The Complainant is Repetto of Paris, France, represented by Nameshield, France.
The Respondents are ChenXiuQiang, XueYanLing, ChenXiaoLing, JiangGuiDuan and GaoChao of Fuzhou, Fujian, China. 2. The Domain Names and Registrar
The disputed domain names , , , and are registered with B, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2012. On April 3, 2012, the Center transmitted by email to B, Inc. a request for registrar verification in connection with the disputed domain names. On April 6, 2012, B, Inc. transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant and providing the contact details. On April 12, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceedings. On April 12, 2012, the Complainant confirmed its request that English be the language of the proceedings. The Respondents did not comment on the language of the 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 Respondents of the Complaint, and the proceedings commenced on April 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 9, 2012.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on May 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 A. Complainant
The Complainant is based in France and the owner of international registrations for the word and logo trade mark REPETTO (the “Trade Mark”), the earliest dating from 1977. B. Respondents
Each of the Respondents appears to be an individual, based in China.
The disputed domain names , , , and were all registered on the same date, March 14, 2012. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant is a well-known manufacturer and distributor of ballet shoes and other footwear under the Trade Mark, established in 1947. The Complainant’s footwear is sold worldwide, including in Hong Kong, China.
The disputed domain names are confusingly similar to the Trade Mark. They comprise the Trade Mark in its entirety, together with the non-distinctive French words “braderie”, “chaussures”, “paris”, “pas cher” and “soldes”.
The Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents are not affiliated with or authorised by the Complainant in any way and are not commonly known as REPETTO.
The disputed domain name is linked to a French language website which reproduces the Trade Mark and offers for sale footwear under the Trade Mark (the “Website”). As the Complainant’s footwear is only sold through licensed outlets, the Complainant contends that the ballet shoes and other footwear offered for sale on the Website is counterfeit.
The other four disputed domain names have been linked to inactive websites.
The Respondents have registered and used the disputed domain names in bad faith. Given the notoriety of the Trade Mark, the Respondents must have known of the Complainant and its Trade Mark when the disputed domain names were registered.
The Respondents are using the disputed domain name in order to create a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the Website. The purpose of this registration is to divert the Complainant’s customers to the Respondents’ counterfeit products without the consent of the Complainant.
The Respondents’ passive use of the other four disputed domain names amounts to passive use in bad faith. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceedings
The language of the Registration Agreements for the disputed domain names is Chinese.
Pursuant to the 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 proceedings shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondents to the effect that the language of the proceedings should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceedings 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 proceedings. 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 proceedings (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 proceedings for the following reasons:
(1) The disputed domain names were registered in ASCII characters using the Roman alphabet;
(2) The content of the Website is in French language;
(3) For better understanding of the parties, it would be best for the language of the proceedings to be English.
The Respondents did not file any submissions with respect to the language of the proceedings.
B, Inc has transmitted to the Center its verification responses confirming that the language of the registration agreements for the disputed domain names 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 Panel does not find the submissions of the Complainant in support of its language request particularly convincing.
The Panel notes, however, that, whilst there is no direct evidence that the Respondents are proficient in the English language, other than perhaps the registration of the disputed domain names using the Roman alphabet, the Respondents have demonstrated through their use of the Website that they are proficient and conversant in at least one European language, namely French. In all the circumstances of this case, given neither of the parties’ first language is English, given English is a commonly used language in international business, and in particular as the Panel is mindful of the need to ensure the proceedings are conducted in a timely and cost effective manner, the Panel therefore finds it is not foreseeable that the Respondents would be unduly prejudiced, should English be adopted as the language of the proceedings. The Panel finds that sufficient evidence has been adduced by the Complainant to suggest, at least, the possibility that the Respondents are conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra).
In making its determination regarding the language of the proceedings, the Panel has also taken into consideration the fact the Respondents have not filed a Response and have filed no submissions in relation to the language of the proceedings. Had the Respondents filed cogent submissions in support of the use of Chinese as the language of the proceedings and, in particular, contended that they are not at all proficient or conversant in the English language, the Panel would likely have determined that Chinese be the language of the proceedings.
Having considered all the matters above, and in the absence of any submissions from the Respondents, the Panel determines under paragraph 11(a) that the language of the proceedings shall be English. 6.2 Consolidation of Multiple Respondents
UDRP jurisprudence suggests consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve (Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281).
Each of the disputed domain names comprises the Trade Mark in its entirety and was registered on the same date, using the same Registrar. The listed contact information for each of the disputed domain names contains the exact same email address, telephone number, facsimile number and domain server information. Aside from minor variations with the street name, the address for each of the disputed domain names is also the same (an address in Fujian Province, China).
In all the circumstances, the Panel determines, under paragraph 10(e) of the Rules, that consolidation of the Respondents is procedurally efficient and equitable to all the parties. Accordingly, the Panel, having regard to all relevant circumstances, concludes that consolidation of the Respondents is consistent with the Policy and Rules, and comports with prior relevant UDRP decisions in this area. 6.3 Decision
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. 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 decades the dates 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 trademark, 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).
It is also established that the addition of generic terms to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
Each of the disputed domain names comprises the Trade Mark in its entirety, together with a non-distinctive prefix or suffix meaning, respectively, “discount centre”, “shoes”, “Paris”, “cheap” and “clearance”, none of which serve to distinguish the disputed domain names from the Trade Mark in any significant way.
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark and 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 non-exhaustive list of circumstances any of which is sufficient to demonstrate that the Respondents have 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 organisation) 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 noncommercial 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 Respondents to register or use the disputed domain names or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondents’ registration of the disputed domain names by decades. There is therefore a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondents 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 Complainant contends the Website is used by the Respondents to offer for sale counterfeit ballet shoes and footwear under the Trade Mark, as the Respondents have not been authorised or licensed by the Complainant in any way, and the Complainant’s ballet shoes are only sold in official licensed outlets. The Panel also notes the pricing on the Website appears to be severely discounted which might also suggest that the footwear offered for sale on the Website is not genuine. It is trite that, under UDRP jurisprudence, there can be no legitimate interests in the sale of counterfeits (Lilly ICOS LLC v. Dan Eccles,WIPO Case No. D2004-0750).
Even if the footwear on the Website is not counterfeit, in the circumstances of the present case, the Panel finds that the conduct of the Respondents in registering the disputed domain name and setting up the Website, which, at the very least, appears to cash in on the goodwill and reputation of the Complainant in the Trade Mark, does not give rise to any rights or legitimate interests in the disputed domain name.
The Respondents’ passive holding of the other four disputed domain names does not give rise to any rights or legitimate interests in these domain names.
The Panel therefore concludes that the Respondents have failed to show that they have acquired any trade mark rights in respect of the disputed domain names or that the disputed domains name are used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondents have been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondents are making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondents have failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils 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 Respondents:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
The Complainant asserts that the disputed domain name has been used to offer for sale counterfeit products under the Trade Mark via the Website. Using domain names to facilitate the sale of counterfeit goods is strong evidence of bad faith (Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019).
Even if, which appears unlikely, the goods on the Website are not counterfeit, the Panel nonetheless finds the Respondent’s conduct in registering the disputed domain name and offering for sale ballet shoes and other footwear under the Trade Mark on the Website, all without the authorisation, approval of licence of the Complainant, amounts to bad faith registration and use under paragraph 4(b)(iv) of the Policy, irrespective of whether the goods offered for sale on the Website are indeed counterfeits.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
As regards the remaining disputed domain names, it has been established in many UDRP cases that passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Action S.A. v. Robert Gozdowski,WIPO Case No. D2008-0028).
Given the circumstances of this case, the Panel also considers the failure of the Respondents to file a Response to the Complaint amounts to further evidence 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 disputed 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 the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , , , and be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: June 4, 2012
Full & Egal Universal Law Academy