Société de Gestion Pierre Cardin v zheng zhou

WIPO Case No. D2025-0589

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Société de Gestion Pierre Cardin v. zheng zhou

Case No. D2025-0589

1. The Parties

The Complainant is Société de Gestion Pierre Cardin, France, represented by Tmark Conseils, France.

The Respondent is zheng zhou, China

2. The Domain Name and Registrar

The disputed domain name <pierrecardin-fr.com> is registered with Cosmotown, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2025. On February 14, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 19, 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 (UNKNOWN) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 19, 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 February 21, 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 February 25, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2025.

The Center appointed Federica Togo as the sole panelist in this matter on March 21, 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.

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4. Factual Background

It results from the Complainant’s undisputed allegations that it is a business entity dedicated to manage and commercialize the intellectual property rights associated with the fashion stylist Pierre Cardin. In particular, the undisputed evidence provided by the Complainant proves that the Complainant is the exclusive licensee of the rights to the various trademark registrations PIERRE CARDIN in many jurisdictions around the world related to the fashion field, and more specifically clothing.

In addition, the Complainant is the registered owner of French trademark registration PIERRE CARDIN No.
1374766, registered on March 20, 1987 for goods in class 3 and French trademark registration PIERRE

CARDIN No. 4915362 registered on November June 9, 2023 for goods in classes 6, 7, 8, 11, 14, 20 and 21.

The Complainant represents 238 boutiques in France and almost a thousand points of sale around the world.

Furthermore, the Complainant uses many domain names incorporating the trademark PIERRE CARDIN among others the domain name < pierrecardin.com > for its official website.

The disputed domain name <pierrecardin-fr.com> was registered on August 14, 2024. The undisputed evidence provided by the Complainant proves that the disputed domain name resolves to a website allegedly selling the Complainant’s products at a discounted price.

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 disputed domain name is confusingly similar to the Complainant’s trademark since it incorporates identically the earlier well-known PIERRE CARDIN trademark, with the addition of the suffix “-fr” designating France. This added term is a country code and can therefore not prevent a finding of confusing similarity.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Complainant is the sole legitimate owner of trademark, corporate name and domain names including PIERRE CARDIN. The Complainant has not authorized any third party to identify itself to the public as PIERRE CARDIN or <pierrecardin-fr.com> in a domain name. The complainant, who was founded in 1950, enjoys a solid reputation in the fashion industry. So, the

Respondent must have been aware of the PIERRE CARDIN trademarks. The Respondent has impermissibly taken advantage of the Complainant’s commercial interest in its mark PIERRE CARDIN. The Respondent registered the disputed domain name because of its connection to the Complainant, its trademark and goods and services in the fields of fashion in particular.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the fact that the Complainant’s entire distinctive and well-known trademark PIERRE CARDIN is registered as part of the disputed domain name renders difficult to infer a legitimate use of the disputed domain name by the Respondent. The choice to reproduce the distinctive and protected trademark PIERRE CARDIN cannot therefore be fortuitous. In addition, the Respondent is also a recidivist cybersquatter insofar as he has been the subject of several UDRP proceedings. Furthermore, the disputed domain name points to a website that imitates the official PIERRE CARDIN website. Moreover, the disputed domain name offers counterfeit PIERRE CARDIN products for sale, in particular clothing and shoes, at prices advertised as being on sale. The public may think that the disputed domain name refers to the products marketed by PIERRE CARDIN, especially given the furnishing-related content of the domain name. The Complainant argues that everything suggests that this is the official website of the mark, or that it

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is a partner or affiliate site. Therefore, the use of the disputed domain name by the Respondent, is intended

to mislead and attract Internet users to its own competitive website.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:

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

Complainant has rights; and

(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.

The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

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 mark 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 term, here “-fr”, 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

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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.

Moreover, the Panel notes that the disputed domain name contains the Complainant’s registered trademark and a geographic abbreviation (“fr”) and a hyphen. The nature of this disputed domain name carries a risk of implied affiliation: in fact, certain geographic terms (e.g., <trademark-usa.com>, or <trademark.nyc>) are seen as tending to suggest sponsorship or endorsement by the trademark owner, see WIPO Overview 3.0 at section 2.5.1.

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.

One of these circumstances is that the Respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or online location or of a product or service on its website or online location (paragraph 4(b)(iv) of the Policy).

In the present case, the Panel notes that it results from the Complainant’s evidence that the disputed domain name resolves to a website purportedly offering for sale the Complainant’s products at discounted prices. For the Panel, it is therefore evident that the Respondent knew the Complainant’s mark. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain name incorporated the Complainant’s trademark when it registered the disputed domain name.

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 this regard, the following circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith:

(i) the nature of the disputed domain name (incorporating the Complainant’s mark plus the addition of a
geographical term “fr”, which is likely to be understood as the country code for France, where the

Complainant is based);

(ii) the content of the website to which the disputed domain name resolves, purportedly offering for sale the

Complainant’s products at discounted prices;

(iii) a clear absence of rights or legitimate interests coupled with no response for the Respondent’s choice of
the disputed domain name.

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Finally, the Respondent has been involved in a number of trademark-abusive domain name registrations (e.g., Urban Amor Gear, LLC v. zheng zhou, WIPO Case No. D2024-4668; SAVE THE DUCK S.P.A. v. zheng zhou, WIPO Case No. D2024-4819; and HESTRA-Handsken AB v. zheng zhou, WIPO Case No. D2024-4197). In the view of the Panel, this behavior demonstrates a pattern of conduct by the Respondent of taking advantage of trademarks of third parties without any right to do so and further supports a finding of the Respondent’s bad faith. Previous UDRP panels have held that establishing a pattern of bad faith

conduct requires more than one, but as few as two instances of abusive domain name registration, see

WIPO Overview 3.0, section 3.1.2. The Panel considers that this is the case here.

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 <pierrecardin-fr.com> be transferred to the Complainant.

/Federica Togo/
Federica Togo
Sole Panelist
Date: April 4, 2025