Clarke, Modet y Cía., S.L. v Kawsar Ahamad Dipu

WIPO Case No. D2024-4106

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Clarke, Modet y Cía., S.L. v. KAWSAR AHAMAD DIPU

Case No. D2024-4106

1. The Parties

The Complainant is Clarke, Modet y Cía., S.L., Spain, represented internally.

The Respondent is KAWSAR AHAMAD DIPU, Bangladesh.

2. The Domain Name and Registrar

The disputed domain name <clarkemode.com> (the “Domain Name”) is registered with NameCheap, Inc.

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2024. On October 7, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 7, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 8, 2024, 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 October 10, 2024.

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 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on October 16, 2024. In accordance with the Rules, paragraph
5, the due date for Response was November 5, 2024. The Respondent sent two identical emails on October
12, 2024, and one email on November 5, 2024, but did not submit any formal response. Accordingly, the
Center notified the Parties on November 5, 2024, that it would proceed with Panel Appointment.

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The Center appointed Mathias Lilleengen as the sole panelist in this matter on November 8, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is specialized in intellectual property (IP) in Spanish and Portuguese speaking countries, offering IP services in 195 countries. The Complainant has received acknowledgments in different legal ranking services and is an active member of leading international IP organizations.

The Complainant owns a number of trademarks that incorporates CLARKE and MODET around the world,
for example, Spanish Trademark No. 0000183 for CLARKE MODET AND COMPANY registered on
September 12, 1902, and European Union Trademark No. 18072630 for CLARKEMODET registered on

October 18, 2019. The Complainant operates through its website “

The Domain Name was registered on September 11, 2024. The Domain Name had resolved to a “coming
soon” webpage that encouraged Internet users to leave their email address. At the time of drafting the

Decision, the Domain Name resolved to an error page.

5. Parties’ Contentions

A. Complainant

The Complainant provides evidence of trademark registrations and argues that there is identity between the

Domain Name and the Complainant's trademark and business name, save the omission of the final “t”.

The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain relation to the Complainant.

Name. The Complainant asserts that the Respondent has never been known by the Domain Name, the

The Complainant believes the Respondent has intentionally registered the Domain Name in bad faith. The Complainant argues that due to the Complainant’s reputation and presence on the Internet, it is unlikely that the Respondent did not know the Complainant’s trademark at the time of the registration of the Domain Name. The Complainant argues that the Respondent has registered the Domain Name with an intention of obtaining a commercial gain by selling the Domain Name, as the Respondent replied to the Complainant’s cease and desist letter with an offer to sell the Domain Name to the Complainant for USD 10,000. Moreover, the Respondent has used the Domain Name to set up a “coming soon” webpage that encouraged Internet users to leave their email address in what may have been part of phishing activity.

B. Respondent

The Respondent did not formally reply to the Complaint but has sent some emails in which he inter alia wrote: “When I acquired the domain through NameCheap, it was openly available and unclaimed. There were no indications that it was associated with, or protected by, any existing company or entity. Therefore, I believe this domain name registration does not infringe upon any established trademark or proprietary rights, as it was legally and openly purchased on an accessible public marketplace. Furthermore, if the Complainant is interested in obtaining clarkemode.com, I am open to transferring it to them for a sum of [USD] 10,000”.

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6. Discussion and Findings

A. Identical or Confusingly Similar

The test for confusing similarity involves a reasoned but relatively straightforward comparison between the
Complainant’s trademark and the Domain Name. Where a domain name incorporates the entirety of a
trademark, the domain name will normally be considered confusingly similar to that mark for purposes of
UDRP standing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”), section 1.7.

The Complainant has established that it has rights in trademarks that incorporates CLARKE and MODET. does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8. For the purpose of assessing the confusing similarity under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”) “.com”; see WIPO Overview 3.0, section 1.11.1.

Based on the available record, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving 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. See WIPO Overview 3.0, section 2.1.

Having reviewed the record, the Panel finds the Complainant has established a case that the Respondent
lacks rights or legitimate interests in the Domain Name. The Respondent has not rebutted the Complainant’s
showing and has not come forward with any relevant evidence demonstrating rights or
legitimate interests in the Domain Name. The Respondent has claimed the Domian Name was registered for
his business, but he has not in any way explained what this business is or supported the allegation with any
documentation. There is no evidence that the Respondent has registered the Domain Name as a trademark
or acquired trademark rights. There is no evidence of the Respondent’s use of, or demonstrable

preparations to use, the Domain Name in connection with a bona fide offering of goods or services.

The Panel finds, based on the available record and on balance of probability, the second element of the

Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

The Respondent appears to labor under misconception that as the Domain Name was “openly available and unclaimed”, his “registration does not infringe upon any established trademark or proprietary rights”. This is not the case under the Policy. The prior rights of the Complainant and the composition of the Domain Name,

together with the Respondent’s lack of a credible explanation as to why he registered the Domain Name,
make it more likely than not that the Respondent knew of the Complainant when the Respondent registered
the Domain Name. The Respondent’s offer to sell the Domain Name for USD 10,000 indicates under the

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circumstances bad faith intention to profit from the resale of the Domain Name to the Complainant at a price
likely exceeding the Respondent’s out-of-pocket expenses related to the parked Domain Name. The passive
use of the Domain Name to resolve to a “coming soon” webpage and an error page does not prevent a
finding of bad faith. See WIPO Overview 3.0, section 3.3.

For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy. The third element of the Policy has been established.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders the Domain Name <clarkemode.com> transferred to the Complainant.

/Mathias Lilleengen/
Mathias Lilleengen
Sole Panelist
Date: November 14, 2024