In this case, the domain is called lagerfeldsaldi.com and was registered on February 7, 2018. No wonder that the companies Karl Lagerfeld B.V. and KL North America B.V., based in Amsterdam, filed a complaint with the WIPO (World Intellectual Property Organization) this June demanding the transfer of the domain. With this domain, an online shop is displayed which sells the complainant's products.

The complainant is a fashion company around the well-known designer Karl Lagerfeld, who comes from Hamburg. It owns various brands worldwide with the elements "Lagerfeld" or "Karl Lagerfeld" as well as various domains such as karllagerfeld.com, karllagerfeldparis.com or karl.com. The defendant appears to be a private individual from the USA.

In the complaint, the complainant states that it owns the trademark rights described above and that the disputed domain is confusingly similar to these trademarks. It also states that the defendant has neither been authorised nor allowed to use the mark(s) nor licensed the mark(s). Furthermore, the complainant believes that the disputed domain was registered in bad faith, since the defendant should be aware of the trademark rights. Furthermore, it assumes an act of bad faith, since the domain name is used to profit from the possible confusion of the complainant's trademark rights with his domain name. The defendant did not comment on the complaint to WIPO and did not take a position.

WIPO finds that the domain does not exactly correspond to the trademark(s), but that it is contained in the domain name. In addition, the domain name consists of the extension "saldi" and the top-level domain (TLD) ".com". However, according to WIPO, the addition does not prevent confusion and so it agrees with the complainant's statement that the domain name is similar to the mark.

In principle, it may be possible to sell products of a protected trademark, but the trademark owner's consent is usually given. Furthermore, the defendant did not demonstrate a legitimate interest as he did not take the opportunity to comment. He has not tried to convince WIPO that he has relevant rights or legitimate interests, nor can WIPO imagine a basis on which the defendant could be granted rights or legitimate interests in relation to the domain name. It therefore finds that the defendant has no rights or legitimate interests in relation to the domain name.

The complainant is a fashion company and proprietor of various trade marks which she filed with the complaint. These brands have been in the trade for over 40 years and are currently represented in 96 countries. In this respect, WIPO states that the defendant should know the trademark "Lagerfeld" and that the defendant therefore targeted a similar-sounding name. In addition, products bearing these trademarks are sold on the website so that WIPO assumes that the domain has been registered with the aim of abusing the complainant's goodwill in connection with its trademarks.

For these reasons, WIPO finally orders that the domain be transferred to the complainant. According to the current status (08/29/2018) this has not yet happened and the webshop is still accessible. Let us hope for the complainant that the decision of this complaint will be implemented shortly and that no further serious damage will occur. The full decision (D2018-1436) is available on the WIPO website.

Basically we recommend to register domains to corresponding registered trademarks, product or company names and to consider also TLDs which might be of interest in the future. As described at the beginning, third parties with criminal energy are very creative in finding domain names and through additions like in this case the possibilities to find a suitable name are almost infinite. In order to limit image or sales damage as much as possible, we recommend that you regularly review your own domain portfolio, monitor potential domain names and brands and, if such an event occurs, react quickly.