The Complainant is LeSportsac, Inc. of Reno, Nevada, United States of America, represented by Edwards Wildman Palmer LLP, United States of America.
The Respondent is Jiamin Zhang a.k.a. hangjiamin z, of Dong Guang, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Shanghai Yovole Networks, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on July 31, 2012. On July 31, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 1, 2012, the Registrar transmitted by email to the Center its verification response. On August 2, 2012, the Center transmitted by email to the Registrar a request for registrar further clarification. On August 2, 2012, the Registrar transmitted by email to the Center its further clarification confirming that the Respondent is listed as the registrant and providing the contact details.
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 August 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2012.
The Center appointed Yijun Tian as the sole panelist in this matter on September 13, 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, LeSportsac, Inc, is a company incorporated in Reno, Nevada, United States of America (“United States”). The Complainant is the owner of LESPORTSAC and other LESPORTSAC related trademarks in over ninety (90) countries throughout the world, including the United States (1979) and China (since 1996), (Annex C to this Complaint). Since 1974, the Complainant has used LESPORTSAC mark to brand soft-sided handbags, shoulder bags, backpacks, cosmetic bags, tote bags, travel bags, luggage and accessories. In the past four years, its worldwide sales for each year were approximately USD 300,000,000.
The Respondent is Jiamin Zhang, of Dong Guang, Guangdong, China. The disputed domain name was registered by the Respondent on February 1, 2012, long after the LESPORTSAC mark became internationally famous. 5. Parties’ Contentions A. Complainant
(a) The disputed domain name is confusingly similar to the LESPORTSAC marks in which the Complainant has well-established rights;
The Complainant owns and has well-established rights in the LESPORTSAC marks, under which it has provided goods since 1974.
The disputed domain name is identical or confusingly similar to the Complainant’s LESPORTSAC trademark, with the only difference being that the term “LeSportsac” is followed by “2012” and the generic top-level domain (gTLD) “.com.”
UDRP panels have consistently held that domain names are confusingly similar to established trademarks if they incorporate the trademark or a variation of the trademark. The addition of a gTLD to a trademark to create a domain name may be irrelevant when considering the similarity of a domain name to the trademark.
The Respondent’s second level domain name merely adds the current year “2012” to the Complainant’s mark. As a result, consumers are likely to be attracted to such a website based on the mistaken belief that it is an authorized site where they can enter into transactions with the Complainant or third-parties affiliated with the Complainant for the latest LESPORTSAC branded bags.
Whether or not 2012 has any special significance vis-à-vis the Complainant, the disputed domain name is confusingly similar to the Complainant’s trademark because the year does not differentiate the disputed domain name from the trademark.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Respondent has never been authorized by the Complainant to use any of the LESPORTSAC marks or any mark confusingly similar thereto as a mark or as part of a domain name.
The Respondent has never made any use of, or demonstrable preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent clearly knew of the Complainant’s LESPORTSAC mark because it registered the disputed domain name and is using it to sell goods under the LESPORTSAC mark and under the marks of the Complainant’s competitors. Such a knowing adoption of an infringing domain name does not constitute a bona fide offering and cannot establish legitimate interests in the disputed domain name.
The Respondent is not merely using the disputed domain name to lure Internet users to the Respondent’s website to purchase goods, but also is using the disputed domain name to sell either counterfeit or stolen LESPORTSAC branded goods.
The Respondent has never been commonly known by the disputed domain name.
The Respondent’s use of the disputed domain name misdirects potential visitors seeking the Complainant’s website to the website of the Respondent, which offers counterfeit merchandise for sale, presumably for profit. This does not constitute a legitimate noncommercial or fair use of the disputed domain name under the Policy.
(c) The disputed domain name was registered and is being used in bad faith.
The only evident reason for the Respondent to have registered the disputed domain name for a website was to attract Internet users interested in the Complainant’s LESPORTSAC products for the Respondent’s commercial gain.
Under the Policy, registration and use of a domain name in order to misdirect potential visitors to a respondent’s website is evidence of bad faith.
The website under the disputed domain name displays and offers for sale goods purportedly manufactured by almost fifty of the Complainant’s competitors. The incorporation of the Complainant’s trademark into the disputed domain name, followed by a non-distinguishing term, and use of the disputed domain name to generate sales of non-LESPORTSAC merchandise demonstrate bad faith registration and use.
The Respondent registered and is using the disputed domain name in order to sell counterfeit or stolen LESPORTSAC branded goods. Such illegal activity is strong evidence that the Respondent registered and is using the disputed domain name in bad faith.
In light of the Complainant’s well-established rights in the LESPORTSAC trademarks, there is no conceivable way that the Respondent could use the disputed domain name in good faith.
The selection of the disputed domain name to sell counterfeit LESPORTSAC products evidences that, prior to registration of the disputed domain name, the Registrant had knowledge of the Complainant’s rights in its LESPORTSAC marks.
The gap of twenty-eight years between the initial registration of the LESPORTSAC trademarks and the Respondent’s registration of the disputed domain name is also an indication of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceedings
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceedings shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the language of the proceedings should be English. The Complainant filed initially its Complaint in English, and has requested that English be the language of the proceedings for the following reasons:
(a) The disputed domain name is in English.
(b) The website hosted under the disputed domain name prominently displays various English-language trademarks throughout, various portions of the website are in English and it appears that the advertised products are shipped to the United States.
(c) Having selected various English-language trademarks to attract visitors to the website and to make sales to those visitors, as well as having selected various English phrases to facilitate those sales, the Respondent is conversant and proficient in English.
(d) All of the communications from WIPO to the parties will be transmitted both in Chinese and English. If this proceeding is conducted in English, the prejudice to the Respondent, if any, would be minimal.
(e) The Complainant is a United States company with a United States counsel.
(f) All of the Complainant’s exhibits are in English. If the language of the proceedings were in Chinese, the Complainant would be unduly disadvantaged as it would need to incur significant expense to engage a qualified translator to translate its Complaint and exhibits from English to Chinese and then any response and the decision from Chinese to English.
(g) The proceedings would likely also be delayed because the translation would be time-consuming.
The Respondent did not make any submissions with respect to the language of the proceedings and did not object to the use of English as the language of the proceedings.
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. (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 language finally decided by the Panel for the proceedings should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that the Complainant is a company from the United States, and the Complainant will be spared the burden of dealing with Chinese as the language of the proceedings. The Panel has also taken into consideration the facts that the website at the disputed domain name includes Latin characters “lesportsac” and the number “2012” (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).
On the record, the Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceedings to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by the Complainant, (a) the disputed domain name is registered in Latin characters and particularly in English language, rather than Chinese script; (b) the website hosted under the disputed domain name prominently displays various English-language trademarks throughout, various portions of the website are in English (Annex D to the Complaint); (c) it seems that the Respondent has selected various English-language trademarks to attract visitors to the website and to make sales to those visitors, and also has selected various English phrases to facilitate those sales; (d) the Center has notified the Respondent of the proceedings in both Chinese and English, and the Respondent has indicated no objection to the Complainant’s request that English be the language of the proceedings; (e) the Center informed the Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceedings 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. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceedings, and the decision will be rendered in English. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by the Respondent 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.
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 Panel finds that the Complainant has rights in the LESPORTSAC trademarks acquired through registration. The LESPORTSAC mark has been registered worldwide including in the United States and China, and the Complainant has a widespread reputation in producing LESPORTSAC brand soft-sided handbags, shoulder bags, backpacks, cosmetic bags, tote bags, travel bags, luggage and accessories.
The disputed domain name comprises the LESPORTSAC trademark in its entirety. The disputed domain name only differs from the Complainant’s trademark by the suffix “2012” to the mark LESPORTSAC. This does not seem to eliminate the identity or at least the similarity between the Complainant’s registered trademark and the disputed domain name.
Previous WIPO UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark 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).
Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).
Mere addition of the descriptive term “2012” as a suffix to the Complainant’s trademark fails to distinguish the disputed domain name from the Complainant’s trademark. By contrast, it may increase the likelihood of confusion. The added number “2012” is the current year. Consumers who visit the disputed domain name are likely to be confused and may falsely believe that the disputed domain name is an official website operated or authorized by the Complainant for selling current-year LESPORTSAC-branded products. (See also Guccio Gucci S.p.A. v. dexiong of lin, ewasddsd dsad, jianfu lin,WIPO Case No. D2012-0397).
Thus, the Panel finds that the suffix “2012” is not sufficient to negate the confusing similarity between the disputed domain name and the LESPORTSAC trademark.
The Panel therefore holds that the Complaint fulfils the first element 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 a respondent has rights or legitimate interests in the disputed domain name:
(i) the respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the fact that the respondent has been commonly known by the disputed domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The overall burden of proof on this element rests with the complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
The Complainant has rights in the LESPORTSAC trademarks in over ninety (90) countries throughout the world, including the United States since1979 and China since 1996 (Annex C to this Complaint) which long precedes the Respondents’ registrations of the disputed domain name (February 1, 2012). According to the Complainant, since 1974, the Complainant has used LESPORTSAC trademark to brand soft-sided handbags, shoulder bags, backpacks, cosmetic bags, tote bags, travel bags, luggage and accessories. In the past four years, its worldwide sales for each year were approximately USD 300,000,000.
Moreover, the Respondent is not an authorized dealer of LESPORTSAC branded products. 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 (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; 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).
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
(a) there has been no evidence adduced to show that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “lesportsac” in its business operation. There has been no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use the LESPORTSAC trademark or to apply for or use any domain name incorporating the LESPORTSAC trademark;
(b) there has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that the Respondent has any registered trademark rights with respect to the disputed domain name. The Respondent registered the disputed domain name on February 1, 2012. The disputed domain name is identical and confusingly similar to the Complainant’s LESPORTSAC trademark.
(c) There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. On the contrary, according to the information provided by the Complainant, the Respondent was in actuality using it to sell goods under the LESPORTSAC trademark and under the trademarks of the Complainant’s competitors (Annex D to the Complaint).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second element of paragraph 4(a) of the Policy. 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 disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed 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) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s websites 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 Respondent’s websites or location or of a product.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that the Respondent has registered and is using the disputed domain name in bad faith.
a) Registered in Bad Faith
The Complainant claimed that the Respondent’s use of the disputed domain name is not merely to sell counterfeit or stolen LESPORTSAC branded goods, but also to offer for sale goods purportedly manufactured by almost fifty of the Complainant’s competitors.
The Panel finds that the Complainant has a widespread reputation in the LESPORTSAC trademark with regard to its products. The Complainant has registered its LESPORTSAC trademarks internationally, including US registration since 1979 and China registration since 1996. As such, it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark right at the time of the registration of the disputed domain name (in 2012). The Panel therefore finds that the LESPORTSAC trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, the Respondent has chosen not to formally respond to the Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with the Complainant’s LESPORTSAC branded products.
b) Used in Bad Faith
The Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, the Respondent has “intentionally attempted to attract, for commercial gain”, Internet users to the Respondent’s websites offering the Complainant’s LESPORTSAC branded products and services without authorization.
To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).
Given the widespread reputation of the LESPORTSAC trademark, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with the Complainant, which is contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves (see Annex D to the Complaint). In other words, the Respondent has, through the use of a confusingly similar domain name and webpage contents, created a likelihood of confusion with the LESPORTSAC trademark. Noting also that apparently no clarification as to the Respondent’s relationship with the Complainant is made on the homepage of the disputed domain name, potential partners and Internet users are led to believe that the website is either the Complainant’s site or the site of officially authorized partners of the Complainant, which it is not. Moreover, the Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain name was used by the Respondent in bad faith.
In summary, the Respondent, by choosing to register and use the disputed domain name which is confusingly similar to the Complainant’s trademark, intended to ride on the goodwill of the Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for the Complainant. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain name and the conduct of the Respondent, as well as the website to which the domain name resolves are indicative of the Respondent’s registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third element of paragraph 4(a) of the Policy. 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 disputed domain name be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: October 8, 2012
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