WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

COFRA Holding (C&A) v. Domains By Proxy, LLC / Wenyan Hu

Case No. D2020-1716

1. The Parties

The Complainant is COFRA Holding (C&A), Switzerland, represented by Taylor Wessing, Germany.

The Respondent is Domains By Proxy, LLC, United States of America / Wenyan Hu, China.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2020. On June 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 1, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 2, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 3, 2020. On July 6, 2020, the Center received an informal email communication from the Respondent.

The Center verified that the Complaint together with the amendment to the 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 July 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2020. No Response was filed with the Center. On July 29, 2020, the Center informed the Parties that it would proceed to appoint the Panel.

The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on August 7, 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.

On August 8, 2020, the Respondent sent an informal email communication to the Center.

4. Factual Background

The Complainant was founded in 1841 and operates approx. 2,000 clothing stores worldwide (including China), of which over 1,500 across Europe. The Complainant also markets clothes through its online shops to clients outside of Europe, which in China can be accessed under “www.canda.cn”.

The Complainant and its subsidiary C&A AG are the owners of numerous trade mark registrations around the world registered for inter alia clothing, including:

- European Union Trade Mark No. 000105882 C&A registered on May 17, 1999;

- European Union Trade Mark No. 004729703 CA registered on September 22, 2006;

- International Registration No. 878841 C&A registered on January 23, 2006 with protection in inter alia China;

hereafter together referred to as the “Trade Marks”.

The Domain Name was registered on December 24, 2018 and is being used for a website offering women's clothing which features the sign “CA MODE”, with the letters “CA” in larger print than the word “Mode”.

5. Parties’ Contentions

A. Complainant

According to the Complainant, the Domain Name is confusingly similar to the Trade Marks as it contains the Trade Marks, followed by the generic dictionary words “Mode” (German for “fashion”) and “Boutique” which are both related to clothing. Neither of these additions is able to dispel the confusing similarity of the Domain Name to the CA and C&A trade marks. The Complainant points out that the ampersand in the C&A trade marks does not exclude the confusing similarity as it is not a dominant element, while it cannot be used in a domain name since an ampersand is an invalid character in a domain name. Furthermore, the Complainant states, the generic Top Level Domain (“gTLD”) “.com” has to be disregarded when evaluating the confusing similarity of the Trade Marks to the Domain Name.

The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name, since the Complainant has not licensed or otherwise permitted the Respondent to use the Trade Marks, or to apply for the registration of the Domain Name. The Complainant also brings forward that there is no indication that the Respondent, before it became aware of the conflict, used or made any demonstrable preparations to use the Domain Name, or a name corresponding to the Domain Name, in connection with a bona fide offering of goods and services.

The Complainant contends that the use of the Domain Name in connection with a website offering women’s clothing, and therefore for goods that are identical to those offered and sold by the Complainant, cannot be considered a good faith offering of goods, but clearly shows the Respondent’s intent to gain illegitimate commercial benefit by using a domain name which fully incorporates the Trade Marks in order to mislead and divert consumers who, upon arriving at the website under the Domain Name, may mistakenly believe that it offers genuine products of the Complainant, or that it is affiliated with or endorsed by the Complainant.

According to the Complainant, the Domain Name was registered and is being used by the Respondent in bad faith. The Complainant submits that, given the reputation and recognition of the Trade Marks due to their longstanding, intensive and widespread use, the Respondent had to be fully aware of their existence when registering the Domain Name.

As regards bad faith use, the Complainant points out that the Domain Name redirects to a website which prominently features the sign “CA MODE” (with the letters “CA” in a larger print than the word “Mode”) and offers competing products, thus giving Internet users the impression that the website is affiliated with the Complainant. The Complainant contends that this demonstrates that the Respondent is targeting the Complainant in order to take advantage of the Trade Marks, with the intention to attract Internet users to its website by creating a likelihood of confusion with the Trade Marks and by taking an illegitimate advantage of the high reputation and distinctiveness of the Trade Marks.

Finally, the Complainant refers to the fact that the Respondent is a proxy service which in its view adds to the evidence of bad faith.

B. Respondent

By email of July 6, 2020, the Respondent reacted to the Notice of Registrant Information as follows:

“Hello [name],
What are you complaining for? Please let me know.
Thanks,
Wenyan”

By email of August 8, 2020, the Respondent reacted to the notification of appointment of the Panelist as follows:

“Hello,
What's wrong with the domain?”

The Respondent did not file a Response.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates the element “CA”, of which one of the Trade Marks consist, in its entirety, while it is also confusingly similar to the C&A Trade Marks, since an ampersand cannot technically be included in a domain name. The addition of the dictionary words “mode” (in English: fashion) and “boutique” (according to the Merriam-Webster dictionary ‘a small shop dealing in fashionable clothing or accessories’) does not avoid a finding of confusing similarity between the Domain Name and the Trade Marks (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; see also, inter alia, TPI Holdings, Inc. v. Carmen Armengol, WIPO Case No. D2009-0361; and F. Hoffmann-La Roche AG v. John Mercier, WIPO Case No. D2018-0980. The gTLD “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.11). Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, the second element a complainant has to prove is that a respondent lacks rights or legitimate interests in a domain name. This may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. In order to satisfy the second element, the Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name. If the Complainant succeeds in doing so, 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 (See WIPO Overview 3.0, section 2.1).

Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name and has not acquired trade mark rights in the Domain Name. As the Domain Name resolves to a website where products are offered which (potentially) compete with products offered by the Complainant under the Trade Marks, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name (paragraph 4(c)(iii) of the Policy), nor can such use be considered to be in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy.

In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Based on the information and the evidence provided by the Complainant, the Panel finds that the Respondent registered the Domain Name in bad faith, since at the time of registration it was or should have been aware of and indeed specifically targeted, the Complainant and the Trade Marks. In particular, such knowledge and intent is derived from the following facts: (i) the Respondent’s registration of the Domain Name occurred 19 years after the registration of the earliest of the Trade Marks; (ii) the reputation and recognition of the C&A Trade Marks due to their longstanding, intensive and widespread use; (iii) the use of the Domain Name for a website offering clothing products, (potentially) competing with the products for which the Complainant has registered and is using the Trade Marks; (iv) the use of the sign “CA Mode”(in English: CA Fashion) on that website.

The Panel also finds that the Respondent is using the Domain Name in bad faith, in particular since (i) the Domain Name resolves to a website offering products (potentially) competing with those offered by the Complainant and the use of the sign “CA Mode” on that website, (ii) the Respondent tried to hide its identity through the use of a privacy service and (iii) the fact that the Respondent did not file a Response. Based on these circumstances the Panel concludes that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation or endorsement of the website to which the Domain Name resolves, in accordance with paragraph 4(b)(iv) of the Policy.

7. 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 name <camodeboutique.com> be transferred to the Complainant.

Wolter Wefers Bettink
Sole Panelist
Date: August 19, 2020