The Complainant is Lagardere S.C.A. of Paris, France, represented by Markplus International, France.
The Respondent is Zhao Ke of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Hangzhou E-Business Services Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2012. On March 9, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 16, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 16, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2012. On March 27, 2012, the Respondent sent an email communication to the Center requesting that Chinese be the language of proceeding, of which the Center acknowledged receipt. The Respondent did not submit a formal response. Accordingly, the Center notified the parties of the proceedings update on April 17, 2012.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on April 23, 2012. 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
The Complainant Lagardere S.C.A. is one of the world’s leading companies in the media sector with annual revenue exceeding EUR 7.5 billion.
The Complainant is the owner of the following International and Community Trademarks:
International Trademark N°954316 LAGARDERE registered on August 31, 2007 in classes 03, 06, 09, 14, 16, 18, 20, 21, 22, 24, 25, 28, 34, 35, 36, 38, 39, 41, 42, 43, 44 and 45 (covering in particular China).
International Trademark N°954315 registered on August 31, 2007 in classes 03, 06, 09, 14,
16, 18, 20, 21, 22, 24, 25, 28, 34, 35, 36, 38, 39, 41, 42, 43, 44 and 45 (covering United States of America, Russian Federation)
Community Trademark N°4675691 filed on October 7, 2005 in classes 03, 06, 09, 14, 16, 18, 20, 21, 22, 24, 25, 28, 34, 35, 36, 38, 39, 41, 42, 43, 44.
It is also the owner of the following domain names:
- registered on December 11, 2006
- registered on February 17, 2007
The disputed domain name was registered on April 1, 2011. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. The reasons are as follows:
1. The Complainant asserts that it is the owner of trademark LAGARDERE in numerous classes and in numerous countries including China.
2. The Complainant is also the owner of the domain names and , registered in 2006 and 2007 respectively.
3. The Complainant asserts that the disputed domain name is identical or confusingly similar to its LAGARDERE trademark because the disputed domain name puts into attack position the term “lagardere” particularly in light of the fact that the second word “publicite” is descriptive which means “advertising” in English.
4. The Complainant also argues the disputed domain name is almost identical to the Complainant’s domain names and as well as the company name of the Complainant’s subsidiary Lagardere Publicite.
5. The Complainant further asserts that by using this disputed domain name, the Respondent has not only created likelihood of confusion with the Complainant’s trademark and prior registered domain names, but also with its affiliate Company Lagardere Publicite. Furthermore, on the website to which the disputed domain name is directed to, there are links with Lagardere company. Consequently, the public may think that the disputed domain name is related to the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds:
1. The disputed domain name is directed to a parking website where it is for sale.
2. There is no specific formatting or preparation of the website which shows that it is used in connection with a bona fide offering of goods and services. The Complainant has not given any license to the Respondent in order to use its trademark or in order to use any domain name incorporating the trademark.
3. Unless proven otherwise, the Respondent is not known under the denomination “Lagardere” nor “Lagardere Publicite” and he has no right on it such as a trademark or a copyright.
The Complainant contends that the disputed domain name was registered and is being used in bad faith on the following grounds:
1. The Complainant asserts that it is a leading company in the media sector and has affiliated companies in China. Therefore it is unlikely that the Respondent would not have knowledge of the Complainant’s trademark LAGARDERE.
2. The Complainant asserts the disputed domain name was directed to a parking website for purposes of resale and there was no evidence that the disputed domain name is to be used for bona fide offering of goods and services.
3. As such, the Complainant asserts that the disputed domain name was registered for purpose of “cybersquatting” and this is evidence of registration and use in bad faith. To support this contention, the Complainant has adduced previous email correspondences between the parties. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
According to the information received by the Center from the Registrar, the language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or 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 case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceedings should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that English should be the language of the present proceeding for the following reasons:
1. The Complainant is a company registered and located in France where Chinese is not the native language;
2. The Complainant has tried to achieve an amicable settlement with the Respondent. In the email correspondences, the Complainant has obtained replies by emails from the Respondent in English. This indicates that the Respondent has the ability to fully understand English.
The Respondent submitted an email communication requesting that Chinese be the language of proceeding but without giving supportive evidence.
After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel’s discretion under the Policy
Paragraph 11 of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that: (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; (b) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has chosen not to respond to the Complainant’s allegations; and (c) the Complainant provided evidence that the Respondent has replied to the email correspondences of the Complainant in English. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English. 6.2 Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
i. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
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.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the LAGARDERE mark in numerous classes of goods in many countries in the world. In particular, the Panel finds that the Complainant has rights in the LAGARDERE mark registered in China, the country in which the Respondent appears to reside.
The Panel finds that the Complainant has rights and continues to have such rights in the relevant LAGARDERE mark.
In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.
The disputed domain name comprises (a) an exact reproduction of the Complainant’s LAGARDERE mark; (b) a descriptive word “publicite” , which means “advertising” in English; and (c) the top level domain suffix “.com”. The most prominent and distinctive part of the disputed domain name is the word “lagardere” which is identical to the Complainant’s registered trademark. The addition of the descriptive word “publicite” does not provide sufficient distinction from the Complainant. On the contrary, the Panelist agrees with the Complainant that as the disputed domain name is identical to the Complainant’s subsidiary Lagardere Publicite, it strengthens the likelihood of confusion created as consumers may be led to believe that there is a connection between the disputed domain name and the Complainant, its affiliated companies and its mark LAGARDERE. Furthermore, it is also an accepted principle that the addition of suffixes such as “.com” or “.net” being the generic top-level domain is not a distinguishing factor.
Bearing in mind the following factors, in particular (a) the considerable reputation of the Complainant’s trademark; (b) the distinctive character of the Complainant’s LAGARDERE mark; and (c) the dominant component of the disputed domain name, the Panel therefore finds that the disputed domain name is confusingly similar to the LAGARDERE mark in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
1. the Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “lagardere” in its business operations;
2. there was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the LAGARDERE mark;
3. there is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;
4. the Complainant and its LAGARDERE mark enjoy a considerable reputation in the media sector and is a registered trade mark in many countries all over the world, including China. Consequently, in the absence of contrary evidence from the Respondent, the LAGARDERE mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Based on the above reasons, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.”
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against him. In particular, the Respondent has failed to make submissions to demonstrate that he has rights to or legitimate interests in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second part of the test. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) a respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) a respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, a 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 a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product.
The above circumstances are indicative of registration and use of the domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by the respondent in the appropriate cases.
The Panel concludes based on the case file that the circumstances referred to in paragraphs 4(b)(i) and 4(b)(iv)of the Policy is applicable to the present case and upon the evidence of these circumstances it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.
There is no evidence that the Respondent has used or intends to use to the disputed domain name for purposes of bona fide offering of goods and services over the Internet.
On the contrary, based on the evidence adduced before the Panel, a prima facie case has been made out by the Complainant that the disputed domain name was registered primarily for re-sale to the Complainant who is the legal owner of the LAGARDERE mark for money consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. The Respondent has not rebutted the Complainant’s assertions with contravening evidence.
Thus, the Panel finds for the Complainant on the third part of the test. 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 be transferred to the Complainant.
Susanna H.S. Leong
Sole Panelist
Dated: May 7, 2012
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