The Complainant is Les Parfumeries Fragonard, France, represented by Inlex IP Expertise, France.
The Respondent is Jean-Claude Maitre, France.
The disputed domain name <fragomard.com> is registered with Shinjiru Technology Sdn Bhd (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2020. On March 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2020, 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, while copying the Respondent, on March 26, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Further to this email communication, the Center received an email communication from the Respondent asking the Center for some clarification and explanation. The Complainant filed an amended Complaint on March 30, 2020.
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 April 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2020. On April 3, 2020, the Center received an email communication from the Respondent asking the Center about its options. No further communication was received from the Respondent. Accordingly, on April 25, 2020 the Center informed the Parties that it will proceed to appoint a panel.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on May 5, 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.
The Complainant is a French company, based in Grasse, manufacturing and selling perfumery and cosmetic products.
According to the Complainant, it is one of the three oldest perfume factories in the city of Grasse, the world capital of perfume since the late 17th century, and is selling products branded FRAGONARD in numerous stores and corners in the whole world. In addition, FRAGONARD-branded products are also sold by mail-order and online on its official website store.
The Complainant owns a large portfolio of registered trademarks containing the term FRAGONARD, including, inter alia, International trademark no. 312110 registered on April 15, 1966 (together referred to hereinafter as: “the Mark”).
The Complainant owns the <fragonard.com> domain name, which resolves to its official website.
The disputed domain name <fragomard.com> was registered on December 26, 2019.
The disputed domain name was initially registered in the name of a proxy service. The identity of the Respondent was disclosed by the Registrar in response to the Center’s request for registrar verification in connection with the disputed domain name.
The Complainant has submitted evidence that the disputed domain name, which redirected to an error page, was used to activate a mail exchange server.
(i) The Complainant submits that the disputed domain name reproduces the Mark, in which the Complainant has rights, and is confusingly similar to the Mark insofar as the disputed domain name, <fragomard.com>, contains the distinctive element “fragonard” in its entirety, except that the letter “n” in the middle has been substituted by the letter “m”, which visually and phonetically is not capable of dispelling the confusing similarity.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it never authorized the Respondent to use the Mark in any manner and that the Respondent has never had any affiliation with the Complainant.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant alleges that the Mark being well-known and famous in the field of perfumes, the Respondent had knowledge of the Mark when registering the disputed domain name.
(iv) The Complainant submits that by its passive holding, the Respondent is using the disputed domain name in bad faith.
(v) The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
Further to the two aforementioned emails sent by the Respondent in March and April 2020, and the replies thereto by the Center, no Response was received from the Respondent.
Under the Rules, paragraphs 5(f) and 14(a), the effect of a failure to submit a formal response by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even in the absence of a formal response.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s failure to file a formal response as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy or otherwise, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
In comparing the Mark with the disputed domain name <fragomard.com>, it is evident that the latter consists of the Mark (save that the Mark’s middle letter “n” has been replaced by the letter “m”), followed by the generic Top-Level Domain (“gTLD”) “.com”.
It is well established that a gTLD does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity.
The Panel finds that the disputed domain name <fragomard.com> is confusingly similar to the Mark, which is incorporated in its entirety, save that the middle letter “n” is replaced by the letter “m”, and that the modification of that letter in the disputed domain name does not avoid a finding of confusing similarity, because the Mark remains sufficiently recognizable within the disputed domain name.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy, this could result in the often impossible task of proving a negative proposition, requiring information that is primarily, if not exclusively, within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of rights or legitimate interests in a domain name, once the complainant has made a prima facie showing, as the Panel finds the Complainant has made in this case, based on the facts and arguments set out above. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name or uses (or has made bona fide preparations to use) the disputed domain name in a business or otherwise.
The disputed domain name resolves to an error page.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no affiliation with the Complainant and (ii) received no authorization from the Complainant to register or use the disputed domain name.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant in registering a domain name confusingly similar to the Mark, which can be considered as “typosquatting”.
It is established in prior UDRP decisions that where the respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In this case, given that the Mark is well-known (see Les Parfumeries Fragonard v. Stanislav Petryashov, WIPO Case No. D2019-1088), the Panel finds that it is impossible to believe that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384, citing Cellular One Group v. PaulBrien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092.
Prior UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible, considering the specificity of the activity (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148). The Panel finds it is indeed not possible to imagine any plausible future active use of the disputed domain name that would not be illegitimate, considering the specificity of the Complainant’s activity and the fact that the disputed domain name is a typosquatted version of the Mark.
Moreover, it is well established that the mere passive holding of a domain name may in appropriate circumstances be evidence not only of bad faith registration, but also of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; and Alitalia–Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260.
Furthermore, the Panel notes that the Complainant has also argued and provided evidence that the disputed domain name has been used to create a mail exchanger record (MX Record) which allows the Respondent to use email addresses with the suffix “@fragomard.com” for commercial emailing, spamming or phishing purposes. Previous UDRP Decisions inferred from the activation of MX servers a bad faith behavior (see Robertet SA v. Marie Claude Holler, WIPO Case No. D2018-1878).
Prior UDRP panels have held that deliberate concealment of identity and contact information may in certain circumstances be indicative of bad faith (see TTT Moneycorp Limited v. Diverse Communications, WIPO Case No. D2001-0725, and Schering Corporation v. Name Redacted, WIPO Case No. D2012-0729). In this case, the Respondent has taken active steps to hide its identity and has submitted no evidence of any good faith use of the disputed domain name. The Panel also notes that although using a proxy service to hide the identity of the registrant is not per se conclusive of bad faith registration and use (see Trinity Mirror Plc and MGN Ltd. v. Piranha Holdings, WIPO Case No. D2008-0004), the fact that the Respondent used a proxy service to hide its identity and contact details prevented the Complainant from contacting it.
Finally, prior UDRP panels have held that in certain circumstances, registrants of domain names have an affirmative duty to abstain from registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141.
The Panel concludes in the light of all these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
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, <fragomard.com>, be transferred to the Complainant.
Date: May 19, 2020
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