Comme Des Garcons Co., Ltd. v. 鑫 陈 / Yuying Liu
Claim Number: FA2306002049178
Complainant is Comme Des Garcons Co., Ltd. (“Complainant”), represented by Jesse Sussmane of McCue Sussmane Zapfel & Cohen P.C., New York, USA. Respondent is 鑫 陈 / Yuying Liu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <commgarconsplay.com> and <commede.shop>, (‘the Domain Names’) registered with Name.com, Inc. and Porkbun LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on June 15, 2023; Forum received payment on June 15, 2023.
On June 15, 2023 and Jun 16, 2023, Name.com, Inc. and Porkbun LLC confirmed by e-mail to Forum that the <commgarconsplay.com> and <commede.shop> Domain Names are registered with Name.com, Inc. and Porkbun LLC and that Respondent is the current registrant of the names. Name.com, Inc. and Porkbun LLC have verified that Respondent is bound by the Name.com, Inc. and Porkbun LLC registration agreements and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@commgarconsplay.com, postmaster@commede.shop. Also on June 21, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On July 18, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the Domain Names are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Complainant points out that the Domain Names resolve to web sites which both purport to sell the Complainant’s products sharing several common elements of design and content and that the Domain Names were registered within eight days of each other. No Respondent has replied to refute any connection between the Domain Names. The panel finds that looking at the evidence on the balance of probabilities the Domain Names are commonly owned/controlled by a single Respondent entity who is using multiple aliases and this Complaint can proceed as framed against all named Respondents.
A. Complainant
The Complainant owns the trade mark COMME DES GARÇONS registered, inter alia, in the USA for clothing with first use recorded as 1973. It also has a trademark for its heart logo, registered, inter alia, in the USA for clothing as of 2002.
The Domain Names registered in 2022 are confusingly similar to the Complainant’s COMME DES GARÇONS trade mark merely abbreviating it and/or adding the generic term ‘play’ and adding the gTLD .com or the gTLD .shop which do not prevent said confusing similarity between the Domain Names and the Complainant’s mark.
Respondent is not commonly known by the Domain Names and is not authorised by the Complainant. The web site connected with the Domain Names purports to sell the Complainant’s products using the Complainant’s COMME DES GARÇONS mark or its heart logo as a masthead. Since Internet users will be duped into believing the sites attached to the Domain Names are official this is not legitimate. It is registration and use with actual knowledge of the Complainant’s rights in fraudulent bad faith confusing and diverting Internet users for commercial gain and disrupting the Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns the trade mark COMME DES GARÇONS registered, inter alia, in the USA for clothing with first use recorded as 1973. It also has a trademark for its heart logo, registered, inter alia, in the USA for clothing as of 2002.
The Domain Names registered in 2022 are connected to sites that purport to sell the Complainant’s products using the Complainant’s COMME DES GARÇONS mark or its heart logo as a masthead.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Domain Names both consist of a shortened version of the Complainant's COMME DES GARÇONS mark (which is registered, inter alia in USA for clothing with first use recorded as 1973) and/or the generic term ‘play’, and the gTLD .com or .shop.
It has been consistently held by Panels that there is confusing similarity where a complainant’s trade mark is abbreviated in a domain name, but is still recognisable within that domain name. See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated). The Panel holds that the abbreviations of the Complainant’s COMME DES GARÇONS mark used by the Respondent ‘commgarcons’ and ‘commede’ were clearly used by the Respondent in each of its Domain Names respectively to attract people looking for the Complainant’s products which the Respondent is purporting to sell, precisely because those terms are both confusingly similar to the Complainant’s COMME DES GARÇONS mark which is still recognisable even though abbreviated in both Domain Names.
The addition of the generic term ‘play’ does not serve to distinguish commgarconsplay.com from the Complainant’s COMME DES GARÇONS mark. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec 10, 2015) (holding that the addition of generic terms does not adequately distinguish a disputed domain name from complainant’s mark under Policy 4 (a) (i).)
The gTLDs .com or .shop do not serve to distinguish either of the Domain Names respectively from the Complainant’s COMME DES GARÇONS mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are both confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorised the use of its marks. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by either of the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use is commercial and so cannot be non commercial legitimate fair use.
The web sites attached to the Domain Name uses the Complainant’s COMME DES GARÇONS mark or the Complainant's heart logo as a masthead to suggest that they are official sites of the Complainant when they are not. The Panel finds this use is deceptive and confusing. As such it cannot amount to the bona fide offering of goods and services. (See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services.)
The Respondent has not answered the Complaint or rebutted the prima facie case evidenced by the Complainant as set out herein.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Names in relation to the Respondent’s sites is confusing and disruptive in that visitors to the sites might reasonably believe they are connected to or approved by the Complainant as they offer products under the Complainant’s COMME DES GARÇONS mark or its heart logo used as a masthead giving the impression that the sites attached to the Domain Names are connected to the Complainant when they are not. The use of the Complainant’s logo and/or the reference to the Complainant’s products on the sites shows that the Respondent has actual knowledge of the Complainant and its business, products and rights.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant's COMME DES GARÇONS trade mark as to the source, sponsorship, affiliation or endorsement of the web sites likely to disrupt the business of the Complainant. (See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use).
As such, the Panel believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <commgarconsplay.com> and <commede.shop> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: July 18, 2023
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