The Complainant is La Roche-Posay Laboratoire Pharmaceutique of La Roche-Posay, France, represented by Dreyfus & associés, France.
The Respondent is Domain Whois Protection Service / sdfdsdf of China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2012. On August 9, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 10, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 15, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 17, 2012.
On August 15, 2012, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceedings. On August 16, 2012, the Complainant confirmed its request that English be the language of the proceedings. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amended 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 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2012.
The Center appointed Karen Fong as the sole panelist in this matter on September 19, 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 is a French company which specialises in the field of cosmetics and beauty. It was founded in 1928 for post-treatment dermatological products formulated with La Roche-Posay thermal spring water. With over 30 years’ experience in research into sensitive skins, the products which are branded LA ROCHE-POSAY are now present in 50 countries and recommended by dermatologists worldwide. The brand LA ROCHE-POSAY has been sold in numerous cities in China for a number of years and is popular among Chinese customers.
The Complainant owns trade mark registration for the LA ROCHE-POSAY trade mark in China in Latin characters as well as in Chinese characters. The transliteration of the LA ROCHE-POSAY mark in Chinese 理肤泉is “LI FU QUAN”. The trade mark LA ROCHE-POSAY in English was registered on July 12, 2007 whilst the Chinese trade mark 理肤泉, on May 14, 2001.
The Complainant’s Chinese website is connected to the domain name, (the “Official Website”).
The Domain Name was registered on March 10, 2011. It is connected to a website (the “Website”) which bears the LA ROCHE-POSAY trade mark and which looks very similar to the Official Website and purports to sell LA ROCHE-POSAY products at a discounted price. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the LA ROCHE- POSAY trade marks, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith. B. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the registration agreement is Chinese.
The Complainant submits in Section IV of the Complaint that the language of the proceeding should be English. The Complainant contends amongst other things that the Domain Name is a transliteration of the Complainant’s LA ROCHE-POSAY trade mark in Chinese 理肤泉 in latin characters which suggests that the Respondent has knowledge of languages other than Chinese. The Complainant is a French company and is not familiar with the Chinese language. Conducting the proceedings in Chinese would disadvantage the Complainant as it would have to incur substantial added expense and inconvenience in having this Complaint translated into Chinese as well as to delay proceedings.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding and is satisfied under the circumstances that the Respondent is familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Further, the Respondent did not respond to the Complaint or the language of the proceeding notification by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceedings. C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade mark LA ROCHE- POSAY and the trade mark in Chinese 理肤泉, the transliteration of which is “LI FU QUAN”.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. It is also established that “domain names comprising phonetic transliterations of Chinese language trademarks are confusingly similar to such trademarks under the Policy (Pierre Fabre Dermo-Cosmetique v. Simon Chen/personnal/jinpingguo,WIPO Case No. D2011-0769). Further, for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.com”.
In this case the Domain Name is the direct phonetic transliteration of the Complainant’s registered trade mark in Chinese 理肤泉. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. D. Rights or Legitimate Interests
The Complainant alleges that it has not licensed, consented or otherwise authorized the Respondent to use its LA ROCHE POSAY and 理肤泉 trade marks as well as the transliteration of the latter “LI FU QUAN” in the Domain Name or any other manner. The Respondent is not commonly known by the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and given the use to which the Respondent has put the Doman Name, further discussed below, the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. E. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s LA ROCHE POSAY and 理肤泉 trade marks when it registered the Domain Name. The fact that the Domain Name consists of the direct phonetic transliteration of the Complainant’s Chinese trade mark which the Panel finds is well known in China is in the Panel’s view evidence that the registration of the Domain Name was in bad faith.
The Panel also concludes that the actual use of the Domain Name was in bad faith. The Website bears the LA ROCHE-POSAY trade mark and looks very similar to the Official Website when there is no connection between the parties. The Website includes links to direct Internet users to websites offering cosmetic brands of competitors and falsely suggested to be the official website of the Complainant. The Domain Name was initially registered in the name of a privacy protect service. After the filing of the Complaint, it was revealed that the registrant was “sdfdsdf” with the address “sdf df df dsf 123456 , China”, which are clearly made up details.
The Consensus View at paragraph 3.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that:
“[A]lthough use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. For example, registrant use of a privacy service in combination with provision of incomplete contact information to such service.” This is just such a case.
All these factors show a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Website is authorized, licensed or somehow connected to the Complainant. The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Name are in bad faith. 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 domain name, be transferred to the Complainant.
Karen Fong
Sole Panelist
Dated: October 8, 2012
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