DECISION

 

Comme Des Garcons, Ltd. and Comme Des Garcons Co., Ltd. v. Privacy Department / IceNetworks Ltd.

Claim Number: FA2608002242044

 

PARTIES

Complainants are Comme Des Garcons, Ltd., and Comme Des Garcons Co., Ltd., represented by Alexa Sussmane of McCue Sussmane Zapfel & Cohen P.C., New York, USA. Respondent is Privacy Department / IceNetworks Ltd. ("Respondent"), Iceland.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <comme-des-garcons.us> (the "Disputed Domain Name"), registered with TLD Registrar Solutions Ltd.

 

PANEL

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

 

Douglas M. Isenberg as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 26, 2026; Forum received payment on August 26, 2026.

 

On August 27, 2026, TLD Registrar Solutions Ltd. confirmed by email to Forum that the <comme-des-garcons.us> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce's usTLD Dispute Resolution Policy (the "Policy").

 

On September 9, 2026, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 2026, by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@comme-des-garcons.us. Also on September 9, 2026, the Written Notice of the Complaint, notifying Respondent of the email 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.

 

A timely Response was received and determined to be complete on September 24, 2026.

 

On September 24, 2026, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Douglas M. Isenberg as Panelist.

 

Complainant submitted an Additional Submission on September 26, 2026.¹

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

As stated above, the Complainant was filed on behalf of two entities, Comme Des Garcons, Ltd., and Comme Des Garcons Co., Ltd. The Complaint does not describe the legal relationship (if any) between these two entities or explain why it is appropriate or necessary to include both of them in the Complaint.

 

Typically, panels in domain name dispute proceedings have allowed the inclusion of multiple related complainants where, for example, one complainant is an "affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee."  WIPO Overview of WIPO Panel Views on Select UDRP Questions ("WIPO Overview 3.1"),² section 1.4. Further, panels have allowed the inclusion of multiple unrelated complainants where "(i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation."  WIPO Overview 3.1, section 4.11.1.

 

While it seems likely that Comme Des Garcons, Ltd., and Comme Des Garcons Co., Ltd. are related entities, the Complaint does not address this issue. The Panel notes that at least some of the trademark registrations cited in the Complaint are owned by Comme des Garcons Company Limited. Therefore, for procedural efficiency, the Panel shall consider this entity (which appears to be simply the full name of Comme Des Garcons Co., Ltd.) as the Complainant for purposes of this proceeding.

 

PARTIES' CONTENTIONS

A. Complainant

The Complaint states that Complainant is "a world-renowned fashion brand" with an "official website" using the domain name <comme-des-garcons.com>. The Complaint further states that Complainant owns "a portfolio of trademarks consisting of dozens of international and U.S. registrations that cover clothing, shoes, cosmetics, fragrances and other products," including the following:

 

·       U.S. Reg. No. 1,292,275 for COMME DES GARCONS (registered August 28, 1984) for use in connection with handbags and ladies' vests and others.

·       U.S. Reg. No. 6,242,474 for COMME DES GARCONS NOIR (registered January 12, 2021) for use in connection with, inter alia, clothing

·       U.S. Reg. No. 5,658,719 for COMME DES GARCONS POCKET (registered January 22, 2019) for use in connection with, inter alia, clothing

 

These registrations are referred to herein as the "COMME DES GARCONS Trademark."

 

The Complaint also cites other trademark registrations, including those owned by Comme des Garcons Parfum SA and Comme des Garcons SAS, entities whose relationship to this proceeding are unexplained, as well as at least one registration that has been cancelled. Therefore, those trademark registrations are disregarded as inapplicable to this proceeding and should not have been included in the Complaint, at least not without explanation.

 

The Disputed Domain Name was created on June 4, 2024. The Complaint states that "Respondent was selling counterfeit Comme des Garcons products and engaging in a fraudulent scheme to deceive consumers into believing the website and products are affiliated with and/or sponsored by Complainants."  A screenshot provided by Complainant shows a website using the Disputed Domain Name that includes the COMME DES GARCONS Trademark in the header and photos of numerous clothing items for sale, as well as copyright notice in the footer that says, "© 2025 Comme des Garcons".  An address for "our store" on the website lists a street address in California without a city and with an incomplete (four-digit) ZIP code.

 

Complainant contends in relevant part that:

 

·       The Disputed Domain Name is identical or confusingly similar to the COMME DES GARCONS Trademark because it "intentionally attempts to confuse consumers into the fraudulent belief that the domain and the products on the website are manufactured by or otherwise endorsed by Complainants and that they are purchasing from Complainants."³

 

·       Respondent has no rights or legitimate interests in the Disputed Domain Name because the "[s]ale of counterfeit goods and deceiving the public as to the source or sponsorship of goods is not bona fide"; "Respondent is not known by the domain name"; and "Respondent is using the domain name for commercial gain to mislead, divert and defraud Complainants' costumers and to tarnish the Comme des Garcons brand and trademarks," which "does not in any way constitute a fair use under applicable trademark law."

 

·       The Disputed Domain Name was registered or is being used in bad faith because "Respondent registered the domain name to either sell counterfeit goods bearing Complainants' trademarks or defraud Complainants' customers"; "Respondent is taking orders from customers believing the domain is Complainants'"; Respondent "provided a disconnected phone number on its website, suggesting that this is not a legitimate effort to sell goods and cultivate customer relationships"; and "Respondent is intentionally deceiving consumers into believing the domain name and the webpage are associated with and/or otherwise endorsed by Complainants."

 

B. Respondent

Respondent did not submit a formal Response but instead submitted an email that said:

 

I respectfully disagree with a number of the allegations made in the complaint and would like to clarify my position.

 

My business, DMCNIC, operates its own independent online business and sells its own products. The purpose of the website and domain was related to our clothing business. It was not my intention to impersonate Comme des Garçons, represent my business as being owned or operated by Comme des Garçons, or intentionally mislead customers into believing that my business is the official Comme des Garçons website.

 

I also want to make clear that I do not wish to create any dispute or confusion with your client. I respect your client's intellectual-property rights and understand the concern regarding potential customer confusion.

 

For that reason, rather than prolonging this matter, I am willing to take practical steps to resolve the issue amicably.

 

I respectfully request an opportunity of approximately 90 to 120 days to transition my business, website, branding, and related commercial operations to a different name and identity. This transition requires time because the business is already operational and involves website changes, product listings, branding, customer communications, marketing materials, and other related business arrangements.

 

During this transition period, I am willing to cooperate in good faith to avoid any customer confusion involving your client's brand.

 

In particular, if a customer comes to my business specifically looking for Comme des Garçons products or believes that my website is affiliated with Comme des Garçons, I am willing to direct that customer to your client's official website rather than represent that my business is affiliated with or operated by your client.

 

My objective is not to use your client's name or goodwill improperly. I am seeking a reasonable amount of time to responsibly move my existing business to a new identity without unnecessarily disrupting existing customers and business operations.

 

Accordingly, I respectfully request that your clients consider resolving this matter amicably by allowing me 90–120 days to complete the transition to a new business/domain identity, after which the disputed domain would no longer be used for the current business purpose.

 

I remain willing to cooperate in good faith and would prefer to resolve this matter without unnecessary escalation or further dispute.

 

Please let me know whether your clients would be willing to consider this proposal. If an agreement can be reached, I would be willing to cooperate with the appropriate procedural steps before FORUM to document the agreement.

 

C. Additional Submissions

In its additional submission, Complainant provides a screenshot of a sweatshirt from Respondent's website and compares it to an "authentic version" of the product from another website.

 

FINDINGS

For the reasons set out below, the Panel finds for Complainant and orders transfer of the Disputed Domain Name.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 or is being used in bad faith.

 

As stated in footnote 1, supra, given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Adequacy of the Complaint

In addition to failing to explain the relationship between the two named complainants and citing irrelevant and dead trademark registrations (supported by printouts from the website of the United States Patent and Trademark Office that appeared to be obtained five years ago), the Complaint fails to cite any authority (such as previous domain name dispute decisions or WIPO Overview 3.1) and includes repetitive and incomplete arguments (including at least one retained reference to the wrong domain name). In addition, the Panel notes that the original version of the Complaint included a reference to a domain name other than the Disputed Domain Name and failed to include a proper election of mutual jurisdiction (as required by paragraph 3(c)(xii) of the Rules) and a table of contents for the evidence (as required by paragraph 3(c)(xvii) of the Rules), all of which Complainant corrected following a notice of deficiency from Forum.

 

In light of the foregoing shortcomings in the Complaint, the Panel considered dismissing this proceeding. However, mindful of its ability to "conduct the administrative proceeding in such manner as it considers appropriate" (Rules, para. 10(a)) as well as the necessity to "ensure that the administrative proceeding takes place with due expedition" (Rules, para. 10(c)), and the obvious outcome had the Complaint been drafted with the professionalism expected for these proceedings, the Panel proceeds to a decision on the merits of the dispute.

 

Identical and/or Confusingly Similar

Based upon the (relevant) trademark registrations cited by the Complainant, it is apparent that the Complainant has rights in and to the COMME DES GARCONS Trademark.

 

As to whether the Disputed Domain Name is identical or confusingly similar to the COMME DES GARCONS Trademark, the relevant comparison to be made is with the third-level portion of the Disputed Domain Name only (i.e., "comme-des-garcons") because "[t]he applicable Top-Level Domain ('TLD') in a domain name (e.g., '.com', '.club', '.nyc') is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test". WIPO Overview 3.1, section 1.11.1.

 

As set forth in section 1.7 of WIPO Overview 3.1, "in cases where a domain name incorporates the entirety of a trademark,… the domain name will normally be considered confusingly similar to that mark."  Here, the Disputed Domain Name contains the entirety of at least one registration for the COMME DES GARCONS Trademark, and it also contains "a dominant feature of" those registrations for the COMME DES GARCONS Trademark that include an additional element. WIPO Overview 3.1, section 1.7.

 

Further, where, as here, a disputed domain name contains a complainant's trademark, and only such trademark, "it is apparent without the need for elaboration, that the Disputed Domain Name is identical or confusingly similar to" the trademark, Société Air France v. Indra Armansyah, WIPO Case No. D2016-2027, because in such case "[t]he disputed domain name is obviously identical to the Complainant's mark."  Icebug AB v. Domain Administrator, WIPO Case No. D2013-1823

 

The Panel finds the first element of the Policy has been established.

 

Rights or Legitimate Interests

The Complainant has argued that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, the "[s]ale of counterfeit goods and deceiving the public as to the source or sponsorship of goods is not bona fide"; "Respondent is not known by the domain name"; and "Respondent is using the domain name for commercial gain to mislead, divert and defraud Complainants' costumers and to tarnish the Comme des Garcons brand and trademarks," which "does not in any way constitute a fair use under applicable trademark law."

 

WIPO Overview 3.1, section 2.1, states: "Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving that a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."

 

The Panel finds that the Complainant has established its prima facie case, and Respondent's submission contains no evidence to the contrary, so the Panel is satisfied that Complainant has satisfied the second element of the Policy.

 

Registration or Use in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy:

 

(i) Circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;

(ii) You have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name;

(iii) You have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

 

Policy, paragraph 4(b).

 

By using the Disputed Domain Name in connection with a website that appears to be a website for, or associated with, Complainant – by using the COMME DES GARCONS Trademark on its website, by offering for sale the same goods associated with the COMME DES GARCONS Trademark and by allegedly "either sell[ing] counterfeit goods bearing Complainants' trademarks or defraud[ing] Complainants' customers" (allegations that Respondent has not denied; indeed, Respondent implies that its website using the Disputed Domain Name may be perceived as "represent[ing] that [Respondent's] business is affiliated with or operated by [Complainant]") – Respondent has clearly created a likelihood of confusion pursuant to paragraph 4(b)(iv) of the Policy. See, e.g., The Dow Chemical Company v. dowaychemical eva_hwang@21cn.com +86.7508126859, WIPO Case No. D2008-1078 (finding bad faith where complainant alleged that respondent's website "fraudulently impersonat[ed] the Complainant" because "[t]he Respondent was clearly specifically targeting the Complainant's trademark and attempting to divert Internet users searching for the Complainant's product to the Respondent's website"); Emu (Aus) Pty Ltd. and Emu Ridge Holdings Pty Ltd. v. Antonia Deinert, WIPO Case No. D2010-1390 ("a reasonable person who visited the Respondent's website was likely to be misled in relation to the source, sponsorship, affiliation, or endorsement of the website and the products purportedly made available for online sale on the website"); and Cantor Fitzgerald Securities, Cantor Index Limited v. Cantor Index, WIPO Case No. D2010-0807 (finding bad faith where "Respondent copied text, logos and other elements from Complainant's website").

 

Further, Respondent's inclusion of an inaccurate copyright notice and incomplete contact information on its website using the Disputed Domain Name are further evidence of bad faith. See, e.g., Abbott Diagnostics Scarborough, Inc. v. Mark Medina, FA 1974594 (Forum Dec. 21, 2021) (a website that "displays [a] copyright notice [with Complainant's name and trademark] falsely indicates that the site is [a] site for Complainant's…product" and "is thus attempting to pass itself off as Complainant" which "is evidence of bad faith disruption of Complainant's business under Policy ¶ 4(b)(iii) and further indicates an attempt to exploit Complainant's trademark so as to attract internet users for commercial gain under Policy ¶ 4(b)(iv)"); and MarineMax, Inc. v. Norman Jensen, WIPO Case No. D2024-2587 ("Respondent's apparent use of false contact information on the website it published bolsters the notion of bad faith").

 

The Panel finds that the Complainant has established the third element of the Policy.

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <comme-des-garcons.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Douglas M. Isenberg, Panelist

Dated: September 29, 2026