Complainant is GANT AB, Sweden, represented by AARPI Scan Avocats, France.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Gabriela Liliana Bica, United Arab Emirates.1
The disputed domain name <gantfranchise.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2019. On November 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 2019, 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 Complainant on November 28, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 2, 2019.
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 Respondent of the Complaint, and the proceedings commenced on December 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 9, 2020.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on January 20, 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 Rules, paragraph 7.
Complainant is a company organized under the laws of Sweden which is active in the fashion industry, particularly in the sportswear market, operating stores in over 70 countries.
Complainant has provided evidence that it is the registered owner of numerous trademarks worldwide relating to its company name and brand GANT, inter alia, the following, all of which predate the registration of the disputed domain name:
- Word mark GANT, United States Patent and Trademark Office (USPTO), registration number: 72465567, registration date: October 15, 1974, status: active;
- Word mark GANT, European Union Intellectual Property Office (EUIPO), registration number: 000161372, registration date: July 21, 2000, status: active;
- Word mark GANT, World Intellectual Property Organization (WIPO), registration number: 1429395, registration date: September 24, 2018, status active.
Complainant, moreover, has evidenced to own, inter alia, the domain name <gant.com>, registered on June 26, 1997, which redirects to Complainant’s official website at “www.gant.com”, promoting Complainant’s business and offering Complainant’s goods for online sale.
Respondent, according to the WhoIs information for the disputed domain name, is a resident of the United Arab Emirates who registered the disputed domain name on July 6, 2019. Complainant has demonstrated that – at some point before the filing of the Complaint – the disputed domain name resolved to a typical pay-per-click (PPC) website displaying links to active third parties’ websites, including references made to Complainant itself as well as to some of Complainant’s direct competitors on the fashion market. Moreover, Complainant has evidenced that Respondent made use of the disputed domain name in order to activate the email address “[...]@gantfranchise.com” and promoted thereunder false franchise opportunities relating to the GANT brand by means of an identity theft and requesting significant franchisee payments made to Respondent.
Complainant requests that the disputed domain name be transferred to Complainant
Complainant contends that it has become, since its foundation in 1949, one of the world leaders in the high-end sportswear market and that the GANT trademarks are widely used and meanwhile well-known worldwide.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s GANT trademark as it identically reproduces the latter with the addition of the generic term “franchise”. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since
(1) Respondent is not known to Complainant and not related to its business, neither as a distributor or in any other way, and
(2) Complainant has never given any authorization or permission whatsoever to Respondent to register or use the disputed domain name.
Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since
(1) given the strong reputation and leading position worldwide of the GANT trademark in the clothing and accessories’ business, it is highly likely that Respondent knew of Complainant and its trademark when registering the disputed domain name, and
(2) Respondent has activated the email address “[...]@gantfranchise.com” in order to promote false franchise opportunities relating to the GANT brand, demonstrating that Respondent is engaging in phishing activities meant to reveal personal and financial information and inducing financial transactions for Respondent’s commercial gain.
Respondent did not reply to Complainant’s contentions.
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent's failure to submit a Response as it considers appropriate.
The Panel concludes that the disputed domain name <gantfranchise.com> is confusingly similar to the GANT trademark in which Complainant has rights.
The disputed domain name incorporates Complainant’s GANT trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g.,PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and is widely agreed among UDRP panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of another term (whether, e.g., descriptive or meaningless) to a trademark in a domain name would not prevent a finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the word “franchise” does not dispel the confusing similarity arising from the incorporation of Complainant’s GANT trademark in the disputed domain name.
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent obviously has not been authorized to use Complainant’s GANT trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term GANT on its own. Finally, Respondent has promoted false franchise opportunities under the disputed domain name relating to the GANT brand by means of an identity theft and, thus, using the disputed domain name in an attempt to induce third parties into making financial transactions to Respondent’s commercial gain and illegal advantage; such use neither qualifies as bona fide nor as legitimate noncommercial or fair within the meaning of the Policy.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, it has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The circumstances to this case leave no doubt that Respondent was fully aware of Complainant’s rights in the GANT trademark (notwithstanding its claimed worldwide recognition) when registering the disputed domain name and that the latter clearly is directed thereto. Moreover, using the disputed domain name for phishing activities by sending via email false franchise opportunities relating to the GANT brand in order to induce third parties into making financial transactions to Respondent’s illegal advantage, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own email communication by creating a likelihood of confusing with Complainant’s GANT trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s email. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the larger meaning of paragraph 4(b)(iv) of the Policy.
In this context, the Panel has also noted that Respondent not only made use of a WhoIs Privacy Service in order to conceal its true identity, but also provided fault or incomplete contact information in the WhoIs register for the disputed domain name since, according to the email correspondence between the Center and the postal courier DHL, the Written Notice on the Notification of Complaint dated December 17, 2019, could not be delivered. These facts at least throw a light on Respondent’s behavior which supports the Panel’s bad faith finding
Therefore, the Panel holds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).
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 <gantfranchise.com> be transferred to Complainant.
Stephanie G. Hartung
Date: January 31, 2020
1 It is evident from the case file that WhoisGuard Protected, WhoisGuard Inc., Panama, is a privacy protection service and that Gabriela Liliana Bica, United Arab Emirates, is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.
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