Complainants are Thierry Lasry and Maudal of Boulogne, France represented by Jean-Marc Felzenszwalbe, France.
Respondent is Nancy Lewis of China.
The disputed domain name <thierrylasryonline.com> is registered with eNom (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2014, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and provided contact details.
The Center verified that 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 27, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was February 16, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 17, 2014.
The Center appointed Eduardo Machado as the sole panelist in this matter on February 28, 2014. 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 paragraph 7 of the Rules.
Mr. Thierry Lasry is the owner of the following trademarks registrations to identify eyewear, glasses etc:
- THIERRY LASRY, French mark nº 3416214, registred on March, 14 2006;
- THIERRY LASRY, European mark n° 9666108, registered on March, 15 2011;
- THIERRY LASRY, International mark nº 1083113, registered on May, 5 2011.
Mr. Thierry Lasry is an eyewear designer and the chief executive officer of Maudal, the corporate registrant of the domain name <thierrylasry.com>.
The THIERRY LASRY collections are sold worldwide and presented on the website “www.thierrylasry.com”.
A prior UDRP panel has ordered transfer in favor of Complainants against Respondent in Thierry Lasry, société Maudal v. Nancy Lewis, WIPO Case No. D2013-1611.
The disputed domain name was created on December 18, 2013.
Complainants allege that Thierry Lasry is a famous eyewear designer and that his products are sold under THIERRY LASRY, with his collections presented on the website “www.thierrylasry.com”.
Complainants also allege that Respondent is using the trademark THIERRY LASRY without authorization and that the disputed domain name <thierrylasryonline.com> creates a false idea of authenticity, making consumers believe that such website is an authorized retailer of Complainants’ glasses. Respondent is in fact only selling counterfeit glasses presented as Complainants’ authentic eyewear, through its website.
Complainants argue that the disputed domain name has no commercial relation with Thierry Lasry or Maudal.
Complainants state that the disputed domain name is confusingly similar to its trademarks and that Respondent has no rights or legitimate interests in the disputed domain name.
Complainants assert that no agreement has ever been discussed between Respondent and Complainants.
Complainants also claim that Respondent has registered and is using the disputed domain name in bad faith since it is benefitting from misleading the public in order to sell counterfeit products.
Respondent did not reply to Complainant’s contentions.
In order to succeed in a UDRP proceeding, Complainants must prove each of the following requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have 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.
The Panel finds that Complainant Thierry Lasry is indeed the owner of several trademark registrations for THIERRY LASRY worldwide, and that such trademark is entirely incorporated in the disputed domain name <thierrylasryonline.com>.
The Panel also finds that the term “online” is generic when combined with a trademark to form a domain name.
The Panel therefore concludes that the disputed domain name is confusingly similar to Complainants’ trademark THIERRY LASRY.
The Panel finds that there is a consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on UDRP Questions, Second Edition (“WIPO Overview, 2.0”) as follows: “[A] complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name”.
In the present case, although Respondent has not filed any response, that burden has not been discharged, and the Panel has considered Complainant’s prima facie proof to be sufficient evidence to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <thierrylasryonline.com>.
The Panel agrees that Respondent is not commonly known as “Thierry Lasry” or “Thierry Lasry Online” and does not own any trademark bearing the words “Thierry Lasry”.
In light of this, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the disputed domain name, Respondent having intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.”
The Panel finds it is improbable that Respondent had no knowledge of Complainants’ company and trademark THIERRY LASRY at the time of registration of the disputed domain name, considering the disputed domain name includes Complainants’ trademark and the word “online”, and is used to offer for sale allegedly counterfeit THIERRY LASRY products.
The Panel agrees with Complainants that Respondent is using the disputed domain name to intentionally attempt to attract Internet users to the website, by creating a likelihood of confusion with THIERRY LASRY trademark. The website at the disputed domain name not only appears to offer for sale purportedly counterfeit THIERRY LASRY products but furthermore offers products of Complainants’ competitors.
Accordingly, the Panel concludes 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 <thierrylasryonline.com> be transferred to Complainant.
Eduardo Machado
Sole Panelist
Date: March 13, 2014