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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tapmark v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Kathleen Ahart

Case No. D2021-2991

1. The Parties

The Complainant is Tapmark, Belgium, represented by Plasseraud IP, France.

The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Kathleen Ahart, Spain.

2. The Domain Name and Registrar

The disputed domain name <taooutlet.online> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2021. On September 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 10, 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 September 20, 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 September 22, 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 September 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2021.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on October 20, 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.

4. Factual Background

The Complainant is a Belgian company which is part of a group of companies belonging to the Mulliez family, which runs well-known businesses such as Auchan, Decathlon, Norauto or Kiabi. Since 1993, the Complainant has been operating a chain of brick-and-mortar stores distributing children fashion apparel mainly in France, Central Europe, North Africa, Middle East and Russia. The Complainant also maintains a strong online presence with its official website “www.t-a-o.com”.

The Complainant is the owner of numerous trade mark registrations for the TAO mark in various jurisdictions, including, inter alia, the TAO trade mark (Reg. No. 4027250) registered in France on August 19, 2013 and the TAO European Union Trade Mark (Reg. No. 012572574) registered on November 19, 2014. As mentioned above, the Complainant also operates and owns the domain name <t-a-o.com>, which contains the TAO mark.

The Disputed Domain Name was registered by the Respondent on June 22, 2021. The Disputed Domain Name currently resolves to a website, which purports to offer for sale children fashion apparel at discounted prices.

5. Parties’ Contentions

A. Complainant

The Complainant’s primary contentions can be summarised as follows:

(a) The Disputed Domain Name is almost identical and confusingly similar to the Complainant’s TAO trade mark as it reproduces the Complainant’s TAO mark in its entirety with the addition of the term “outlet”.

(b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The Complainant has never authorised or given permission to the Respondent, who is not associated with the Complainant in any way, to use its TAO trade mark or register the Disputed Domain Name. There is also no evidence of the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. The website to which the Disputed Domain Name resolves appears to be a fake online store which purports to offer for sale children fashion apparel at discounted prices under the TAO trade mark and other trade marks owned and used by the Complainant, and contains certain content that has been directly copied from the Complainant’s official website. Therefore, this cannot be considered as a bona fide offering of goods or services.

(c) The Respondent must have been aware of the Complainant and its TAO trade mark at the time of registering the Disputed Domain Name. The use of the Complainant’s TAO trade mark incorporated in the Disputed Domain Name with the addition of the term “outlet” was intentionally designed to cause confusion and mislead Internet users. The Disputed Domain Name was also used by the Respondent to deceive Internet users into making payment to the Respondent, as well as for phishing purposes. Therefore, the Respondent has registered and is using the Disputed Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(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 by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the TAO trade mark, based on its various trade mark registrations.

It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain extension (“.online” in this case) may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Disputed Domain Name incorporates the Complainant’s TAO trade mark in its entirety with the addition of the term “outlet”. UDRP panels have consistently found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. See section 1.8 of the WIPO Overview 3.0.

The mere addition of the suffix “outlet” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s TAO trade mark.

As such, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s TAO trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.

The Panel finds that the Complainant has not authorised the Respondent to use the TAO trade mark, and there is no relationship between the Complainant and the Respondent, which would otherwise entitle the Respondent to use the TAO trade mark. Accordingly, the Panel is of the view that a prima facie case has been established by the Complainant and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services;

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services. The Panel agrees with the Complainant that the Respondent’s use of the Disputed Domain Name cannot be regarded as legitimate noncommercial or fair use as the Disputed Domain Name was used by the Respondent to deceive Internet users into making payment to the Respondent, as well as for phishing purposes. Past panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. See section 2.13 of the WIPO Overview 3.0.

In addition, no evidence has been provided to prove that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that the Respondent has become known by the Disputed Domain Name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar (particularly domain names which incorporate a mark plus a descriptive term) to a widely-known trade mark by an unaffiliated entity can already by itself create a presumption of bad faith. See paragraph 3.1.4 of the WIPO Overview 3.0.

After reviewing the supporting evidence submitted by the Complainant, the Panel agrees with the Complainant that its TAO trade mark appears to be fairly well-known in several jurisdictions, including France. Therefore, taking this into consideration together with the fact that the Disputed Domain Name incorporates the Complainant’s TAO trade mark in its entirety with the addition of the term “outlet” and that the website to which the Disputed Domain Name resolves contains certain content that was directly copied from the Complainant’s official website, the Respondent must have been aware of the Complainant and its rights in the TAO trade mark when registering the Disputed Domain Name. The Panel also agrees with the Complainant that, given that nature of the Complainant’s business, the addition of the term “outlet” may even increase the possibility of Internet users being led to believe that the Disputed Domain Name is owned by or associated with the Complainant.

In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name was registered and is being used by the Respondent in bad faith:

(i) The Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name;

(ii) It is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name contains the Complainant’s TAO mark in its entirety (with the addition of the term “outlet”) and is being used by the Respondent for illegal purposes. Any use of the Disputed Domain Name would likely mislead third parties into believing the Disputed Domain Name is associated with and/or endorsed by the Complainant, thereby causing harm to the Complainant’s legitimate rights; and

(iii) The Respondent registered the Disputed Domain Name using a privacy shield to conceal its identity (see Primonial v. Domain Administrator, PrivacyGuardian.org / Parla Turkmenoglu, WIPO Case No. D2019-0193).

In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.

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 <taooutlet.online> be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Date: November 3, 2021

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