Complainant is ESMOD, France, represented by Novagraaf France, France.
Respondent is Nima Mirderrickvand, Canada.
The disputed domain name <esmodcanada.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2019. On April 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amendment to the Complaint on April 18, 2019, in response to a request for clarification from the Center.
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 Respondent of the Complaint, and the proceedings commenced on April 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 15, 2019.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on May 22, 2019. 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 ESMOD (“Complainant”) operates an international fashion school in France. Complainant operates under the trademark ESMOD. Complainant owns valid and subsisting registrations for the ESMOD trademark, used in commerce in France and internationally since 1988, including International Registration Number 1199778 (registered February 17, 2014); Canadian Registration Number TMA422494 (registered January 28, 1994); and French Registration Number 1534654 (registered June 5, 1989) (collectively, the “Marks”). Complainant owns and operates its primary website in connection with its fashion education services at the domain name <esmod.com>.
The disputed domain name <esmodcanada.com> was registered on January 8, 2019, and at the time of Complainant’s filing, resolved to a parked page.
Complainant asserts that the disputed domain name is identical or confusingly similar to the company name, trademarks, and domain names in which Complainant has rights. Complainant asserts ESMOD is an international fashion design and business school operating since 1841 with 20 schools in 13 countries around the world. Complainant contends the disputed domain name entirely and identically reproduces Complainant’s commercial name, domain names, and Marks. Complainant further asserts the addition of the generic term “canada” in the disputed domain name is not sufficient to overcome a likelihood of confusion with Complainant’s prior rights. Complainant asserts that the reproduction of Complainant’s name and prior well-known trademarks, will lead Internet users to think the disputed domain name belongs to Complainant or has been registered in its name or on its behalf. Complainant finally asserts that the likelihood of confusion is thus inevitable and reinforced by the high notoriety enjoyed by Complainant in France.
Complainant asserts Respondent does not have rights or legitimate interests in respect of the disputed domain name. Complainant asserts the disputed domain name has been registered by Respondent without Complainant’s consent and is not active. Complainant asserts ESMOD does not correspond to any right that could be attached to Respondent, neither by a name, nor a trademark.
Complainant asserts the disputed domain name is being used in bad faith. Complainant sent Respondent a cease and desist letter on February 27, 2019. Complainant asserts that on March 9, 2019, Complainant received a response from Respondent claiming to not know Complainant and suggesting that Respondent registered the disputed domain name on behalf of Respondent’s clients. However, this reply also offered to sell the disputed domain name to Complainant. Complainant asserts the disputed domain name is not in operation, which shows a lack of legitimate interest to hold the disputed domain name. Complainant contends Respondent, having no apparently legitimate reason to choose the disputed domain name, could not have been unaware of the existence of the ESMOD trademark due to the high notoriety enjoyed by Complainant throughout the world.
Accordingly, Complainant requested that the disputed domain name be transferred.
Respondent did not reply to Complainant’s contentions.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of ownership of the ESMOD trademarks, which have been registered since as early as June 5, 1989, well before Respondent registered the disputed domain name. With Complainant’s rights in the ESMOD trademarks established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) in which it is registered, in this case, “.com”) is identical or confusingly similar to Complainant’s mark. See, e.g., B&H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
In the instant case, the disputed domain name is confusingly similar to Complainant’s ESMOD trademarks, because the ESMOD mark is fully incorporated into the disputed domain name at the second level, and the addition of the geographically descriptive term “canada” appended to the mark does not prevent a finding of confusing similarity. See, e.g., BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284. The Panel therefore finds Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its right in the ESMOD trademark, and in showing that the disputed domain name is identical or confusingly similar to this mark.
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, there is no evidence that Respondent has any rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is affiliated with, authorized by, licensed to, or otherwise permitted to use the ESMOD mark. Furthermore, the disputed domain name continues to resolve to a parked page. This type of use does not constitute a bona fide offering of goods or services or a legitimate noncommercial fair use. See, e.g., Playboy Enterprises International, Inc. v. Tom Baert, WIPO Case No. D2007-0968 (finding a site that is “under construction” does not constitute noncommercial fair use).
Respondent failed to submit any evidence demonstrating a right or legitimate interest in the disputed domain name, and therefore this Panel finds Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that Respondent registered and used the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
In this proceeding, the record reflects Complainant provided evidence to show international use and registration of the ESMOD trademarks long before the registration of the disputed domain name by Respondent, including in Canada, where Respondent is located. Therefore, Respondent was likely aware of the ESMOD mark when it registered the disputed domain name, or knew or should have known that the disputed domain name was identical or confusingly similar to Complainant’s Marks. See WIPO Overview 3.0, section 3.2.1; see also, e.g., TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.
In reply to Complainant’s cease and desist letter, Respondent reported acting as agent for a client in purchasing the disputed domain name “on behalf of my clients in Canada, China, and Islamic Republic of Iran”, but further entertained to sell the disputed domain name to Complainant with an “official offer”. This general offering of the disputed domain name for sale to Complainant is indicative of bad faith under section 4(b)(i) of the Policy and undermines Respondent’s claim to have registered the disputed domain name for “clients”. Moreover, there is no evidence to show that Respondent had any credible reason to register the disputed domain name or any independent right or legitimate interest in the disputed domain name based on the parked page at issue, and only unsubstantiated claims that Respondent registered the disputed domain name on behalf of unspecified “clients”. These factors, coupled with general offer to sell the disputed domain name to Complainant, are indicative of bad faith pursuant to 4(b)(iv) of the Policy. WIPO Overview 3.0, section 3.1.1.
Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith and Complainant succeeds under the third element of paragraph 4(b) of the Policy.
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 <esmodcanada.com> be transferred to the Complainant.
Brian J. Winterfeldt
Sole Panelist
Date: June 4, 2019