WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION VanCleef & Arpels SA v. 王丹, Gao Shiqiang Case No. D2009-1731 1. The Parties
The Complainant is VanCleef & Arpels SA of Villars-sur-Glane, Switzerland, represented by Edwards Angell Palmer & Dodge UK LLP of United Kingdom of Great Britian and Northern Ireland.
The Respondent is 王丹 of Guangzhou, the People's Republic of China (“Respondent A”); and Gao Shiqiang of Cixi, Zhejiang, the People Republic of China (“Respondent B”). 2. The Domain Names and Registrars
The disputed domain name is registered with GoD, Inc. and the disputed domain name is registered with
Xiamen eName Network Technology Corporation Limited dba eName Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2009. On December 17, 2009, the Center transmitted by email to GoD, Inc. and Xiamen eName Network Technology Corporation Limited dba eName Corp. requests for registrar verification in connection with the disputed domain names. On December 18, 2009 and December 21, 2009, respectively, GoD, Inc. and Xiamen eName Network Technology Corporation Limited dba eName Corp. transmitted by email to the Center their verification responses confirming that Respondent A and Respondent B are listed as the registrants and providing the contact details for the disputed domain names. On December 22, 2009, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On December 23, 2009, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the due date. The Center has verified that the Complaint satisfies 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on December 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2010. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent's default on January 18, 2010.
The Center appointed Sebastian Hughes as the sole panelist in this matter on January 27, 2010. 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. 4. Factual Background A. The Complainant
The Complainant is a company incorporated in Switzerland and the owner of registrations for the trade mark VAN CLEEF & ARPELS in numerous jurisdictions worldwide, including in the People's Republic of China, where the Respondent is based (“the Trade Mark”). B. The Respondent
The Respondent is an individual apparently with an address in China.
The disputed domain name (“Domain Name A”) was registered on March 28, 2009 and the disputed domain name (“Domain Name B”) was registered on February 5, 2009. 5. Parties' Contentions A. Complainant
The following facts are alleged by the Complainant in the Complaint and have not been disputed by the Respondent.
The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The Complainant is a world famous company, which engages, inter alia, in the design, manufacture and sale of some of the finest and most exquisite works of jewellery throughout the world.
The Complainant owns all rights in and to the Trade Mark and has obtained numerous registrations for the Trade Mark worldwide. The Complainant and its predecessors in title have used the Trade Mark since 1906 in relation to the sale of jewellery products. The Complainant's business operates worldwide, with retail outlets throughout Europe, Asia, the Middle East and North America.
Domain Name A and Domain Name B are both identical or confusingly similar to the Trade Mark. They consist of a complete reproduction of the Trade Mark. Any differences between the Trade Mark and the disputed domain names are minor and irrelevant distinctions that do not change the confusing similarity between the terms. It is well established that, in comparing a domain name to a trade mark, the TLD suffix is ignored, and that omission of spaces between words is also not significant.
The Respondent has no rights or legitimate interests in respect of the Domain Names
The Respondent is using Domain Name A in connection with a website in the form of a weblog incorporating, inter alia, direct links to websites that offer for sale, among other things, counterfeit jewellery (“Website A”). Below each weblog entry, including those relating to the Complainant, appear direct hyperlinks to various websites which offer for sale items of jewellery that purportedly originate from well known brands. Several items for sale on these websites are advertised as “replicas” or “knock-offs”.
There are several similarities between the respective WhoIs details for the various domain names referred to on these websites and the WhoIs details for Respondent A and Respondent B, including the same or nearly the same email addresses, telephone numbers, fax numbers and registrant name or alias. It is therefore apparent that Respondent A and Respondent B are in fact the same natural person, namely the Respondent to this Complaint.
The Respondent is intentionally using Domain Name A to attract consumers searching for the Complainant's goods and services. These customers are diverted to other websites, which are associated or affiliated with the Respondent, and are engaged in the sale of counterfeit items of jewellery unconnected with the Complainant.
Furthermore, the Respondent is using Domain Name A in connection with a website incorporating pay-per-click advertising links to sites that offer similar or directly related services as well as sites that offer jewellery (both genuine and replicas) for sale. Such conduct is, in essence, intentionally using the Trade Mark to promote goods and services that are not connected with the Complainant, and is not evidence of rights or legitimate interests in a domain name.
Domain Name B currently resolves to a weblog relating to fashion (“Website B”). The weblog contains only one entry entitled “Chanel 2009 New Designer Jewelry Mademoiselle's Stories”, posted on Friday, December 4th, 2009 at 2:41 pm.
The term Van Cleef & Arpels has no meaning in any language, and has no significance or meaning other than as the business name and trade mark of the Complainant, and the names of the founders of the Complainant's predecessor in title.
The Complainant has no relationship whatsoever with the Respondent and has never authorised the Respondent to use the Domain Names or any other domain name containing the Trade Mark.
The Trade Mark is well-known and the Respondent had knowledge or reasonably ought to have had knowledge of the Trade Mark at the time the Domain Names were registered.
The Respondent has never been commonly known by the Domain Names.
The Complainant has not granted any other party the right to use within a domain name the Trade Mark and the Respondent cannot therefore be a licensee of the Complainant nor is the Respondent otherwise authorised to use the Trade Mark for any purpose.
The Respondent is not making a legitimate non-commercial or fair use of the Domain Names without intent for commercial gain to misleadingly divert consumers or to tarnish the Trade Mark.
The Respondent is using Domain Name A for commercial purposes by monetising it through pay-per-click advertising, and by providing links to affiliated websites which offer for sale counterfeit jewellery, accessories and clothing. As a result, the Respondent cannot claim it is making a legitimate non-commercial or fair use of Domain Name A.
Domain Name B currently resolves to a website consisting of a single weblog entry. None of the information contained on this website currently relates to the Complainant. The lack of content at Website B, especially that relating to the Complainant, will lead consumers who visit the website to believe that it is of poor quality, thus tarnishing the Complainant's Trade Mark.
Even if the Panel considers that the use of Domain Name B in respect of a fashion weblog may be regarded as a legitimate non-commercial or fair use by the Respondent, it is not a legitimate or fair use for the Respondent to use the Trade Mark in order to attract the public to any such website.
Before any notice to the Respondent of the dispute, there has been no use of, or demonstrable preparations to use the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services.
The Respondent is using Domain Name A in order to advertise services selling replica and/or counterfeit goods that are not connected with the Complainant. These services appear to be operated by the Respondent or its affiliates. The Respondent or its affiliate states on the website at “/40uk-shopping-mall”, in relation to the delivery of replica and/or counterfeit goods: “We will report them as a low value gift for customs. This is a secret delivery”. The activities of the Respondent and/or its affiliates therefore also include providing false information to national customs authorities. The advertising of such services cannot constitute a bona fide offering of goods or services pursuant to the Policy.
The Respondent registered Domain Name A to obtain financial gain from the extraordinarily valuable goodwill of the Trade Mark and to attract Internet users to the Respondent's website.
The Respondent does not offer any goods or services for sale on Website B, nor has the Respondent ever made any use of Domain Name B in connection with a bona fide offering of goods or services, or made any demonstrable preparations to do so.
In summary, there is no legitimate basis for the Respondent's registration and/or use of the Domain Names.
The Domain Names were registered and are being used in bad faith
The Trade Mark is unique and distinctive such that the Respondent could not have independently devised the term van cleef & arpels, van-cleefarpels or van-cleef-arpels to be used in connection with jewellery or pay-per-click advertising relating to jewellery without reference to the Trade Mark.
The Respondent clearly had knowledge or reasonably should have had knowledge of the Complainant's prior use and registration of the Trade Mark as the mark enjoys worldwide recognition. It is well established that, where a famous mark has been incorporated into a domain name, the Panel is entitled to assume that the domain name has been registered for some illegitimate purpose.
The Respondent has registered the Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in corresponding Domain Names, and has engaged in a pattern of such conduct.
The Complainant's research suggests that the Respondent and/or its affiliates have registered a number of other domain names containing well-known trade marks. These domain names include:
a
b
c
d
e
f
g
h
i
This clearly indicates a pattern of the Respondent registering domain names which reflect well-known trade marks, and thus preventing the proprietors of those marks from registering domain names corresponding to those marks.
The Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor. By using the Trade Mark in the Domain Names, the Respondent is intentionally using the Domain Names to attract consumers searching for the Complainant's goods and services.
Website A prominently features the Trade Mark. Consumers visiting Website A will therefore be deceived into believing that the Respondent is affiliated in some way with the Complainant, contrary to the fact.
Website B features the string “Copyright © 2009 Van Cleef Arpels” at the bottom of each page. “Van Cleef Arpels” is confusingly similar to the Trade Mark. Consumers visiting Website B will therefore be deceived into believing that the Respondent is affiliated in some way with the Complainant, contrary to the fact.
Furthermore, when compared to the Complainant's domain names comprising the Trade Mark, the Domain Names contain only a minor variation, namely the positioning of apostrophes (sic) between the VAN, CLEEF and ARPELS elements of the disputed domain names. Consumers intending to visit the Complainant's website who erroneously enter the Domain Names into their browsers instead of the Complainant's domain names will be taken to the Respondent's websites. These consumers will be deceived into believing that they are visiting the Complainant's website, when they are in fact visiting one of the Respondent's websites. This was clearly the Respondent's intention when it registered the Domain Names for use in connection with jewellery.
Consumers who mistakenly visit Website A instead of the Complainant's website are then likely to be directed to websites associated or affiliated with the Respondent, which are engaged in the sale of replica and/or counterfeit items of jewellery unconnected with the Complainant. The Respondent is therefore currently using the Domain Names to deceive and divert the Complainant's customers into visiting the Respondent's websites, and consequently, in the case of Domain Name A, into purchasing goods from the Respondent and/or its affiliates. This activity is of clear and significant detriment to the Complainant, and is clearly disruptive to the Complainant's business.
The Complainant is a competitor of the Respondent insofar as both parties are engaged in the marketing of goods and services relating to jewellery.
Due to the Respondent's current activities and use of the Domain Names, it is clear that the Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor, namely the Complainant.
By using Domain Name A, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
The Respondent's use of the Domain Names is likely to be causing confusion and deceptively leading consumers to believe that the Respondent is the Complainant, or affiliated in some way with the Complainant, contrary to the fact.
The Respondent is also using Website A to generate revenue from sponsored links to third party websites. Use of another's trade marks to generate sponsored revenue from Internet advertising is a “classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy” and constitutes registration and use in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Complainant has provided compelling evidence to suggest that Respondent A and Respondent B are the same person, which evidence has not been rebutted by the Respondent. The Panel therefore agrees that, in the circumstances, it is appropriate for the proceeding to be combined and for a singled decision to be issued in respect of both of the Domain Names. 6.1 Language of the Proceeding
The language of the Registration Agreement for Domain Name B is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) Electrical Appliance Co. Ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) the registration agreement for Domain Name A is English;
(2) the website of the Registrar for Domain Name B, , is in English. Whilst there is a Chinese language version of this website, the URL for that version is , which is not the URL provided by the Registrar as the referral URL;
(3) the disputed domain names resolve to websites written in the English language and clearly aimed at English-speaking consumers; and
(4) translation costs are prohibitive and it would be unduly onerous and prohibitive on the Complainant to conduct the proceeding in Chinese. This is particularly so given the fact the Respondent has demonstrated proficiency in the English language, and would therefore not be prejudiced by the proceeding being conducted in English.
The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
On December 18, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that the language of the Registration Agreement for Domain Name A is English. On December 21, 2009, Xiamen eName Network Technology Corporation Limited dba eName Corp transmitted by email to the Center its verification response confirming that the language of the Registration Agreement for Domain Name B is Chinese.
In exercising its discretion to use a language other than that of the registration agreement, the panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
The language of the registration agreement for one of the disputed domain names, Domain Name A, is English. The language of the other is Chinese.
The Panel does not agree with the Complainant's contentions that the language of the registration agreement for Domain Name B is English. The Registrar for Domain Name B has advised the Center in writing that the language of the registration agreement for Domain Name B is Chinese. The fact the Registrar operates websites in both English and Chinese language is not relevant to the question of the language of the registration agreement for Domain Name B.
The Panel nonetheless finds that evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding. Moreover, the Panel notes that all of the Center's communications have been transmitted to the parties in Chinese and English.
Having considered all the matters above, the Panel determines under paragraph 11(a) that English shall be the language of the proceeding. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate by many years the date of registration of the disputed domain names.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
The addition of hyphens (erroneously referred to as “apostrophes” by the Complainant's representatives in the Complaint) does not serve to distinguish the Domain Names in any way, and the hyphens should be disregarded in determining the question of confusing similarity.
The Panel finds that the Domain Names are confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain names:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain names or names corresponding to the domain names 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 names, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the Domain Names or to use the Trade Mark or similar mark. The Complainant has prior rights in the Trade Mark which precede the Respondent's registration of the Domain Names by many years. There is therefore a likely prima facie case that the Respondent has no rights or legitimate interests in the Domain Names, and the burden is therefore on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the Domain Names or that the Domain Names are used in connection with a bona fide offering of goods or services.
The Complainant has asserted that Website A is used by the Respondent to market unauthorised, counterfeit goods. There can be no legitimate interest in the sale of counterfeits (Lilly ICOS LLC v. Dan Eccles,WIPO Case No. D2004-0750).
There has been no evidence adduced to show that the Respondent has been commonly known by the Domain Names.
There has been no evidence adduced to show that the Respondent is making a legitimate non-commercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Domain Names. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that the public is likely to be confused into thinking that the Domain Names have a connection with the Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of Website A and Website B.
The Complainant has asserted that Website A offers for sale unauthorised and/or counterfeit goods under the Trade Mark and this assertion has not been rebutted by the Respondent. This is strong evidence of bad faith. (Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019).
Although Website B is a weblog and does not appear to be offering any goods or services to Internet users, it does however make prominent and unauthorised use of the Trade Mark both in the heading featured on the website, and in the website's purported copyright notice. Website B also claims to be a fashion weblog and makes reference to various well-known fashion brands in addition to the well-known Trade Mark of the Complainant. This is not a case where the website is making a fair use of the Trade Mark or engaging in any criticism or review. To the contrary, the Panel finds that Domain Name B has been registered and used in order to attract members of the public to Website B, thereby causing confusion amongst the public and damage to the reputation and goodwill of the Trade Mark.
The Panel therefore concludes that the Respondent's registration and use of the Domain Names falls under paragraph 4(b)(iv).
The Complainant has also submitted compelling evidence to suggest that the Respondent has engaged in a pattern of conduct of registering domain names which reflect well-known trade marks, and thus preventing the proprietors of those marks from registering domain names corresponding to those marks. The Panel finds that this constitutes further evidence of bad faith under paragraph 4(b)(ii).
The Panel also finds that the worldwide fame of the Trade Mark in respect of jewellery lends further weight to a finding, absent any evidence to the contrary from the Respondent, that the Domain Names were registered in bad faith for illegitimate purposes (Harrods Limited v. Josh Crutchley,WIPO Case No. D2008-0653).
The failure of the Respondent to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the Domain Names have been registered and are being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be transferred to the Complainant.
Sebastian Hughes
Sole Panelist
Dated: February 9, 2010
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