Societe De Gestion Pierre Cardin v esra demirtas, Offsite

WIPO Case No. D2025-1432

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Societe De Gestion Pierre Cardin v. esra demirtas, Offsite

Case No. D2025-1432

1. The Parties

The Complainant is Societe De Gestion Pierre Cardin, France, represented by Tmark Conseils, France.

The Respondent is esra demirtas, Offsite, Finland.

2. The Domain Name and Registrar

The disputed domain name <cardinbrand.com> is registered with Tucows Domains Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2025. On
April 8, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On April 8, 2025, 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 (Contact Privacy Inc. Customer 0174287054 / Contact Privacy
Inc. Customer) and contact information in the Complaint. The Center sent an email communication to the
Complainant on April 10, 2025, 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 April 11, 2025.

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 April 15, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2025.

The Center appointed Mehmet Polat Kalafatoğlu as the sole panelist in this matter on May 14, 2025. The
Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant, SOCIETE DE GESTION PIERRE CARDIN, is a company which was registered in the French Registry of Commerce on May 29, 1973. The record shows that the Complainant is the exclusive licensee of the rights to various trademark registrations PIERRE CARDIN in many jurisdictions around the world in relation to the fashion industry, and specifically clothing.

The record also shows that the Complainant owns several registered trademarks consisting of or containing the name PIERRE CARDIN, including the following:

- the French trademark registration No. 1374766 for PIERRE CARDIN, registered on October 14, 1986,

in class 3;

- the French trademark registration No. 4915362 for PIERRE CARDIN, registered on November 22,

2022, in classes 6, 7, 8, 11, 14, 20, and 21;

- the European Union trademark registration No. 018949043 for PIERRE CARDIN UNDERWEAR,

registered on March 27, 2024, in class 25 (which also covers Finland, where the Respondent is located).

The Complainant notes that it owns several domain names incorporating the famous PIERRE CARDIN trademark, such as the domain name <pierrecardin.com> registered on February 26, 1999.

The disputed domain name was registered on March 5, 2025. At the time of filing the Complaint, the disputed domain name was resolving to a website that sells clothes, and advertised an “exclusive mystery ticket drop” for a limited-edition collection. At the time of this Decision, it resolves to the webpage of a third- party e-commerce platform and displays the following main text: “This store does not exist”.

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 affirms that, founded in 1950, it enjoys a solid reputation in the fashion industry. It affirms that it has used and promoted the PIERRE CARDIN name to market its brand for over 50 years, and the PIERRE CARDIN trademark is considered a well-known trademark due to its old and intensive use. The Complainant also notes that thanks to its serious and unique approach for more than 50 years, PIERRE

CARDIN now represents 238 boutiques in France and almost a thousand points of sale worldwide.

The Complainant’s contentions regarding the three elements under the Policy can be summarized as follows:

The Complainant asserts that the only distinctive element of the disputed domain name is the family name “Cardin”, which is identical to the sole or dominant distinctive element of the Complainant’s trademarks. The disputed domain name is confusingly similar to the PIERRE CARDIN trademark. The addition of the descriptive term “brand” combined with the well-known trademark of the Complainant, increases the risk of confusion since it relates to the same sector of activity.

The Complainant notes that given the fame, extensive reputation, and notoriety throughout the world of the family name “Cardin”, the public would expect the disputed domain name to be associated with the Complainant. The Complainant also notes that it did not authorize the Respondent to use the well-known trademark PIERRE CARDIN or any other variant incorporating the family name “Cardin”. The Complainant

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contends that the Respondent infringes and takes unfair advantage of the PIERRE CARDIN trademark. The
Complainant contends that it is the sole legitimate owner of a trademark, corporate name, or domain name
made of or including PIERRE CARDIN or any variant that incorporates the distinctive and protected CARDIN
word. The Complainant asserts that the Respondent must have been aware of the well-known trademark
PIERRE CARDIN and registered the disputed domain name, which reproduces the essential and distinctive
element of the Complainant’s trademark in combination with the descriptive term “brand”, because of its
association with the Complainant, its trademarks, and its goods and services, in particular in the field of
fashion. Finally, the Complainant contends that the disputed domain name is being used in bad faith. The
Complainant emphasizes that the disputed domain name resolves to a website selling clothing and tickets for
fashion events. Therefore, the Respondent’s use of the disputed domain name is intended to mislead and
attract Internet users to its own competitive website. The Complainant also draws attention to the mail
exchange (“MX”) records set up for the disputed domain name and notes that the Respondent might be

using the disputed domain name for spamming or phishing attacks.

B. Respondent

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

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 dominant and distinctive component (“CARDIN”) of the Complainant’s PIERRE CARDIN trademark is reproduced 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, “brand”, 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.

In this regard, the Complainant has established a prima facie case by asserting that the Respondent is not authorized to use the PIERRE CARDIN trademark in any manner. The Respondent does not have a name or a business name corresponding to the disputed domain name. In addition, there is no other indication in the available records that the Respondent is commonly known by the disputed domain name. In particular, the Panel considers that the disputed domain name reproduces the dominant and distinctive component of the well-known PIERRE CARDIN trademark with the addition of the descriptive term “brand”, and was used for selling clothing and tickets to fashion shows or collections. Accordingly, the Panel finds that the

composition of the disputed domain name carries a risk of implied affiliation and cannot constitute fair use
here, as it effectively impersonates or suggests sponsorship or endorsement by the Complainant.
WIPO Overview 3.0, section 2.5.1.

In addition, the Respondent has failed to provide any explanation or evidence of why it chose the disputed domain name. Therefore, the Panel finds that the disputed domain name was used for the Respondent’s commercial gain by taking unfair advantage of the Complainant’s trademark. In the absence of a response,

the Panel finds that this was not a bona fide use of the disputed domain name. The current use of the

disputed domain name described above does not alter the Panel’s conclusion.

Accordingly, 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 finds that the Respondent’s registration and use of the disputed domain name constitute bad faith under the Policy.

The Panel considers that the PIERRE CARDIN trademark largely predates the registration of the disputed domain name; the Complainant has also registered trademark rights for PIERRE CARDIN in the European Union where the Respondent is located; the PIERRE CARDIN trademark is well-known, especially in the fashion industry; the disputed domain name reproduces the dominant and distinctive component of the well- known PIERRE CARDIN trademark and was used for selling clothes and tickets to fashion shows or collections. Accordingly, the Panel finds it very likely that the Respondent was aware of the Complainant’s prior trademark rights at the time of registration and targeted the Complainant when it registered the disputed domain name in order to take unfair advantage of the well-known PIERRE CARDIN trademark.

Considering the use of the disputed domain name at the time of filing the Complaint, the Panel finds that the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s well-known PIERRE CARDIN trademark. The current use of the disputed domain name described above does not alter the

Panel’s conclusion on this matter.

Lastly, the Panel considers the Respondent’s failure to submit a response and the creation of MX records as further elements supporting a finding of bad faith.

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Based on the available record, 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 <cardinbrand.com> be transferred to the Complainant.

/Mehmet Polat Kalafatoglu/
Mehmet Polat Kalafatoglu
Sole Panelist
Date: May 28, 2025