GrupoRochas.com: UDRP fails due to family name usage

The UDRP filed against the domain GrupoRochas.com fell flat after the Respondents pointed out the obvious: they are a group using the last (family) name of Rochas.

Complainant is Interparfums SA, France, that has produced the ROCHAS perfume for years but this case clearly stank. According to the Response:

The Respondent asserts to have rights or legitimate interests in respect of the disputed domain name since the latter was purchased in order to be used in relation to the Grupo Rochas companies, namely Walking Stiles S.L. and Maria Rochas S.L., both operating in the field of retail sale of footwear. The sole administrator of the Respondent is Marta Rochas Guardiola […] the surname of the Respondent’s sole administrator is Rochas and the business is retail sale of footwear.

The sole panelist at the WIPO agreed and ordered the domain GrupoRochas.com to remain with the Respondent.

The domain transfer was denied.

Interparfums SA v. Walking Styles
Case No. D2021-2559

1. The Parties

The Complainant is Interparfums SA, France, represented by Lena Vavasseur, France.

The Respondent is Walking Styles, Spain.

2. The Domain Name and Registrar

The disputed domain name <gruporochas.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2021. On August 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2021, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on August 12, 2021 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 amendment to the Complaint on August 16, 2021.

The Center verified that the Complaint together with the amendment to the 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 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2021. The Response was filed with the Center on September 3, 2021.

The Center appointed Edoardo Fano as the sole panelist in this matter on September 16, 2021. 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

4. Factual Background

The Complainant is Interparfums SA, a French company operating in the field of fashion and perfume products, and owning several trademark registrations for ROCHAS, among which the following ones:

– French Trademark Registration No. 1436306 for ROCHAS, registered on November 20, 1987;
– United States Trademark Registration No. 75551139 for ROCHAS, registered on August 29, 2000;
– International Trademark Registration No. 697119 for ROCHAS, registered on July 28, 1998 and designating also Spain among other countries.

The Complainant also operates on the Internet, owning several domain names including the trademark ROCHAS, the main one being <rochas.com>.

The Complainant provided evidence in support of the above.

The disputed domain name <gruporochas.com> was registered on December 29, 2006, according to the WhoIs records, and it redirects to a website consisting of an index default page.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name <gruporochas.com> is identical to its trademark ROCHAS, as it fully incorporates its trademark with the addition of the descriptive term “grupo” (a dictionary term meaning “group” in Spanish).

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, nor is the Respondent commonly known by the disputed domain name. The Complainant asserts the Respondent is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark ROCHAS is distinctive and internationally known. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name and the Complainant contends that the passive holding of the disputed domain qualifies as bad faith registration and use.

B. Respondent

The Respondent asserts to have rights or legitimate interests in respect of the disputed domain name since the latter was purchased in order to be used in relation to the Grupo Rochas companies, namely Walking Stiles S.L. and Maria Rochas S.L., both operating in the field of retail sale of footwear. The sole administrator of the Respondent is Marta Rochas Guardiola, as indicated in the incorporation certificate of the Bizcaia Commercial Registry (Annex 2 of the Response).

The Respondent submits that there is no bad faith in registering and using the disputed domain name, since the surname of the Respondent’s sole administrator is Rochas and the business is retail sale of footwear.

Finally, the Respondent requires the Panel to declare the existence of reverse domain name hijacking.

6. Substantive Issues

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

(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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of the trademark ROCHAS both by registration and acquired reputation and that the disputed domain name <gruporochas.com> is confusingly similar to the trademark ROCHAS.

Regarding the addition of the word “grupo” (a dictionary term meaning “group” in Spanish), the Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not prevent a finding of confusing similarity between the disputed domain name and the trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the word “grupo” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark.

It is well accepted that a generic Top-Level Domain, in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11).

The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following circumstances, in particular but without limitation:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

According to paragraph 4(a) of the Policy, the Complainant has the burden of proving the three elements of the Policy. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite difficult, since proving a negative circumstance is always more complicate than establishing a positive one.

As such, it is well accepted that it is sufficient for the Complainant to make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant, as set out above, asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, nor is the Respondent commonly known by the disputed domain name. The Complainant asserts the Respondent is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

The Panel notes that, according to the Bizcaia Commercial Registry incorporation certificate (Annex 2 of the Respondent’s Response), the Respondent’s company Walking Stiles S.L. was incorporated on January 9, 1995 and the name of its Sole Administrator is Marta Rochas Guardiola, which demonstrates that the Respondent’s Sole Administrator surname sufficiently corresponds to the disputed domain name.

As regards the past use of the disputed domain name, currently redirecting to an index default page, the Panel, in accordance with its powers to consult matters of public record (see, WIPO Overview 3.0, section 4.8), has checked the Wayback Machine (“www.archive.org”) and found out that the disputed domain name has apparently never been actually used, if not to redirect to an index default page.

In light of the above, the Panel finds that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In order to succeed, the Complainant must establish that all three elements of the Policy are present cumulatively, and the Panel has already found that the Respondent does have rights or legitimate interests in respect of the disputed domain name.

Even though it is not therefore necessary to proceed to determine bad faith registration and use of the disputed domain name, the Panel deems that, although the distinctive part of the disputed domain name, namely “rochas”, does correspond to the Complainant’s arbitrary trademark ROCHAS, no bad faith can be found in the Respondent registering it as a domain name since it sufficiently corresponds to the Respondent’s Sole Administrator surname. For the same reason, “passive holding” as claimed by the Complainant cannot be considered as the Respondent’s bad faith use of the disputed domain name.

The Panel therefore finds that that the Complainant has failed to prove that the disputed domain name has been registered and is being used in bad faith, according with paragraph 4(a)(iii) of the Policy.

D. Reverse Domain Name Hijacking

Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.

The Rules define Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.

The Respondent has sought a finding of Reverse Domain Name Hijacking be made against the Complainant.

The Panel is not persuaded that the circumstances of the present case justify a finding of Reverse Domain Name Hijacking. On balance, the Panel cannot find that the Complainant knew or should have known it would not succeed on the second and third element, since the disputed domain name had never been used and the Complainant was not supposed to know that the Respondent’s Sole Administrator surname was identical to the Complainant’s trademark (in particular as it was not reflected in the Registrar’s WhoIs).

The Panel therefore declines to find that the Complainant has acted in bad faith, and the Respondent’s request for a declaration to this effect is dismissed.

7. Decision

For the foregoing reasons, the Complaint is denied. The request to issue a finding of Reverse Domain Name Hijacking is also denied.

Edoardo Fano
Sole Panelist
Date: September 30, 2021

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