Administrative panel decision mr. Pierre Hardy V. CiRen Wu / Undisclosed




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ARBITRATION
AND
MEDIATION CENTER




ADMINISTRATIVE PANEL DECISION

Mr. Pierre Hardy v. CiRen Wu / Undisclosed

Case No. D2015-1028



1. The Parties

The Complainant is Mr. Pierre Hardy, Paris, France, represented by Cabinet Beau de Lomenie, France.


The Respondent is CiRen Wu / Undisclosed of LuLuShi, China.


2. The Domain Names and Registrar

The disputed domain names


and
are registered with GoDaddy.com, LLC (the “Registrar”).


3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2015. On June 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 26, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 29, 2015, 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 July 9, 2015.


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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2015.

The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on August 13, 2015. 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 the fashion designer, Pierre Hardy, who launched his business also named Pierre Hardy on October 12, 1990. PIERRE HARDY brand shoes are well known and sold worldwide. PIERRE HARDY shoes, accessories and items of clothing are regularly featured in fashion magazines. PIERRE HARDY goods are sold in Australia, Austria, Azerbaijan, Canada, China, France, Georgia, Hong Kong, China, Italy, Japan, Kazakhstan, the Russian Federation, Saudi Arabia, Singapore, the Republic of Korea, Spain, Switzerland, Taiwan, Province of China, Thailand, Turkey, Ukraine, United Arab Emirates, the United Kingdom of Great Britain and Northern Ireland, and the United States of America. Both the Chinese and Korean Intellectual Property Offices have recognized PIERRE HARDY as being a well-known brand.


The Complainant owns an international trademark registration for PIERRE HARDY designating Australia, Bahrain, Georgia, Japan, the Republic of Korea, Singapore, Turkey, the United States of America, Uzbekistan, Azerbaijan, Bulgaria, Switzerland, China, Cyprus, Egypt, Croatia, Kazakhstan, Morocco, Monaco, Serbia, the Russian Federation and Ukraine, registered on March 7, 2008. The registration covers the following goods:


Class

Specification

14

Jewellery; jewellery; chronometric instruments, namely chronometers, chronographs used as watches; watches and their components, namely watch crystals, watch cases, watch crowns, watch movements, watch bands, watch clasps; necklaces; bracelets; rings; earrings; pendants; brooches; cuff-links; charms; medals; medallions; tie pins; precious stones; precious metals and alloys thereof except for dental use; jewel boxes of precious metal, jewellery boxes of precious metal

18

Leather goods, school bags, key cases (leather goods); card cases (notecases), document cases, wallets, change purses, briefcases (leatherware), school satchels, travelling sets (leather goods); handbags, travelling bags; trunks and suitcases; collars for animals; hat boxes of leather; boxes made of leather; purses; walking sticks; horse collars; covers for horse saddles; riding saddles; travelling trunks; vanity cases sold empty; whips; game bags; leather leashes; attache cases; parasols; umbrellas; beach bags; sling bags for carrying infants; garment bags (for travelling purposes); saddlery articles

25

Clothing, blouses, blousons, leotards (bodysuits), shawls, dressing gowns, jerseys, shirts, chemisettes, coveralls, suits, leather clothing, imitation leather clothing, sashes for wear, scarves, furs, gabardines, waistcoats, raincoats, skirts, layettes, coats, trousers, overcoats, parkas, pullovers, pyjamas, dresses, tee-shirts, knitwear, uniforms, jackets, clothing for gymnastics; bathing suits, bath-robes, stockings, briefs, socks, tights, underclothing, singlets, corsets, briefs and pants, fur stoles, gloves (clothing), brassieres, gaiters, panties and underpants, suspenders, garters, ties, belts (clothing); footwear, bath slippers, boots, half-boots, slippers, beach shoes, ski boots, sports footwear, dress shoes, espadrilles, gymnastic shoes, slippers, sandals, shoes; berets; caps; eyeshades; bonnets; top hats

The Complainant also owns a Community trademark registration for PIERRE HARDY registered on February 4, 2004 for the following goods:




Class

Specification

3

Perfumery

9

Spectacles.

14

Watches, jewellery

18

Leather goods, handbags and travelling bags, trunks and travelling bags

25

Clothing, footwear

The Complainant also owns a number of domain names relating to “pierrehardy”:


,
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,
,
,
,
,
,
,
,
,
,
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,
,
,
,
,
,
,
and
.
The disputed domain names were both registered on November 17, 2014.
The Complainant utilized a domain name watch report service to ascertain that in January 2015, the Registrant of both of the disputed domain names was an individual named [ ]. The Complainant contacted [ ]on March 2, 2015 by sending a cease and desist letter via email.
Sometime after contacting [ ], the registrant of both of the disputed domain names was changed to an individual named Wu Ci Ren. The Complainant contacted Wu Ci Ren with a cease and desist letter via email on May 14, 2015.
The Complainant performed WhoIs searches in relation to both of the disputed domain names on May 29, 2015. Both searches revealed that the registrant’s details were no longer disclosed, the registrations having been updated on May 5, 2015.
The Complainant filed this Complaint on June 17, 2015 and listed the Respondent as “undisclosed”. Subsequently the Registrar informed the Center that the registrant of both disputed domain names is currently CiRen Wu.



5. Parties’ Contentions

A. Complainant

As to the requirement in paragraph 4(a)(i) of the Policy, the Complainant contends that the disputed domain names are both confusingly similar to its trademark PIERRE HARDY. The Complainant states that, as case law has established that the top level suffix in the disputed domain name should be disregarded, the mark PIERRE HARDY is recognizable in the disputed domain names despite the addition of the descriptive terms “shoes” and “sale”. The Complainant states that “shoes” is descriptive of the main products sold by the Complainant, a fact known by the holder of the disputed domain names as the holder was selling unauthorized shoes branded PIERRE HARDY as part of the former content of the website hosted on the disputed domain name, “www.pierrehardyshoes.com”. In addition, the Complainant contends that the word “sale” is descriptive of the intent to use the disputed domain name


to sell unauthorized products branded PIERRE HARDY. Therefore the Complainant contends that the addition of the descriptive terms “shoes” and “sale” to the disputed domain names does not avoid a finding of confusing similarity. The Complainant therefore contends that the requirement of paragraph 4(a)(i) of the Policy is met.
As to the requirement in paragraph 4(a)(ii) of the Policy, the Complainant contends that the Respondent does not have any rights or legitimate interests in respect of the domain names. The Complainant states that “Pierre Hardy” is the real full name of the PIERRE HARDY brand’s shoe designer. He owns several PIERRE HARDY trademarks and holds the official website at ”www.pierrehardy.com”, through which he sells his shoes through an online store. He also owns the domain name
. In the Amended Complaint, the Complainant states that he has not licensed nor otherwise permitted the Respondent to use the trademark PIERRE HARDY nor to apply for any domain name incorporating the trademark. The Complainant contends that there is no proof of a relationship or economic link between the Complainant and the Respondent, and in the absence of substantial evidence demonstrating the contrary, it is not possible for the Respondent to have rights or legitimate interest in the Complainant’s trademarks.
In the Complaint, the Complainant also stated that, despite the identity of the Respondent being undisclosed, he had not licensed nor otherwise permitted the undisclosed Respondent to use the trademark PIERRE HARDY or apply for any domain name incorporating that mark. In addition, in both the Complaint and the Amended Complaint, the Complainant submits that the owner of the disputed domain names (whether the undisclosed registrant or the Respondent) has never made a bona fide use of them, nor made any noncommercial or fair use of them.
The Complainant further notes that unauthorized shoes branded PIERRE HARDY were sold on the website hosted under the disputed domain name
, and the use of the phrase “Copyright (…) Pierre Hardy” on that website showed intention to create a likelihood of confusion among Internet users. The Complainant also contends that as both of the disputed domain names are presently not active, it can be concluded that the Respondent does not have legitimate interests in them. The Respondent has also not complied with his contractual duties with the Registrar of the disputed domain names, as he has infringed intellectual property of a third party i.e. Pierre Hardy.
Finally, as to paragraph 4(a)(iii) of the Policy, the Complainant refers to case law to submit that, in certain circumstances, inactivity by the Respondent can amount to a domain name being used in bad faith. The Complainant refers to his unsuccessful attempts to obtain any response from the Respondent and a previous registrant, and the fact that his trademarks are recognized as internationally well-known so that the successive holders of the disputed domain names including the Respondent and the original registrant could not claim that they were unaware of the Complainant’s prior rights. The Complainant further contends that the similarities between the disputed domain names and the Complainant’s domain names and trademarks are not coincidental. He submits that the owner of the disputed domain names has previously attempted to attract Internet users to the disputed domain names for the purpose of commercial gain, by creating a likelihood of confusion with the Complainant’s mark. The Respondent had previously offered for sale unauthorized shoes branded PIERRE HARDY at the website appearing at the disputed domain name
. The Complainant states that these fraudulent acts stopped after the Complainant attempted to settle the matter through his letters of demand, and the Respondent now passively holds the disputed domain names. The Complainant therefore submits that the Respondent’s registration and use of the disputed domain names constitutes bad faith.
The Complainant requests that the disputed domain names be transferred to the Complainant.

B. Respondent

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




6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain names in order to succeed in this proceeding:


(I) That the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights; and
(II) That the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(III) That the disputed domain names have been registered and are being used in bad faith.


A. Identical or Confusingly Similar

The Panel accepts that the Complainant has established trademark rights and goodwill in its registered trademarks PIERRE HARDY and that these rights well predated the registration of the disputed domain names.


The Panel finds that the disputed domain names
and
are confusingly similar to the Complainant’s registered mark PIERRE HARDY. The mark PIERRE HARDY is the dominant component of each of the disputed domain names. It is distinctive, compared with the generic/descriptive terms “shoes”, and “sale”. The Panel notes that the Complainant’s PIERRE HARDY trademarks are registered in class 25 for (inter alia) footwear, meaning that the disputed domain name
is entirely encapsulated in the Complainant’s trademark registrations. The addition of the generic terms “shoes” and “sale” does not prevent the disputed domain names from being confusingly similar to the Complainant’s PIERRE HARDY marks.
The Panel accordingly finds that the disputed domain names are both confusingly similar to trademarks in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain names, among other circumstances, by showing any of the following elements:


(I) That before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain names or a name corresponding to a disputed domain names in connection with a bona fide offering of goods or services; or
(II) That the Respondent has been commonly known by the disputed domain names, even if it had acquired no trademark or service mark rights; or
(III) That the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain names lies with the Complainant.
The Complainant states, and the Panel accepts, that the Complainant has not licensed or otherwise authorized either the current Respondent, or any past owners of the disputed domain names, to use the PIERRE HARDY mark. The Complainant also contends that both disputed domain names are currently inactive.
In the circumstances, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.
Accordingly, and in the absence of any formal response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain names in bad faith:


(I) Circumstances indicating that the Respondent has registered or has acquired the disputed domain names 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 the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain names; or
(II) That the Respondent has registered the disputed domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(III) That the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(IV) That by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel is satisfied that both of the disputed domain names were registered and have been used in bad faith.
In relation to the disputed domain name
, the Panel relies on the following.
(a) The Panel notes that initial registration in bad faith is confirmed by the fact that the purpose and actual use of the disputed domain name
has been to host a website which offered unauthorized shoes under the Complainant’s trademark. The initial registrant plainly must have known of the Complainant’s well known trademarks at the time of registration as evidenced by the actions of initially offering unauthorized shoes for sale on the website displayed at the disputed domain name
. In addition, the initial registrant purported to exercise intellectual property rights in relation to the name Pierre Hardy by stating “Copyright 2014 Pierre Hardy Shoes” in the footer of the website displayed at the disputed domain name
. However, the Complainant has not provided evidence showing that these practices continued when the disputed domain name
was acquired by the Respondent and as such the Panel cannot take them into account.
(b) Despite the above, the disputed domain name includes the Complainant’s distinctive trademark PIERRE HARDY. The Complainant has shown that this trademark is well-known, particularly in relation to shoes in many countries, including China where the Respondent resides.
(c) The Panel finds that the Respondent must have been aware of the Complainant’s well known trademarks when acquiring the disputed domain name and thereby acquired the domain name in bad faith. This is further demonstrated by the fact that the suffix following PIERRE HARDY is a descriptor of the type of products PIERRE HARDY is most well-known for.
(d) The Respondent has not made any use of the disputed domain name since acquisition from the original registrant. The Panel relies on Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003 () to find that in all of the above mentioned circumstances, this passive holding of the disputed domain name
is indicative of bad faith use.
(e) The Panel also draws inferences of bad faith registration and use from the Respondent’s failure to provide any formal response to the Complaint or any explanation.
In relation to the disputed domain name
, the Panel finds:
(a) The disputed domain name
includes the Complainant’s distinctive trademark PIERRE HARDY. The Complainant has shown that this trademark is well-known in many countries, including China where the Respondent resides.
(b) The Panel finds that the Respondent must have been aware of the Complainant’s well known trademarks when acquiring the disputed domain name and thereby acquired the domain name in bad faith. The suffix “sale” is a clear pointer to some form of retail services associated with the mark PIERRE HARDY.
(c) The Respondent has not made any use of the disputed domain name since acquisition from the original registrant. The Panel relies on Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003 () to find that in all of the above mentioned circumstances, this passive holding of the disputed domain name
is indicative of bad faith use.
(d) The Panel also draws inferences of bad faith registration and use from the Respondent’s failure to provide any formal response to the Complaint or any explanation.
Accordingly, the Panel finds that paragraph 4(a)(iii) is satisfied in favor of the Complainant.


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 names


and
be transferred to the Complainant.

Andrew Brown Q.C.

Sole Panelist



Date: August 27, 2015



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