Yves Salomon SAS v Rachel Carey, Laura Lewis, Keira Sullivan, Sam; Bartlett, Harriet Howells, and Isobel Stone

WIPO Case No. D2023-5151

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Yves Salomon SAS v. Rachel Carey, Laura Lewis, Keira Sullivan, Sam
Bartlett, Harriet Howells, and Isobel Stone

Case No. D2023-5151

1. The Parties

The Complainant is Yves Salomon SAS, France, represented by Me Haas, France.

The Respondents are Rachel Carey, Germany, Laura Lewis, Germany, Keira Sullivan, Germany, Sam

Bartlett, Germany, Harriet Howells, Germany, and Isobel Stone, Germany.

2. The Domain Names and Registrar

The disputed domain names, <yvessalomonargentina.com>, <yvessalomonaustralia.com>,
<yvessalomonbelgie.com>, <yvessalomonbelgique.com>, <yvessalomonbrasil.com>,
<yvessalomonbulgaria.com>, <yvessalomoncanada.com>, <yvessalomonchile.com>,
<yvessalomoncolombia.com>, <yvessalomoncz.com>, <yvessalomondanmark.com>,
<yvessalomondeutschland.com>, <yvessalomoneesti.com>, <yvessalomonespana.com>,
<yvessalomonfrance.com>, <yvessalomongreece.com>, <yvessalomonhrvatska.com>,
<yvessalomonireland.com>, <yvessalomonisrael.com>, <yvessalomonitalia.com>,
<yvessalomonjapan.com>, <yvessalomonkuwait.com>, <yvessalomonlatvija.com>,
<yvessalomonlietuva.com>, <yvessalomonmagyarorszag.com>, <yvessalomonmexico.com>,
<yvessalomonnederland.com>, <yvessalomonnorge.com>, <yvessalomonnz.com>,
<yvessalomonosterreich.com>, <yvessalomonperu.com>, <yvessalomonpolska.com>,
<yvessalomonportugal.com>, <yvessalomonromania.com>, <yvessalomonschweiz.com>,
<yvessalomonsk.com>, <yvessalomonslovenija.com>, <yvessalomonsrbija.com>,
<yvessalomonsuisse.com>, <yvessalomonsuomi.com>, <yvessalomonsverige.com>,
<yvessalomonturkey.com>, <yvessalomonuae.com>, <yvessalomonuk.com>, <yvessalomonuruguay.com>,
and <yvessalomonza.com> (the “Domain Names”), are registered with Alibaba.com Singapore E-Commerce

Private Limited (the “Registrar”).

3. Procedural History

The Complaint was f iled with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2023. On December 11, 2023, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the Domain Names. On December 12, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain

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Names which differed from the named Respondent (Not available from Registry) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 12, 2023, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the Complainant to either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity. The Complainant f iled an amended Complaint on December 19, 2023.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on January 5, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2024. The Respondents did not submit any response. Accordingly, the Center notif ied the Respondents’ default on February 3, 2024.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on February 8, 2024. The Panel
f inds 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 operates in the fur sector. The Complainant is present in several countries all over the world, covering Europe, Ukraine, Russian Federation, Morocco, the United States of America, China, South Korea and Japan, Azerbaijan, and Kazakhstan. It owns stores in France, the United States of America, and Morocco. The Complainant’s articles are also sold in the biggest department stores worldwide. The

Complainant has been covered by articles published in famous newspapers and magazines.

The Complainant owns numerous worldwide protected YVES SALOMON trademarks, such as International trademark number 1017913 registered on May, 28, 2009, and European Union trademark number 000767145 registered on October 14, 1999. The Complainant also owns numerous domain names, including <yves-salomon.f r> and <yves-salomon.com>.

The Domain Names have been registered on October 17, 2022. At the time of f iling the Complaint, and at the time of draf ting the Decision, the Domain Names resolved to an error page.

5. Parties’ Contentions
A. Complainant

The Complainant argues that the Domain Names are under common control. The Domain Names are registered on the same day. The Domain Names are all composed of the Complainant’s trademark YVES SALOMON with the addition of the name of a country or of the two letters code dedicated to a country. The Domain Names are registered with the same nameserver, same registrar and the same hostmaster. The registrants are listed as domiciled in Kassel, Germany, with email addresses composed the same way, and with what appears to be false phone numbers.

The Complainant provides evidence of trademark registrations and - based on former UDRP decisions - argues that its trademark is distinctive and widely known. The Domain Names reproduce the Complainant’s trademark in its entirety with the addition of the name of a country or of the two letters code dedicated to a country. It is not suf f icient to prevent a f inding of confusing similarity.

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The Complainant argues that the Respondents have no rights or legitimate interests in respect of the
Domain Names. The Complainant has not authorized the Respondents to use its trademarks in any way.
The Respondents have not made any demonstrable preparations to use the Domain Names in connection
with a bona f ide offering of goods or services. The Respondents have not made any use of the 46 Domain
Names.

The Complainant argues that the Domain Names were registered and are being used in bad faith as the Respondents must have had knowledge of the Complainant’s prior rights when the Respondents registered the Domain Names. The composition of the 46 Domain Names carries a risk of implied af f iliation to the Complainant. The Domain Names were also registered in order to prevent the Complainant f rom ref lecting its well-known trademark in corresponding domain names. The non-use of the Domain Names does not prevent a f inding of bad faith under the doctrine of passive holding. The Respondents engaged in a pattern of conduct when registering on the same day the 46 Domain Names. There is no possible good faith use of the Domain Names on the Respondents’ hand.

B. Respondents

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

6. Discussion and Findings

6.1. Procedural matters - Consolidation of Multiple Registrants

The amended Complaint was f iled in relation to nominally dif ferent domain name registrants. The registrants pursuant to paragraph 10(e) of the Rules.

Complainant alleges that the domain name registrants are the same entity or under common control. The

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.

In addressing the Complainant’s request, the Panel will consider whether (i) the Domain Names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.

As regards common control, the Panel notes that the Domain Names are registered on the same day, composed the same way (the Complainant’s trademark with the addition of country name or code), with the same nameserver, hostmaster and Registrar. The registrants are listed as domiciled in the same city and with email addresses composed the same way.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to as “the Respondent”) in a single proceeding.

6.2. Substantive Issues
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 Names. See WIPO Overview 3.0, section 1.7. The Complainant has established that it has rights in the trademark YVES SALOMON. Each Domain Name incorporates the

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Complainant’s trademark in its entirety, with the addition of a country name or code. The additions do not prevent a f inding of confusing similarity. See WIPO Overview 3.0, section 1.8. For the purpose of assessing under paragraph4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”) as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1.

Based on the available record, the Panel finds the Domain Names are confusingly similar to the trademark in which the Complainant has rights. The f irst element of paragraph 4(a) 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 of ten 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 satisf ied the second element. See WIPO Overview 3.0, section 2.1.

Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. 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 Domain Names. There is no evidence of the Respondent’s use of , or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona f ide of fering of goods or services.

The composition of the Domain Names carries a risk of implied aff iliation as it ef fectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.

Based on the available record, the Panel f inds 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 composition of the Domain Names proves that the Respondent was aware of the Complainant and its prior rights when the Respondent registered the Domain Names. The Respondent has failed to provide any evidence of actual or contemplated good faith use of the Domain Names. The non-use of the Domain Names does not prevent a f inding of bad faith under the doctrine of passive holding. The Panel cannot see the Respondent be able make any good faith use of the Domain Names.

For the reasons set out above, the Panel concludes that the Domain Names were registered and are 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.

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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 the Domain Names, <yvessalomonargentina.com>, <yvessalomonaustralia.com>,
<yvessalomonbelgie.com>, <yvessalomonbelgique.com>, <yvessalomonbrasil.com>,
<yvessalomonbulgaria.com>, <yvessalomoncanada.com>, <yvessalomonchile.com>,
<yvessalomoncolombia.com>, <yvessalomoncz.com>, <yvessalomondanmark.com>,
<yvessalomondeutschland.com>, <yvessalomoneesti.com>, <yvessalomonespana.com>,
<yvessalomonfrance.com>, <yvessalomongreece.com>, <yvessalomonhrvatska.com>,
<yvessalomonireland.com>, <yvessalomonisrael.com>, <yvessalomonitalia.com>,
<yvessalomonjapan.com>, <yvessalomonkuwait.com>, <yvessalomonlatvija.com>,
<yvessalomonlietuva.com>, <yvessalomonmagyarorszag.com>, <yvessalomonmexico.com>,
<yvessalomonnederland.com>, <yvessalomonnorge.com>, <yvessalomonnz.com>,
<yvessalomonosterreich.com>, <yvessalomonperu.com>, <yvessalomonpolska.com>,
<yvessalomonportugal.com>, <yvessalomonromania.com>, <yvessalomonschweiz.com>,
<yvessalomonsk.com>, <yvessalomonslovenija.com>, <yvessalomonsrbija.com>,
<yvessalomonsuisse.com>, <yvessalomonsuomi.com>, <yvessalomonsverige.com>,
<yvessalomonturkey.com>, <yvessalomonuae.com>, <yvessalomonuk.com>, <yvessalomonuruguay.com>,

and <yvessalomonza.com> transferred to the Complainant.

/Mathias Lilleengen/
Mathias Lilleengen
Sole Panelist
Date: February 22, 2024