The Complainant is Salomon S.A.S. of Metz-Tessy, France, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is yu qing of gaizhou, liaoning, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2013. On December 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 9, 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.
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 December 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on January 10, 2014.
The Center appointed Dennis A. Foster as the sole panelist in this matter on January 16, 2014. 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 that has manufactured and sold ski and snowboard equipment and related articles for many years throughout the world. The Complainant owns trademark registrations for its mark, SALOMON, in many countries, including China (e.g., Registration No. 145866 and 145868; both registered April 15, 1981).
The Respondent is the owner of the disputed domain name, , which was registered on July 17, 2013. The disputed domain name is not currently in use. 5. Parties’ Contentions A. Complainant
Founded in France in 1947, the Complainant manufactures and sells ski and snowboard equipment and related products. The Complainant’s products are distributed in nearly all countries of the world, including China. The Complainant’s worldwide revenue in 2012 was EUR650,000,000.
The Complainant owns numerous trademark registrations for its SALOMON mark, including with the proper authority in China. As a result of its expenditures for advertising and promotion, the Complainant has created enormous international goodwill associated with that trademark. The Complainant also operates many domain names to facilitate its business, including .
The Respondent failed to respond to a letter sent by the Complainant on November 12, 2013, requesting that the Respondent “cease and desist” from using the dispute domain name.
The disputed domain name, , is confusingly similar to the Complainant’s SALOMON trademark. The “my” prefix fails to distinguish the disputed domain name from the trademark and, in fact, reinforces the similarity between the name and the mark.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no affiliation with the Complainant and has not been granted any license or consent to use the Complainant’s trademark in any manner.
The Respondent seeks to trade on the goodwill created by the Complainant in the SALOMON mark, and is not engaged in a bona fide offering of goods or services.
The disputed domain name was registered in bad faith because the Respondent knew of the Complainant’s rights in the SALOMON trademark. The disputed domain name is not descriptive or generic, but incorporates the Complainant’s well-known and distinctive trademark.
The Respondent has no connection to the Complainant’s mark and fails to indicate as much in any website attached to the disputed domain name. The Respondent’s failure to use the disputed domain name is itself an indication of bad faith behavior regarding the use of that domain name. Moreover, the Respondent’s inclusion of faulty information – a telephone number bearing an obviously incorrect country code – in the registration listings for the disputed domain name is indicative of bad faith intentions. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to Policy paragraphs 4(a)(i) – (iii), the Panel shall order a transfer of the disputed domain name, , to the Complainant, provided that it can prove to the Panel’s satisfaction that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel is persuaded that the Complainant possess the requisite rights in its SALOMON trademark due to the Complainant’s presentation of ample evidence (Annex C of the Complaint) of its registration of the mark with the proper Chinese trademark authority. See, AXA SA v. Domains by Proxy, LLC / Axagroup,WIPO Case No. D2012-2523 (“The Panel finds that the Complainant has clearly established its rights in the registered trademarks AXA GROUP SOLUTIONS, GROUPE AXA and AXA as evidenced by the trademark registrations submitted with the Complaint.”); and The Valspar Company v. Gao Ping, NAF Claim No. 1226468 (“The Panel finds that Complainant has sufficiently established rights in the VALSPAR mark for the purposes of Policy [paragraph] 4(a)(i) through registration of the mark with the USPTO and the Chinese trademark authorities.”); and Salomon SAS v. Jim McManus,WIPO Case No. D2008-1880.
The Respondent has added merely the common English language possessive term, “my”, along with the generic top-level domain, “.com”, to the SALOMON trademark in composing the disputed domain name. These minor alterations hardy distinguish the disputed domain name form the mark in the view of the Panel, and do not prevent a finding that the two are confusingly similar. Plenty of prior UDRP panels have found that such meager additions to established marks fail to avoid a conclusion of confusing similarity. For example, see Magna International Inc. v. Victor Silva,WIPO Case No. D2012-1561 (finding to be confusingly similar to the MAGNA mark, while stating that “The addition of the non-distinctive prefix “my” is not sufficient to dispel confusion.”); DHL Operations B.V. and DHL International GmbH v. Eric White,WIPO Case No. D2010-0016 (ruling that was confusingly similar to DHL); and Ferrero S.p.A. v. Mr. Jean-François Legendre,WIPO Case No. D2000-1534 (where and were found to be to be confusingly similar to the trademark, NUTELLA).
Accordingly, the Panel finds that the Complainant has satisfied the requirements of Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
The overwhelming consensus of prior Policy panels have concluded that a complainant need only present a prima facie case before shifting the burden to a respondent of establishing that it has rights or legitimate interests in a domain name. See, Accor v. Eren Atesmen,WIPO Case No. D2009-0701 (“A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent.”); and Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828. In this case, the Complainant has furnished the Panel with such a prima facie case by demonstrating that the disputed domain name is confusingly similar to the Complainant’s mark and by asserting that the Complainant has never supplied the Respondent with a license or consent to use that mark in any manner.
The Respondent has failed to come forward with any evidence to rebut the Complainant’s prima facie case, but the Panel will search the record in relation to Policy paragraph 4(c) to determine whether there is any possible rationale to support a finding that the Respondent has rights or legitimate interests in the disputed domain name. In doing so, the Panel shall accept all of the Complainant’s reasonable contentions which are not contradicted elsewhere in the record or by other generally known facts. See Jason Claiborne v. Naylor Networks, NAF Claim No. 535347 (“In view of Respondent’s failure to submit a Response,…[t]he Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.”); and Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465 (“…the panel is empowered to draw such inferences from Respondent’s default as it considers appropriate under the circumstances.”).
The Complainant asserts that the Respondent has failed to make any use whatsoever of the disputed domain name. The Panel accepts this assertion. Moreover, the Panel ascertains no evidence in the record to suggest that the Respondent has made preparations to use the disputed domain name. Thus, the Panel concludes that Policy paragraph 4(c)(i) – requiring a respondent to use, or make demonstrable preparations to use, the disputed domain name “in connection with a bona fide offering of goods or services” – and Policy paragraph 4(c)(iii) – requiring a respondent to have made “legitimate noncommercial or fair use” of the disputed domain name – are inapplicable to the case at hand. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, NAF Claim No. 296583 (“The Panel finds that the passive holding of a domain name that is identical to Complainants mark is not a bona fide offering of goods or services pursuant to Policy [paragraph] 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy [paragraph] 4(c)(iii).”); and American Home Products Corporation vs. Ben Malgioglio,WIPO Case No. D2000-1602. Furthermore, the Panel finds that paragraph 4(c)(ii) of the Policy is of no avail to the Respondent, because there is no evidence in the record to suggest, and absolutely no reason to believe otherwise, that the Respondent, yu qing, or a company that he owns, has ever been commonly known as the disputed domain name, . Therefore, having determined that nothing in the record brings the criteria enumerated under Policy paragraph 4(c) into play on behalf of the Respondent, the Panel finds that the Complainant’s prima facie case prevails.
Accordingly, the Panel finds that the Complainant has met the requirements of Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Based on the Complainant’s contentions, the Respondent has not attempted to sell the disputed domain name to the Complainant or anyone else for an inappropriately large sum of money. Moreover, there is no allegation by the Complainant that the Respondent has engaged in a pattern of abusive domain name registration. Finally, because the Complainant asserts that no use is being made of the disputed domain name, there is no suggestion that the Respondent is attempting to disrupt the Complainant’s business or is realizing any commercial gain from ownership of the disputed domain name. As a result, the Panel is unable to apply any of the circumstances listed in paragraph 4(b) of the Policy to support a finding of bad faith registration and use of the disputed domain name.
However, it is axiomatic under the Policy that the criteria found in paragraph 4(b) are not exhaustive of the circumstances that might lead a panel to render a ruling of bad faith registration and use of a domain name. See, The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC,WIPO Case No. D2009-0057 (“The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found.”); and Bloomberg L.P. v. Future Movie Name, NAF Claim No. 139664 (“…paragraph 4(b) is not an exhaustive list, and other circumstances may give rise to a finding of bad faith.”).
In this case, the Panel believes that there is ample evidence to support the claim that the Complainant’s SALOMON trademark possesses such international notoriety and fame that it is inconceivable that the Respondent was unaware of the mark prior to registration of the disputed domain name. This seems especially true as the Complainant does significant business in China, the Respondent’s resident country. Another UDRP panelist has been so convinced of that trademark’s fame that the panelist concluded that such fame meant that registration of a disputed domain name, by an entity unconnected to the Complainant, must surely have been in bad faith. As explained by that learned panelist in Salomon SAS v. Jim McManus, supra:
As to registration in bad faith, not only does SALOMON appear to be well-known worldwide in relation to sports equipment and clothing, but it had also been used and registered as a trademark for very many years before the disputed domain name was registered in 1995. It is reasonable to conclude that the registrant was likely aware of the Complainant's rights in the SALOMON mark at that time and that, consequently, the disputed domain name was registered in bad faith.
The Panel wholly agrees with that reasoning and determines that the disputed domain name was registered in bad faith.
Many prior Policy panels have found that nonuse of a domain name can be considered use in bad faith when appropriate circumstances are also in evidence. See, Westdev Limited v. Private Data,WIPO Case No. D2007-1903 (“…there is ample authority in the form of previous decisions under the Policy…for the proposition that passive use can in certain circumstances constitute abusive use.”); and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In this case, the Panel notes that the disputed domain name contains the entire trademark of the Complainant, which is not a descriptive or common word. Ergo, the Respondent could not have planned to use the disputed domain name for the legitimate purpose of hosting a website that contained material corresponding to the descriptive or common meaning of the name. Furthermore, as contended reasonably by the Complainant, the Respondent has supplied what appears to be a phony contact telephone number, as it does not contain the appropriate country code for China. Finally, the Respondent has decided not to file a Response, i.e., declined to furnish the Panel with a legitimate rationale for his registration of the disputed domain name. Given these circumstances, deception and lack of a basis for a legitimate purpose, the Panel concludes that the Respondent’s nonuse of the disputed domain name does constitute use in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 disputed domain name, , be transferred to the Complainant.
Dennis A. Foster
Sole Panelist
Date: January 30, 2014
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