Westmore · UDRP DecisionMansurgavrielsingapore.com
The Panel ordered transfer of <mansurgavrielsingapore.com>. It found the domain confusingly similar to the MANSUR GAVRIEL mark because it incorporated the mark in full and merely added the geographical term “Singapore.” The Respondent lacked rights or legitimate interests because the domain resolved to a commercial website that apparently offered counterfeit or unauthorized competing goods and used the Complainant’s trade dress to suggest a nonexistent association. The same conduct established bad-faith registration and use under paragraph 4(b)(iv) of the Policy.
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The decision illustrates a straightforward trademark-plus-geography case in which the domain’s composition and active commercial use reinforced one another. The addition of “Singapore” did not avoid confusing similarity, while the sale of trademark-bearing goods through a site using the Complainant’s trade dress supported findings of no legitimate interest and intentional confusion for commercial gain.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Mansur Gavriel LLC v. Li Zhuang Case No. D2016-1595 1. The Parties The Complainant is Mansur Gavriel LLC of New York, New York, United States of America (“United States”), represented by Kelley Drye & Warren, LLP, United States. The Respondent is Li Zhuang of Dalian, Liaoning, China. 2. The Domain Name and Registrar The disputed domain name <mansurgavrielsingapore.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2016. On August 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2016. The Center appointed Alejandro Garcia as the sole panelist in this matter on September 16, 2016. 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 The Complainant is a company that designs and sells Italian-made handbags, wallets and shoes. The Complainant owns the domain name <mansurgavriel.com> and operates a website where its products are available for purchase online at “www.mansurgavriel.com”. The Complainant’s Trademark The Complainant is owner of several trademarks MANSUR GAVRIEL which predate the registration of the disputed domain name, including for example, European Union trademark 012296737 registered on March 24, 2014, protecting goods in class 18 (including handbags, tote bags, purses and wallets). The Respondent and the Disputed Domain Name The Respondent did not participate in these proceedings. The disputed domain name was registered on February 25, 2016. The disputed domain name currently resolves to a web page that sells handbags bearing the MANSUR GAVRIEL trademark. The Complainant asserts that the goods offered on the Respondent’s website are either counterfeit or unauthorized. 5. Parties’ Contentions A. The Complainant Identical or Confusingly Similar The Complainant argues that the trademark and the disputed domain name are nearly identical and confusingly similar. The disputed domain name incorporates in its entirety the Complainant’s trademark MANSUR GAVRIEL. The Complainant adds that the term “Singapore” at the end of the disputed domain name is non-distinctive and irrelevant as it reflects a location in which the Complainant promotes and sells its products. Rights or Legitimate Interests The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name is not the trade name or company name of the Respondent. The Respondent is not the Complainant’s licensee and is not authorized to use the Complainant’s MANSUR GAVRIEL trademark. The Complainant adds that the Respondent is seeking to create a false association with it, and to attract visitors looking for the Complainant’s website and/or information about the Complainant’s goods and services for its own commercial gain by increasing traffic and advertising and sponsorship revenue for the Respondent’s own website. Registered and Used in Bad Faith In this respect, the Complainant argues that the Complainant’s MANSUR GAVRIEL trademarks “have a strong reputation and are widely known and well recognized in the United States and throughout the world.” Thus, the Complainant adds, the Respondent must have been aware of the Complainant’s trademarks when the disputed domain name was registered. The Complainant adds that by “including the entirety of Complainant’s MANSUR GAVRIEL mark in the Disputed Domain Name, creating a website at the Disputed Domain Name that offers goods with are substantially indistinguishable from those offered on Complainant’s MANSURGAVRIEL.COM website, and misappropriating images from Complainant’s website, Respondent is seeking to create a false association with Complainant.” The Complainant reiterates in this respect that the goods offered on the Respondent’s website are either counterfeit or unauthorized. The Complainant seeks the transfer of the disputed domain name. B. The Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has established to the Panel’s satisfaction that it has rights in respect of the trademark MANSUR GAVRIEL. The dominant part of the disputed domain name is “mansurgavriel”. This element is identical to the MANSUR GAVRIEL trademark registered by the Complainant. The addition of generic or descriptive terms to the disputed domain name (in this case, the geographical term “Singapore”) is insufficient to prevent confusing similarity with the Complainant’s trademark. The Panel in this regard refers to paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which indicates: “The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms […] typically being regarded as insufficient to prevent threshold Internet user confusion […]” Accordingly, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark MANSUR GAVRIEL within the meaning of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out three non-exclusive examples under which a respondent can demonstrate that it has rights or legitimate interests in a domain name: “(i) Before any notice […] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) [The respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [The respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain[,] to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” In this case, the Complainant’s (uncontroverted) evidence annexed to the Complaint shows that the disputed domain name has resolved to a website which—as advanced by the Complainant—apparently offers counterfeit or unauthorized goods that compete with those created and sold by the Complainant. In this regard, the Panel accepts the Complainant’s assertion that the Respondent’s use of the disputed domain name to resolve to a website with the same trade dress as that of the Complainant, suggesting a non-existing association between the Respondent’s website and the Complainant, does not give rise to any rights or legitimate interests in the disputed domain name within the meaning of the Policy. Furthermore, on the basis of the evidence before it, the Panel concludes that the Complainant has made a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and that none of the circumstances set out in paragraph 4(c) of the Policy apply. The Respondent has not rebutted the Complainant’s contentions. Accordingly, the Complainant meets the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent 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, provided that the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not intended to be exhaustive. See, e.g. , Telstra Corporation Limited v. Nuclear Marshmallows , WIPO Case No. D2000-0003 . The overriding objective of the Policy is to restrain the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. (See, in this respect, e.g. , Match.com, LP v. Bill Zag and NWLAWS.ORG , WIPO Case No. D2004-0230 ). On the basis of the evidence before it and in particular the fact that the disputed domain name resolved (and continues to resolve) to a website that appears to be offering counterfeit or unauthorized goods according to the Complainant’s (uncontroverted) submissions, the Panel finds that the Respondent has engaged in bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy. In turn, on the basis of this finding, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. 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 <mansurgavrielsingapore.com> be transferred to the Complainant. Alejandro Garcia Sole Panelist Date: September 30, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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