The Complainant is Société Anonyme des Galeries Lafayette of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Oriental Industries Overseas Group Ltd （东方实业海外（集团）有限公司）of Hangzhou, Zhejiang Province, China, represented internally. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2013. On November 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2013, 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 November 27, 2013, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On November 27, 2013, the Complainant confirmed its request that English be the language of the proceeding. On November 28, 2013 and December 2, 2013, the Respondent requested that Chinese be the language of the proceeding.
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 in both Chinese and English, and the proceeding commenced on December 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2013. On December 19, 2013, the Respondent submitted a request for extending the deadline for filing the Response. On the same day, the Center forwarded this email to the Complainant for comments. On December 20, 2013, the Center received the Complainant’s objection on this matter. On December 20, 2013, the Center informed the parties that taking into account the Respondent’s stated reasons for the extension request, and considering the objection of the Complainant, the Center would grant the extension of time until December 27, 2013. The Response was filed with the Center on December 26, 2013.
According to the filed Response, the Respondent appeared to be willing to settle the dispute with the Complainant. Accordingly, on December 27, 2013, the Center requested the Complainant to confirm if it wished to suspend the proceeding in order to explore the possibility of settlement with the Respondent. On January 16, 2014, upon the Complainant’s request the Center formally notified the parties of the suspension of the proceeding. The proceeding was re-instituted on February 14, 2014 upon the Complainant’s request.
The Center appointed Sebastian M.W. Hughes, Michel Vivant and He Guo as panelists in this matter on March 5, 2014. The Panel finds that it was properly constituted. Each member of 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 a company incorporated in France and the owner of numerous registrations worldwide for the trade mark GALERIES LAFAYETTE (the “Trade Mark”), including an international trade mark registration dating from 1990. The Complainant is also the owner of several active domain names comprising the Trade Mark, including , and . The Trade Mark is a well-known trade mark. B. Respondent
The Respondent is a company incorporated in China. C. The Disputed Domain Name
The disputed domain name was registered on March 24, 2008. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant’s famous Galeries Lafayette flagship store was founded in Paris in 1895. The Complainant’s flagship Paris store is home to the leading collection in Paris of international fashion items, displayed in three separate buildings, covering a total of 14,000 square meters, and featuring some 3,000 brands.
The Complainant owns more than 60 stores in France and worldwide and employs more than 11,000 employees. The Complainant attracted 27 million shoppers to its websites in 2012.
The Complainant’s previous fashion store, operated in China under the Trade Mark (as a 50/50 joint venture), closed in 1998. In September 2013, the Complainant reopened a Galeries Lafayette store in Beijing. The store covers a total area of over 47,000 square meters spreading over 6 floors.
The disputed domain name is confusingly similar to the Trade Mark. It incorporates the Trade Mark in its entirety.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent is not commonly known by the disputed domain name and is not making a bona fide noncommercial use of the disputed domain name.
The Respondent made no use of the disputed domain name until after it had received the Complainant’s cease and desist letter on January 30, 2013. The disputed domain name was subsequently resolved to a simple English language web page (the “Website”) featuring images of computers, hard drives and communication devices, and containing the following wording:
“
GALERIESLAFAYETTE is a website under Oriental Industries Overseas to provide internet software service.
New Product: SIMPLENECT”
The Website was linked to a Chinese language website promoting a new technological product, at “”.
As well as fashion items, the Complainant sells video games and toys containing software.
The disputed domain name has been registered and used in bad faith. The Trade Mark has been found to be a well-known mark in five previous UDRP decisions. Given the notoriety of the Trade Mark, the Respondent must have known of the Trade Mark when it registered the disputed domain name.
The Respondent’s use of the disputed domain name, subsequent to receipt of the Complainant’s cease and desist letter, in respect of the Website, amounts to use in bad faith to intentionally attempt to attract, for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Complainant’s Trade Mark. B. Respondent
The Respondent made the following submissions in the Response.
The disputed domain name is a generic domain name and is not confusingly similar to the Trade Mark, as the full corporate name of the Complainant is Société Anonyme des Galeries Lafayette.
The disputed domain name is comprised of two words, “galeries”, which is the French word for “street”, and “Lafayette”, the name of a place in the United States of America (the “US”). The Respondent chose the disputed domain name comprising these French and English words as a catchy international domain name that is easy to remember, and to be used to promote its Internet file sharing software services.
The Complainant’s main products are luxury fashion products. Unlike the Respondent, the Complainant does not offer Internet file sharing software services.
The Complainant does not have any presence in the Chinese market, having only entered the Chinese market in 2013.
The Respondent is making a legitimate use of the disputed domain name and is not seeking to harm the Complainant or its business or dilute the Complainant’s Trade Mark rights.
The Complainant has a lot of resources and has been able to engage lawyers to exert pressure on the Respondent, notwithstanding the Respondent’s bona fide use of the disputed domain name. This amounts to bad faith conduct on the part of the Complainant and an attempt to prevent freedom of expression.
The Respondent was nonetheless willing to try to reach a settlement with the Complainant without the need for a Decision being rendered by the Panel in relation to this proceeding. 6. Discussion and Findings 6.1 Language of the Proceeding
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 unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding 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 proceeding. 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 proceeding (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 proceeding for the following reasons:
(1) The Complainant is a French company and has no knowledge of Chinese;
(2) To proceed in Chinese, the Complainant would have to retain specialised translation services at a
cost that is likely to be higher than the overall cost of the proceedings; and
(3) The Respondent is conversant in English as it has corresponded with the Complainant in English prior to the filing of the Complaint, and the Website is an English language website.
The Respondent has requested that Chinese be the language of the proceeding for the following reasons:
(1) Although the Respondent did communicate with the Complainant in simple English, it does not possess sufficient proficiency to be able to conduct the proceeding in English;
(2) The Respondent is unable to afford the exorbitant costs of translating the Complaint into English;
(3) The Respondent is based in Hangzhou which is not a first tier international city; and
(4) The Complainant, on the other hand, has several branches in Asia and should have no problem engaging translation services.
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 finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
The Panel takes issue with the Complainant’s assertion that it is a French company that has no knowledge of Chinese. The Complainant’s own evidence is that it operates internationally and that, prior to 1998, it operated a store in China via a joint venture, and that, in September 2013, it reopened its store in Beijing.
The Panel also takes issue with the Respondent’s assertions that (1) it is unable to conduct the proceeding in English; and (2) it is unable to afford translation costs. The Panel notes, notwithstanding its assertions, the Respondent has apparently been able to prepare and file its Response to the English language Complaint.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that, in the interests in particular of reducing the costs of both parties and ensuring, consistent with the Policy, that the proceeding is determined in a timely manner, it will:
1. Accept the filing of the Complaint in English;
2. Accept the filing of the Response in Chinese; and
3. Render the Decision in English. 6.2 Substantive Elements of the Policy
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 disputed domain name comprises the Trade Mark in its entirety.
The Panel therefore finds that the disputed domain name is identical 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 list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, 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 Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by over 100 years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (see Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services.
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 is making a legitimate noncommercial or fair use of the disputed domain name.
Prior to receipt of the Complainant’s cease and desist letter, the disputed domain name had been passively held for almost five years. The Panel finds, on the evidence, the Respondent is unable to avail itself of paragraph 4(c)(i) of the Policy as it did not commence use of the disputed domain name until after notice of the dispute.
The Panel further finds, on the evidence, the Respondent’s limited use of the disputed domain name in respect of its one page Website since that date amounts to no more than desultory use, and is insufficient to establish rights or legitimate interests in the disputed domain name for the purposes of the Policy. The Panel notes the Respondent has not provided any further evidence of its purported use of the disputed domain name in respect of any goods or services in order to support its assertions. In particular, the Respondent has not filed any further evidence of its purported use of the disputed domain name in relation to Internet software or Internet file sharing services.
The Panel finds that the Respondent has failed to produce sufficient evidence to establish rights or legitimate interests in the disputed domain name. 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
The Panel concludes that, in all the circumstances of this proceeding, the Respondent must have known of the Complainant and its well-known Trade Mark at the time the Respondent registered the disputed domain name. The Panel finds the Respondent’s explanation as to how it purportedly derived the inspiration for registration of the disputed domain name unconvincing. In the Panel’s view, even if the Respondent’s story is to be believed, the fact that “Lafayette” is the name of a place in the US does not assist the Respondent, for the purposes of determination of this proceeding under the Policy.
In all the circumstances, the Panel concludes that the Respondent’s registration and passive use of the disputed domain name amounts to bad faith registration and use for the purposes of the Policy.
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of a respondent:
By using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
In all the circumstances, the Panel concludes the Respondent’s limited use of the disputed domain name in respect of the Website only after it had received the Complainant’s cease and desist letter (and almost five years after it had registered the disputed domain name), provides further grounds for a finding of bad faith under paragraph 4(b)(iv) of the Policy. The somewhat limited evidence of the Respondent in this regard, if nothing else, demonstrates an intention to use the disputed domain name, which is identical to the Complainant’s well-known Trade Mark, to confuse Internet users and attract them to the Website, in order to promote Internet software services, for commercial gain.
The Panel would further note that, as at the date of this Decision, the Website appears to have been taken down, which, in the Panel’s view, provides further support for its conclusions under both the second and the third limbs of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is 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 name be transferred to the Complainant.
Sebastian M.W. Hughes
Presiding Panelist
Michel Vivant
Panelist
He Guo
Panelist
Date: March 19, 2014
Full & Egal Universal Law Academy