The Complainant is Yves Saint Laurent, S.A.S. of Paris, France, represented internally.
The Respondent is WhoisGuard of Los Angeles, California, Unites States of America; and University of Paris, Jacky Lee of Paris, France. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name’”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2013. On March 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 28, 2013, 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 April 4, 2013 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 amendment to the Complaint on April 9, 2013.
The Center verified that the Complaint together with the amendment to 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 April 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2013.
The Center appointed Michel Vivant as the sole panelist in this matter on May 21, 2013. 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 owns numerous trademarks YSL, registered in different classes (jewelry, leather goods, bags, etc.), in different locations such as China, Europe or Japan. The registrations of all of those trademarks predate the registration of the Domain Name.
The Domain Name has been registered on November 19, 2012 through a “privacy service” (WhoisGuard) which allows masking registrations. But, despite that, the Registrant has been identified later by the Registrar.
In consequence, the Complainant filed a Complaint before the Center, requesting the Panel to issue a decision that the Domain Name be transferred to it. 5. Parties’ Contentions A. Complainant
The Complainant put forward it owns numerous trademarks YSL around the world (and also similar domain names) and upholds, leaning on various previous WIPO UDRP cases, as far as the term “sale” is generic and does not deprive the trademark from its distinctive character, that the Domain Name is identical or similar “to the Complainant’ rights”.
It upholds also that the Respondent has no rights or legitimate interests in respect to the Domain Name because he is not a licensee of the Complainant, is not known under such a name, and uses only the Domain Name in an unfair manner.
Lastly, the Complainant actually upholds the Respondent registered and used the Domain Name in bad faith. It notices YVES SAINT LAURENT is a well-known trademark, the website associated to the Domain Name reproduces the YVES SAINT LAURENT logo and is used to sell unauthorized and counterfeit goods. It adds the Domain Name is blacklisted as “source of spam”. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant owns numerous trademarks YSL and YVES SAINT LAURENT in France and at the European level, in Japan, in China, etc. and the Domain Name is . The suffix “.com” must not be taken into consideration to determine likelihood of Internet user confusion. So the sole difference between the trademark and the Domain Name lies on the adjunction of the term “sale”.
The Complainant is right when it says that this word is generic and does not really differentiate the Domain Name from the trademark. Moreover, the public can be misled by this association, believing wrongly there is a link between the trademark and the website at the Domain Name.
Furthermore, the lack of differentiation by the inclusion of the word “sale” has been recognized in previous UDRP cases as, for instance, in Dansko, LLC v. Gery Lee,WIPO Case No. D2011-1300.
Consequently, the Domain Name must be considered as confusingly similar to the trademarks, according to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
YVES SAINT LAURENT and YSL are well-known trademarks and, in the Panel’s view, it is not seriously thinkable that the name “YSL” has been chosen by accident by the Respondent.
The sole known name “YSL” is the name which belongs to Yves Saint Laurent. The Respondent is not a licensee of the Complainant. And it cannot assert it has any link with the involved name.
So, in the Panel’s view, the Respondent has no rights or legitimate interests in the Domain Name, according to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Considering the last requirement of registration and use in bad faith, there are clear evidences of bad faith in this case.
The website associated with the Domain Name reproduces YVES SAINT LAURENT trademark with its famous logo and appears to sell unauthorized and counterfeit goods. Numerous previous UDRP cases have decided that this is an evidence of bad faith. But even if that was not the case, such practices cannot be differently interpreted.
Furthermore, the Panel noticed by itself that the Domain Name appears on the “WS” blacklist of the SURBL’s website which makes an inventory of sites source of spams. For this Panel such a use is obviously a use in bad faith, as it was decided in previous WIPO cases (as for instance, Nokia Corporation v. durmus dalda,WIPO Case No. 2006-0931).
So the double requirement of registration and use in bad faith is clearly fulfilled, according to the Policy, paragraph 4(a)(iii). 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.
Michel Vivant
Sole Panelist
Date: May 30, 2013
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