or legitimate interests to a domain name for purposes of Paragraph B11(d)(1)(ii):
(1) prior to any notice of the dispute, the respondent has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so;
(2) the respondent, being an undertaking, organization or natural person, has been commonly known by the domain name, even in the absence of a right recognized or established by national and/or Community law;
(3) the respondent is making a legitimate and noncommercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or Community law.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has established that it holds rights over the trademark SORELLE RAMONDA and claims that the Complainant has not licensed, authorized or permitted the Respondent to register a domain name incorporating the Complainant’s trademark. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “sorelle ramonda”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.
From the evidence put forward by the Complainant and not refuted by the Respondent, it results that the website to which the disputed domain name resolved redirected Internet users to a website that copied the Complainant’s official website and was used for selling products under the Complainant’s SORELLE RAMONDA trademark. As held by previous UDRP panels in similar situations, this is not a bona fide offering of goods and services. See, Cube Limited v. Gueijuan Xu, WIPO Case No. D2017-2514. The Respondent has used the Complainant’s logo and trademark on the website to which the disputed domain name resolved, including the stylized SR trademark and logo, to imitate the official website of the Complainant. This represents an act of passing off which cannot be bona fide use. See, Philipp Plein v. Gueijuan Xu, WIPO Case No. D2017-2535.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Cash Converters Pty Ltd v. Mirriam Musonda-salati, WIPO Case No. D2014-1839.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has satisfied the condition set out at Paragraph B(11)(d)(1)(ii) of the ADR Rules.
C. Registered or Used in Bad Faith
Under Article 21(1) of the Regulation (EC) No. 874/2004 and Paragraph B(11)(d)(1) of the ADR Rules, lack of rights or legitimate interests and registration or use in bad faith are considered alternative requirements for a successful complaint. As the Panel has found that the Respondent lacks rights or legitimate interests in the disputed domain name no further discussion on bad faith registration or use is necessary. However, the Panel will briefly address this third element.
The disputed domain name incorporates the Complainant’s trademark and the descriptive word “shop” in addition to the ccTLD “.eu”. The website to which the disputed domain name resolved included the Complainant’s logo and imitated the Complainant’s official website. Under these circumstances, it is likely that the Respondent was aware of the Complainant’s trademark at the registration date of the disputed domain name. As regards the use of the disputed domain name, since the disputed domain name is confusingly similar to the SORELLE RAMONDA trademark of the Complainant and the website to which the disputed domain name resolved redirected users to websites similar to the official website of the Complainant and on such websites products under SORELLE RAMONDA trademark were sold, the Internet users would likely be confused as to the source of the products sold on such website. In this case, the Respondent’s bad faith registration and use is reflected in the Respondent’s unrebutted intention to mislead Internet users into believing that the Respondent is the Complainant, or that the Respondent is acting for the Complainant.
The Panel therefore finds that the Respondent has both registered and used the disputed domain name in bad faith and that the condition set out at Paragraph B(11)(d)(1)(iii) of the ADR Rules has also been satisfied.
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name, <sorelleramondashop.eu> be transferred to the Complainant, which, being located in Italy, satisfies the general eligibility criteria for registration of the disputed domain name set out in Paragraph 4(2)(b) of Regulation (EC) No. 733/2002, as amended by Regulation (EC) No. 2019/517.
Date: March 20, 2020
1 Given the similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”) the Panel will refer to UDRP jurisprudence where appropriate.