SESSUN v William L Laporte

WIPO Case No. D2024-4732

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

SESSUN v. William L Laporte

Case No. D2024-4732

1. The Parties

The Complainant is SESSUN, France, represented by BBLM Avocats, France.

The Respondent is William L Laporte, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <sessun-en.click> 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 November 15, 2024. On November 18, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 2024 and November 20, 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 (Unknown / “Redated for Privacy”) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 20, 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 November 22, 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 December 3, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2024.

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The Center appointed Fabrizio Bedarida as the sole panelist in this matter on January 3, 2025. 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 in this proceeding is SESSUN, a French company. Founded in 1996, the Complainant specializes in the manufacture of clothing, shoes and accessories for women. The Complainant (with a claimed turnover of EUR 52,000,000 in 2023) has expanded its activities worldwide.

The Complainant owns the SESSUN trademarks, which enjoy protection through several registrations worldwide.

The Complainant is, inter alia, the owner of:

United States Trademark Registration number 4497460 for the SESSUN (word) trademark, registered on
March 18, 2014.

European Union trademark registration number 002155778 for the SESSÙN S (figurative) trademark registered on July 1, 2002.

European Union trademark registration number 014666994 for the SESSÙN (word) trademark registered on
January 29, 2016.

The Complainant is also the owner of the domain name <sessun.com>, registered on January 11, 2000, which is used as an online store for the sale of designer clothing, shoes and accessories.

The disputed domain name was registered on November 8, 2024, and resolves to a website mimicking the Complainant’s official website, including the same homepage. On this website the Complainant’s SESSUN trademark, as well as purported SESSUN-branded products, which are offered for sale at heavily discounted prices, as well as the Complainant’s official product images are displayed.

On November 13, 2024, the Complainant sent a notification of infringement of its intellectual property rights regarding the disputed domain name to the Registrar, requesting the removal of the contents displayed on the corresponding website as well as the website's deactivation.

This notification went unanswered.

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.

Notably, the Complainant contends that the addition of the letters “en” emphasizes the confusion between the disputed domain name and the Complainant’s trademark, as it leads the public to believe that it is an English version of a website of the Complainant or connected to the Complainant; that given the fact that the website reachable at the disputed domain name is a copy of the Complainant’s official website, including the same homepage and the same content, it is clear that the Respondent was perfectly aware of the Complainant and its trademarks when registering the disputed domain name, and that its purpose was to take advantage of the success and reputation of the Complainant’s SESSUN trademark. In addition, the

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Complainant claims that the fact that the Respondent’s website is being run in order to sell counterfeit goods supports the inference that the Respondent registered the disputed domain name to misleadingly attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s

trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and

products, and this shows bad faith registration and use of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain name, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii)       the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      the disputed domain name has been registered and is being used in bad faith.

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 Panel finds the mark is incorporated entirely and recognizable within the disputed domain name.
Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, the term “en”, may bear on assessment of the second and third elements, the Panel finds the addition of such term 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, section 1.8.

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.

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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.

The Panel notes that the composition of the disputed domain name, incorporating the Complainant’s trademark and the term “-en”, which may suggest to the visitors that they are accessing an English version of the Complainant’s website, as such carries a risk of implied affiliation. Furthermore, noting the design of the website at the disputed domain name copying textual and visual content from the Complainant’s official website, the impersonating nature of the disputed domain name is reinforced and as such, the disputed domain name cannot qualify as fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. WIPO Overview 3.0, section 2.5.1.

Panels have held that the use of a domain name for illegitimate activity, here claimed impersonation, 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.

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.

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.

In the present case, the Panel notes that, as discussed below, it is highly likely that the Respondent was aware of the Complainant’s trademark registrations and rights to the SESSUN trademark when it registered the disputed domain name.

The disputed domain name contains, in its entirety, without any authorization or approval, the Complainant’s registered SESSUN trademark.

Owing to the substantial presence established worldwide and on the Internet by the Complainant, it is at the
least very unlikely that the Respondent was not aware of the existence of the Complainant, or of the

Complainant’s trademark and domain name, when registering the disputed domain name.

In fact, the SESSUN trademark and the <sessun.com> domain name were registered many years before the
Respondent registered the disputed domain name.

In addition, noting also the composition of the disputed domain name, incorporating the Complainant’s trademark and its use to resolve to a website mimicking the Complainant’s official website, including the same homepage, the same textual and visual content, and use of the Complainant’s official product images, it is clear that the Respondent was perfectly well aware of the Complainant and its trademarks when registering the disputed domain name, and that its purpose was to take advantage of the success and reputation of the Complainant’s SESSUN trademark.

It thus appears that the Respondent registered the disputed domain name to misleadingly attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and products, and this shows bad faith registration and use of the disputed domain name.

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The Panel is therefore satisfied that the Respondent registered the disputed domain name in bad faith.

In fact, previous panels have held that the use of a domain name for illegitimate activity, here claimed as
impersonation/passing off, constitutes bad faith. Having reviewed the record, the Panel finds the

Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

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

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 <sessun-en.click> be transferred to the Complainant.

/Fabrizio Bedarida/
Fabrizio Bedarida
Sole Panelist
Date: January 17, 2025