The Complainant is Interparfums SA, France, internally represented.
The Respondent is 1&1 Internet Inc, United States of America (“United States”) / Marc Marmel, United States, self-represented.
The disputed domain name <marcelrochas.com> is registered with 1&1 IONOS SE (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2021. On August 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2021, 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 on August 9, 2021 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 amended Complaint on August 10, 2021.
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 August 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2021. On August 27, 2021, the Respondent sent an email to the Center indicating that it was willing to explore settlement options. The Complainant in response requested that the proceeding be suspended for the purpose of settlement talks. Accordingly, the Center notified the Parties on August 27, 2021 that the proceeding was suspended until September 26, 2021. On September 30, 2021, the Respondent sent another email to the Center. On October 7, 2021, the Center received the request from the Complainant that the proceeding be reinstituted. Accordingly, the Center notified the Parties on October 7, 2021 that the proceeding was reinstituted as of October 7, 2021 and the due date for the Response was October 12, 2021. The Response was filed with the Center on October 12, 2021.
The Center appointed Antony Gold as the sole panelist in this matter on October 18, 2021. 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 couture and perfume company Rochas was founded by Marcel Rochas in Paris in 1925. The Complainant is the owner of the trade mark rights to the brand ROCHAS in relation to garments and perfumes. It designs and sells a range of fashion and perfume products and it owns many ROCHAS trade marks to protect its brand, including, by way of example only, French trade mark, registration number 1436306, for ROCHAS in classes 2, 3, 14, 16, 18, 21, 25, 26, 28, and 34, registered on November 20, 1987. The Complainant also owns and operates the domain name <rochas.com>, which resolves to a website featuring information about the Complainant’s activities in Europe, America, and Asia.
The disputed domain name was registered on February 7, 2016. It resolves to a landing page headed “marcelrochas.com” which features a number of pay-per-click (“PPC”) links including “Parfum Femme” (women’s perfume), “Mode Femme” (women’s fashion), and “Parfums” (perfumes).
The Complainant says that the disputed domain name is identical or confusingly similar to its ROCHAS trade marks, full details of one of these marks having been given above. It says that the disputed domain name reproduces this mark entirely and is also identical to the name of the founder of the ROCHAS fashion house, Marcel Rochas.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is performing his activities in the fashion industry in the United States through his website at “www.marcmarmel.com”. He does not hold trade mark rights, nor any rights, in the name MARCEL ROCHAS. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name nor a name corresponding to it, in connection with a bona fide offering of goods and services. No licence or other authorization by the Complainant to use its ROCHAS trade mark has been given to the Respondent.
Finally, the Complainant says that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered after the Complainant’s trade mark rights in ROCHAS were established, the Complainant’s fashion brand has been active for over 90 years and it is unlikely that the Respondent was unaware of the Complainant’s rights in its mark as at the date of registration. Moreover, the name “Marcel Rochas”, which comprises the disputed domain name, is clearly referable to the founder of the Complainant’s ROCHAS fashion house.
The disputed domain name is being used for a landing page hosting PPC links. These include links relating to perfume and fashion items, with hyperlinks redirecting to competitors and third party websites. The Respondent is misleadingly diverting consumers for his own commercial gain. The Respondent has engaged in similar activity previously, having registered many other domain names, including <sylviapedlar.com> and <arnoldscaasi.com>, which are referrable to the fashion designers Sylvia Pedlar and Arnold Scaasi respectively. This shows a pattern of bad faith on his part in registering the names of fashion designers as domain names.
The Respondent says that the landing page containing the PPC links to which the disputed domain name resolved was not established by him but by the Registrar and that he has not profited in any way from those links.
The Respondent acknowledges that he registered the <sylviapedlar.com> and <arnoldscaasi.com> domain names. As a designer, he did so in good faith in the hope of being able to resurrect in the future the brands of the designers to which these domain names relate, as they have been much appreciated by him. Before registering any domain names, the Respondent has checked on the United States Patent and Trademark Office website to see if there was a live trade mark corresponding to them. The Respondent thereby established as at the date of registration of the disputed domain name, that there was no live trade mark in the United States for MARCEL ROCHAS, nor is there now. Many other companies, especially in the fashion industry, resurrect dead brands and/or names of designers who have passed on. Accordingly, the Respondent denies that he has acted in bad faith.
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant has provided details of a number of the registered trade marks it owns for ROCHAS, including its mark set out above, which establish its rights in this mark. The Complainant does not assert that it has either registered rights, or unregistered or common law rights, in MARCEL ROCHAS.
As a technical requirement of registration, the Top-Level Domain, that is “.com” in the case of the disputed domain name, is typically disregarded when assessing confusing similarity. Accordingly, the question for determination is whether the “marcelrochas” component of the disputed domain name is confusingly similar to the Complainant’s ROCHAS mark.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains that the test under the first element typically involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark. It adds that: “[w]hile each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
The disputed domain name incorporates the entirety of the Complainant’s ROCHAS trade mark and the Panel therefore finds that it is confusingly similar to a trade mark in which the Complainant has rights.
Paragraph 4(c) of the Policy provides, without limitation, examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used, or made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name or a name corresponding to the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
The only known use to which the disputed domain name has been put is to resolve to a directory page containing perfume and fashion-related links, that is links to goods which compete with those of the Complainant. UDRP panels have generally found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users; see section 2.9 of the WIPO Overview 3.0 and, by way of example, Fundacion Inexmoda v. Contact Privacy Inc. Customer 0149775579 / Balticsea LLC, WIPO Case No. D2019-2613. The links on the Respondent’s webpage to competitors of the Complainant capitalize on, and exploit, its reputation and this page does not therefore comprise a bona fide offering of goods and services. The Respondent’s assertion that the landing page was generated by the Registrar and that he is not responsible for these links is considered below in the context of the third element. However, even if correct, this does not impact on the Panel’s finding in respect of the use of the disputed domain name.
So far as any possible future use of the disputed domain name is concerned, save for the Respondent’s generalized assertion that he registered it in the hope of being able to resurrect the MARCEL ROCHAS brand in the future, even if such plan was permissible (which the Panel doubts), he has not provided any information as to his specific plans, notwithstanding that well over five years have elapsed since its registration. Section 2.2 of the WIPO Overview 3.0 considers the question of what might qualify as prior use, or demonstrable preparations to use a domain name, in connection with a bona fide offering of goods or services and explains that “non-exhaustive examples of prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services may include: (i) evidence of business formation-related due diligence/legal advice/correspondence, (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards (iii) proof of a genuine (i.e., not pretextual) business plan utilizing the domain name, and credible signs of pursuit of the business plan”. Nothing of this nature has been produced by the Respondent and his vague and unspecified plans for the disputed domain name therefore fall well short of the standard required to establish demonstrable preparations to use it in connection with a bona fide offering of goods or services. See also Kravet, Inc v. Youri van Oostendorp, Calipseo B.V. / Y. v. Oostendorp, Calipseo B.V., WIPO Case No. D2018-0400.
The second circumstance under paragraph 4(c) of the Policy is inapplicable; there is no evidence that the Respondent has been commonly known by the disputed domain name. The third circumstance is equally inapplicable; the present use of the disputed domain name, as described above, does not amount to either a fair or a legitimate noncommercial use of it.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Whilst the Respondent says that he registered the disputed domain name in the hope that he would eventually be able to resurrect the MARCEL ROCHAS brand in the future and not in order to take advantage of the Complainant’s ROCHAS trade mark, the Complainant has produced evidence that the Respondent has registered a large number of domain names, which it believes support its allegations of bad faith registration and use. The Panel considers the two examples to which the Complainant has specifically drawn attention, namely <sylviapedlar.com> and <arnoldscaasi.com>. For these purposes, the Panel has exercised its powers under the Rules to conduct Internet searches via Google in respect of Ms. Pedlar and Mr. Scaasi, in addition to visiting the Respondent’s website.1
The Respondent’s website at “www.marcmarmel.com” suggests he is operating a luggage bags and accessories business specializing in “modern vintage originals” and the nature of his website arguably explains his claim to be interested in the registration of domain names which correspond to out-of-use brands. So far as the domain names <sylviapedlar.com> and <arnoldscaasi.com> are concerned, Ms. Pedlar died in 1972 and an online search does not reveal current use of her name as a brand for the sale of fashion-related goods. Mr. Scaasi died more recently, in 2015, although his Wikipedia entry suggests that his active period as a designer concluded some decades ago. As with Ms. Pedlar, searches on Google do not yield evidence of current exploitation of his name as a trade mark. The registration of these specific domain names by the Respondent does not therefore categorically advance the Complainant’s case.
However, by way of contrast, as at the date of registration of the disputed domain name in 2016, the Complainant was actively exploiting its ROCHAS trade mark, to which the disputed domain name is confusingly similar, and continues to do so. Moreover, articles about Marcel Rochas provided by the Complainant establish that the connection between the Complainant’s ROCHAS brand and its founder, is widely known. Accordingly, irrespective of the fact that the Complainant’s trade mark rights are restricted to the mark ROCHAS, the “marcel” component of the disputed domain name does not serve to distinguish the disputed domain name from the Complainant’s ROCHAS mark nor to diminish the likelihood that it will be associated with the Complainant.
The Respondent does not deny that he was aware of the Complainant’s ROCHAS mark as at the date of registration of the disputed name but says that he searched the United States Patent and Trade Mark Office website to see if there was a subsisting mark for MARCEL ROCHAS and established that there was not. This purposefully limited search ignores the plain reality of the registrations for ROCHAS and shows the Respondent trying to exploit what he must have thought to be some sort of technicality. However, in the circumstances outlined above, this does not result in the registration of the disputed domain name being found to be in good faith, as it is difficult to conceive of how it could be commercially used, whether in the context of fashion or perfumes or any related goods such as designer luggage, in a way which would not infringe the Complainant’s rights in ROCHAS. The factors above, combined with the failure of the Respondent to divulge details of any plan for the disputed domain name which he had formed, as at the date of its registration, which would not infringe the Complainant’s rights in ROCHAS, leads the Panel to conclude that the disputed domain name was registered in bad faith.
Turning now, to bad faith use, UDRP panels have held that a respondent cannot avoid responsibility for a finding of bad faith arising from the presence on its website of automatically generated PPC links, even if such links have been generated by a third party such as a registrar and notwithstanding that the respondent may not have directly profited from them. In this respect, see section 3.5 of the WIPO Overview and also, by way of example, Nicolas Ghesquiere v. THIS DOMAIN MAY BE FOR SALE AT HTTPS://WWW.NETWORKSOLUTIONS.COM, New Ventures Services, Corp, WIPO Case No. D2019-2982. Visitors to the Respondent’s landing page who clicked on the links to fashion and perfume-related items are very likely to have done so because of the association which they have formed between the disputed domain name and the Complainant’s ROCHAS mark. See, for example, Yahoo! Inc. v. Hildegard Gruener, WIPO Case No. D2016-2491, in which the panel explained that “the use, to which the disputed domain names are put, namely parking pages featuring sponsored advertising links, is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. The object has to be commercial gain, namely pay-per-click or referral revenue achieved through the visitors to the site clicking on the sponsored advertising links. Even if visitors arriving at the websites to which the disputed domain name resolve become aware that these websites are not such of the Complainant, the operators of these websites will nonetheless have achieved commercial gain in the form of a business opportunity, namely the possibility that a proportion of those visitors will click on the sponsored links”. Such conduct falls within the example of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy namely that, by using the disputed domain name, the Respondent has intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website.
Whilst the Respondent has asserted that the Registrar is responsible for the landing page, this is of no assistance.
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
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 <marcelrochas.com> be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: November 1, 2021
1 See section 4.8 of the WIPO Overview 3.0; “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision”.