Interparfums Suisse Sàrl v Andrew Bradner

WIPO Case No. D2024-3174

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Interparfums Suisse Sàrl v. Andrew Bradner

Case No. D2024-3174

1. The Parties

The Complainant is Interparfums Suisse Sàrl, Switzerland, represented internally.

The Respondent is Andrew Bradner, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <lanvinluxe.shop> is registered with Sav.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2024.

On August 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in

connection with the disputed domain name. On August 2, 2024, the Registrar transmitted by email to the

Center its verification response disclosing registrant and contact information for the disputed domain name

which differed from the named Respondent (not available) and contact information in the Complaint.

The Center sent an email communication to the Complainant on August 5, 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 August 19, 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 August 20, 2024. In accordance with the Rules,

paragraph 5, the due date for Response was September 9, 2024. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on September 14, 2024.

The Center appointed David Stone as the sole panelist in this matter on September 20, 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 by the Center to ensure compliance with the Rules,

paragraph 7.

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4. Factual Background

The Complainant is a Swiss company which has developed and distributed perfume and related perfumed

products under the LANVIN mark since 2004. LANVIN itself is a well-known brand of luxury perfume dating

back to the 1920s.

Among others, the Complainant owns the following registered trademarks (the Marks):

- LANVIN: United States Trademark registration No. 0556672 registered on March 25, 1952, including

perfumes;

- LANVIN: French Trademark registration No. 1328275 registered on October 25, 1985 in international

class 3; and

- LANVIN: European Trademark registration No. 017911434 registered on October 18, 2018 in

international class 3.

The disputed domain name was created on July 24, 2024. The Complainant provided evidence that the

Respondent has previously maintained a website at the disputed domain name which used the Marks:

(i) prominently in the top left-hand corner of the website; (ii) within the product names of colognes and

perfumes that were being advertised for sale via the website; and (iii) within URL title “Shop the Best Lanvin

Products Online – Lanvin Luxe”. At the date of this decision, the disputed domain name appears to return no

data.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer

of the disputed domain name.

The Complainant contends that, under the first element, the disputed domain name reproduces the Marks

entirely and the additional word “LUXE” serves to designate the quality of the products protected by the

Marks.

Under the second element, the Complainant contends that the Respondent is not the owner of any

trademark registrations and there is no suggestion of the Respondent being commonly known by the Marks.

The Complainant is not affiliated with the Respondent and has never granted authorization nor license to use

the Marks or any trademark confusingly similar thereto. The Complainant also contends that the

Respondent did not disclose on its website a relationship with the Complainant.

Under the third element, the Complainant contends that the disputed domain name directed users to a

“LANVIN Best Selling” website with URL title “Shop the Best Lanvin Products Online – Lanvin Luxe” which

sells perfumes that are not related to the Complainant under the Marks. The Complainant also contends that

the Respondent is clearly using its knowledge of the Marks and the reputation of the Marks in order to

mislead the public into thinking the domain is owned by the Complainant or is connected to the Complainant.

B. Respondent

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

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6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing

(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison

between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The entirety of the Marks is reproduced within the disputed domain name. Accordingly, the disputed domain

name is confusingly similar to the Marks for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

“LUXE” is descriptive of the quality of the goods sold by the Complainant. Therefore, although the addition of

other terms here, “LUXE” and the global Top-Level Domain (gTLD) “.shop”, may bear on assessment of the

second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing

similarity between the disputed domain name and the mark for the purposes of the Policy.

WIPO Overview 3.0, sections 1.8 and 1.11.

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.

Although 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 difficult 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 (although the burden of

proof always remains on the complainant). If the respondent fails to come forward with such relevant

evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0,

section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case

that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has

not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence

demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the

Policy or otherwise.

Further, the website to which the Complainant’s evidence shows the disputed domain name previously

resolved does not appear to fall under the safeguards of fair use envisioned under section 2.8 of the

WIPO Overview 3.0, given there is no prominent disclaimer as to the lack of the website’s association with

the Complainant – to the contrary, the website used the Marks in the top left of the website where consumers

would expect to find the name of the operator of the website.

Furthermore, panels have held that the use of a domain name for illegal activity, here, claimed passing off

(albeit not claimed in those terms), or other types of fraud, can never confer rights or legitimate interests on a

respondent. WIPO Overview 3.0, section 2.13.1.

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

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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.

In the present case, the Panel notes that the Complainant’s Marks are well-known around the world and the

Respondent has chosen to use the Marks with the disputed domain name with only the additional terms

“LUXE” and the gTLD “.shop”. As set out above, “LUXE” is descriptive of the quality of the goods sold by the

Complainant. Further, the Respondent, while currently not hosting a website at the disputed domain name,

previously created and hosted a website at the disputed domain name which used the Marks: (i) prominently

in the top left-hand corner of the website; (ii) within the product names of colognes and perfumes that were

being advertised for sale via the website; and (iii) within URL title “Shop the Best Lanvin Products Online –

Lanvin Luxe”.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain

name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a

respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have found that evidence of a respondent seeking to cause confusion supports a finding that a

respondent has registered a domain name to attract, for commercial gain, Internet users to its website by

creating a likelihood of confusion with the complainant’s mark. WIPO Overview 3.0, section 3.1.4.

The Panel finds that the content of the website previously hosted at the disputed domain name is strongly

suggestive of bad faith because it is evidence of the Respondent seeking to cause confusion. The prominent

and frequent use of the Marks (including in the top left of the website where consumers would expect to find

the name of the operator of the website) to sell products highly similar or identical to those of the

Complainant shows an intention of the Respondent to confuse and thereby attract users to its website for

commercial gain.

Panels have also found that the non-use of a domain name would not prevent a finding of bad faith under the

doctrine of passive holding. WIPO Overview 3.0, section 3.3. The Panel notes the reputation of the

Complainant’s Marks, and the composition of the disputed domain name, and finds that in the circumstances

of this case the present passive holding of the disputed domain name does not prevent a finding of bad faith

under the Policy.

Further, panels have held that the use of a domain name for illegal activity, here, claimed passing off (albeit

not claimed in those terms), or other types of fraud, constitutes bad faith. WIPO Overview 3.0, section 3.4.

Furthermore, the Respondent has not attempted to refute any of the Complainant’s contentions, which casts

additional doubt on the nature of its conduct. WIPO Overview 3.0, section 3.2.1.

Having reviewed the record, the Panel concludes that the actions of the Respondent in choosing the

disputed domain name were aimed at attracting, for commercial gain, Internet users by creating a likelihood

of confusion with the Complainant’s Marks. The Panel therefore concludes that the disputed domain name

was registered and is being used in bad faith.

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

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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 <lanvinluxe.shop> be transferred to the Complainant.

/David Stone/

David Stone

Sole Panelist

Date: October 4, 2024