URS DEFAULT DETERMINATION

 

LES PARFUMERIES FRAGONARD v. Wen Cheng Lai et al.

Claim Number: FA1512001654755

 

DOMAIN NAME

<fragonard.love>

 

PARTIES

Complainant: †LES PARFUMERIES FRAGONARD of GRASSE, France.

Complainant Representative: INLEX IP EXPERTISE of CANNES, France.

 

Respondent: †Wen Cheng Lai of Bei Jing, BJ, CN.

 

REGISTRIES and REGISTRARS

Registries: †Merchant Law Group LLP

Registrars: †Chengdu West Dimension Digital Technology Co., Ltd.

 

EXAMINER

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.

 

Fernando Triana, Esq., as Examiner.

 

PROCEDURAL HISTORY

Complainant submitted: December 31, 2015

Commencement: December 31, 2015†††

Default Date: January 15, 2016

 

Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

 

RELIEF SOUGHT

Complainant requests that the domain name be suspended for the life of the registration.

 

STANDARD OF REVIEW

Clear and convincing evidence.

 

FINDINGS and DISCUSSION

 

1.    Complainantís trademark FRAGONARD is registered before the Office for Harmonization in the International Market (OAMI), since 2011, to identify goods and services within international cases 1, 5, 6, 7, 10, 11, 12, 13, 15, 17, 19, 22, 27, 34, 39, 40, 43 and 45.

 

2.    Respondent has never been commonly known by the disputed domain name or the trademark FRAGONARD.

 

3.    Respondentís use of the disputed domain name is not in connection with a bona fide offering of goods or services.

 

As per the Paragraph 9 (c) of the URS Rules, the Examiner will determine in which language to issue its Determination. Taking into account that Complainant submitted the Complaint in English and that Respondent filed its Response in the same language, the Examiner will decide in English.

URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.

 

Identical and/or Confusingly Similar

 

Concerning the first element, Paragraph 1.2.6.1., of the URS Procedure introduces that to obtain an order to suspend a domain name; the disputed domain name should be identical or confusingly similar to a word mark:

 

(i)            for which Complainant holds a valid national or regional registration and that is in current use; or

(ii)          that has been validated through court proceedings; or

(iii)         that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

 

Furthermore, the use of said trademark could be shown by:

 

a. ††††††† Demonstrating evidence of use Ė which can be a declaration and one specimen of current use in commerce Ė was submitted to, and validated by, the Trademark Clearinghouse.

 

b. ††††††† Providing a sample of use submitted directly with the URS ComplaintĒ.

 

a)     Existence of a trademark in which the Complainant has rights and is in current use

 

Complainant proved its rights on the trademark FRAGONARD, which is registered before the Office for Harmonization in the International Market (OAMI), since 2011, to identify goods and services within international cases 1, 5, 6, 7, 10, 11, 12, 13, 15, 17, 19, 22, 27, 34, 39, 40, 43 and 45.

 

This information appears to be incontestable and conclusive evidence of Complainantís ownership of the cited trademarks and the exclusive right to use them in connection with the corresponding services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive[1].

 

Furthermore, Complainant filed evidence of use by means of a declaration and one specimen of current use in commerce, submitted to, and validated by, the Trademark Clearinghouse.

 

Therefore, the Examiner concludes that Complainant has demonstrated to be the owner of a valid trademark registration which is in current use for purposes of Paragraph 1.2.6.1.(i), of the URS Procedure.

b)   Identity or confusing similarity between the disputed domain name and the Complainantís trademark

 

The Examiner considers that the reproduction of the trademark FRAGONARD, by the disputed domain name ęfragonard.loveĽ, is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[2]. Specially since the disputed domain name reproduces entirely Complainantís trademark without any other distinctive elements. Consequently, consumers will assume that the owner of the disputed domain name is the watch manufacturer.

 

Thus, by registering the disputed domain name, Respondent creates a likelihood of confusion with Complainantís trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name.

 

In consequence, as per this reasoning, the Examiner finds that, in the present case, the disputed domain name is confusingly similar to Complainantís trademark and thus, the requirement set forth in Paragraph 1.2.6.1., of the URS Procedure is duly complied with.

 

Registration and Use in Bad Faith

 

Paragraph 1.2.6.3., of the URS Procedure, includes a non-exclusive list of circumstances that demonstrate bad faith registration and use by Respondent, as follows:

 

a.    Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the disputed domain name; or

 

b.    Respondent has registered the disputed domain name in order to prevent the trademark holder or service mark from reflecting the trademark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

c.    Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

 

d.    By using the disputed domain name Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondentís web site or other on-line location, by creating a likelihood of confusion with the Complainantís trademark as to the source, sponsorship, affiliation, or endorsement of Respondentís web site or location or of a product or service on that web site or location.

 

Complainant asserts and proves that the disputed domain name is currently inactive.

 

As stated by the Panel in State Farm Mut. Auto. Ins. Co. v. Sotelo, the requirement of use in bad faith does not require that it prove in every instance that a respondent is taking positive action.

 

The mere failure to make an active use of the disputed domain name is indicative of bad faith registration and use pursuant to Subparagraph c) of the Paragraph 1.2.6.3., of the URS Procedure[3].

 

Furthermore, the Panel finds that since FRAGONARD is neither generic nor descriptive, is not a coincidence that Respondent selected the trademark FRAGONARD to include it in the disputed domain name.

 

Thus, the Examiner concludes that Respondent registered the disputed domain name for the purpose of disrupting Complainantís business.

 

Furthermore, Respondentís use of the disputed domain name does not fall into the category of bona fide offering of goods or services, Respondent is not commonly known by the disputed domain name and the use made of the disputed domain name misleads divert consumers.

 

As per this reasoning, the Examiner finds that, in the present case, the disputed domain name was registered and is being used in bad faith, thus, the requirement set forth in Paragraph 1.2.6.3., of the URS Procedure is duly complied with.

 

Rights or Legitimate Interests

 

Paragraph 8.3 of the URS Procedure explains the extent of the second element as established in Paragraph 1.2.6.2., of the URS Procedure which is that Registrant has no legitimate right or interest to the disputed domain name. In a URS procedure, Complainantís burden of proof regarding Registrantís lack of rights or legitimate interest in the disputed domain name, is limited present adequate evidence to substantiate Complainantís trademark rights in the disputed domain name, such as, evidence of a trademark registration and evidence that the disputed domain name was registered and is being used in bad faith in violation of the URS.

 

As per the URS requirements, Complainantís burden of proof has been met, regarding Registrantís lack of rights or legitimate interest in the disputed domain name, as Complainant has successfully shown evidence to substantiate its trademark rights, such as, the trademark registration FRAGONARD before the Office for Harmonization in the International Market (OAMI)

 

Moreover, as established in Paragraph 8.3 of the URS Procedure, Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith in violation of the URS, as studied and shown before.

 

Finally, Complainant asserts that Respondent is not commonly known by the disputed domain name and that Complainant has not licensed or otherwise permitted Respondent to use the trademark FRAGONARD.

 

Consequently, the Examiner finds that, in the present case, Respondent has no legitimate right or interest to the disputed domain name, thus, the requirement set forth in Paragraph 1.2.6.2., of the URS Procedure is duly complied with.

 

FINDING OF ABUSE† or MATERIAL FALSEHOOD

The Examiner finds that the Complaint was neither abusive nor contained material falsehoods.

 

DETERMINATION

After reviewing the partiesí submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the domain name ęfragonard.loveĽ be SUSPENDED for the duration of the registration.

 

 

 

Fernando Triana, Esq., Examiner

Dated:† January 15, 2016

 



[1] See Janus Intíl Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002).

[2] See ER Marks, Inc. and QVC, Inc. v. Hansmann, FA 1381755 (Nat. Arb. Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).

[3] See State Farm Mut.Auto. Ins. Co. v. Sotelo, FA 1008269 (Nat. Arb. Forum July 17, 2007); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000).

 

 

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