The Complainant is KERING of Paris, France, represented by SANTARELLI, France.
The Respondents are Duanzuochun of Zhuhai, Guangdong Province, China (the “first Respondent”); Song of Beijing, China (the “second Respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with Hangzhou E-Business Services Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2014. On January 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent “Duanzuochun” is listed as the registrant and however providing the contact details for a “Song”. On the same day, the Center requested the Registrar to confirm the registrant and its contact details. On January 23, 2014, the Registrar confirmed to the Center that the registrant of the disputed domain name is “Song”. On January 23, 2014, the Center informed the Registrar that “Duanzuochun” appeared to be the registrant according to the WhoIs search conducted on January 15, 2014. Although “Song” appeared to be the registrant according to the WhoIs search conducted on January 21, 2014, “Duanzuochun” appeared to be listed as the administrative, technical and billing contact of the disputed domain name. Accordingly, the Center requested the Registrar to clarify when the registrant of the disputed domain name changed from “Duanzuochun” to “Song”. On January 24, 2014, the Registrar explained there was a clerical error in its initial response to the Center, confirmed that “Song” was the registrant as well as the administrative, technical and billing contact of the disputed domain name at the time of its reply to the Center on January 22, 2014, and provided the exact time of changing of the registrant information. On January 24, 2014, according to the Registrar’s aforementioned reply, the Center informed the Registrar that the registrant information appeared to have been changed from “Duanzuochun” to “Song” after the Center received the filed Complaint. Therefore such change appeared to be in violation of paragraph 8(a) of the Uniform Domain Name Dispute Resolution Policy. The Center requested the Registrar to confirm whether it was in position to restore the registrant information. On the same day, the Registrar informed the Center that it would not be possible to restore the registrant information.
On January 24, 2014, the Center sent an email communication to the Complainant 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 January 28, 2014, listing both “Duanzuochun” and “Song” as the Respondents based on the argument of cyberflight.
On January 24, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant requested that English be the language of the proceeding while the Respondents requested that Chinese be the language of the proceeding.
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, 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 Respondents of the Complaint in both Chinese and English, and the proceedings commenced on January 31, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2014. On January 31, 2014, an email communication was received from the Respondents, to which the Center replied on the same day. The Center did not receive any formal Response by the specified Response due date. Accordingly, the Center informed the parties that it shall proceed with the panel appointment on February 21, 2014.
The Center appointed Douglas Clark as the sole panelist in this matter on March 10, 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.
On March 11, 2014, the Center received another email communication from the Respondents which has been brought to the Panel’s attention. 4. Factual Background
The Complainant was formerly known as PPR. On March 4, 2013, international newspapers issued reports that the Complainant intended change its name to Kering subject to shareholders’ approval. On March 22, 2013, the Complainant issued a press release confirming this. On June 18, 2013, the shareholders approved the change of name.
Prior to any publicity of its intention to change its name, on May 16, 2012, the Complainant filed trademark applications in multiple classes for KERING in France and with the Office for Harmonization in the Internal Market (OHIM). Applications were filed in China and a number of other countries claiming priority from May 16, 2012.
KERING was registered in France on September 7, 2012 and as a Community Trademark on November 27, 2012. None of the applications in China have matured to registration as at the date of this decision. Some have been advertised for opposition.
The Complainant is in the apparel and accessories business and develops an ensemble of brands including Gucci, Bottega Veneta, Saint Laurent, Alexander McQueen, Balenciaga, Brioni, Tomas Maier, Christopher Kane, Stella McCartney, Sergio Rossi, Boucheron, Dodo, Girard-Perregaux, Jeanrichard, Pomellato and Qeelin in the luxury sector; and Puma, Volcom, Cobra, Electric and Tretorn in the sports and lifestyle sector.
The Complainant’s website is hosted on the domain name . The Complainant also registered the following domain names incorporating Kering: , , , , , , , , , , and .
The Respondents are both individuals based in China. The disputed domain name was registered on March 31, 2013, the same month the Complainant’s change of name was made public.
The Complainant wrote to the first Respondent in English requesting the cancellation or transfer of all domain names incorporating the Complainant’s trademark held by the first Respondent. The first Respondent replied in English that the Complainant’s “trademark rights cannot be applied to every country has its trademark laws” but offered to sell each domain name for EUR 1,100. This was subsequently reduced to EUR 1,000. The first Respondent also stated that the sale would “ensure that no longer register similar domain name”.
The disputed domain name originally resolved to a parking page with sponsored links. It currently does not resolve to any web page. 5. Parties’ Contentions A. Complainant
The Complainants contentions are set out below.
The Complainant submits that the disputes domain name consists of the two words “kering” and “group”, and of the standard suffix “.asia”. KERING is a distinctive trademark, protected, in the name of the Complainant. The second word, “group”, is an English word meaning “a business that contains several different companies”. The Cambridge Dictionary interprets the word “group” as a shortcut for “group of companies” in the business language.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. It has received no consent or license from the Complainant to use the Complainant’s trademark in the disputed domain name.
The Complainants submits that the disputed domain name was registered and used in bad faith with the intention of attracting Internet users to the website and thereby make money from users clicking on the sponsored links. The Complainant further submits that the offer to sell the disputed domain name for EUR 1,000 which exceeds by far the Respondent’s out-of-pocket costs directly related to the disputed domain name indicating that the disputed domain name was acquired for the purpose of acquiring a substantial gain. Further the Complainant brings to the Panel’s attention that the first Respondent has been found to have registered and used domain names in bad faith in three other UDRP proceedings, namely: The Net-A-Porter Group Limited v. Duan Zuochun / Simon David,WIPO Case No. D2013-0617 for ; Dama S.p.A. v. Duan Zuochun,WIPO Case No. D2012-1015 for and ; and Loro Piana S.p.A. v. Duan Zuochun,WIPO Case No. D2012-1114 for . B. Respondents
The Respondents did not reply substantively to the Complainant’s contentions.
The second Respondent did send emails to the Center (in Chinese) complaining about the proceedings and the Center’s preliminary decision to accept the Complaint in English (discussed below). These emails directed personal insults at the case manager for the case manager’s role in the proceeding. For the purposes of rendering this decision the Panel does not need to address such comments and considered the case solely on its merits. The Panel does wish to comment, however, that this email was inappropriate, to say the least. 6. Discussion and Findings
As a preliminary matter, the Panel considers it appropriate to include both Respondents as parties in this proceeding given the circumstances described in Section 3. above. See also Wal-Mart Stores, Inc. v. James Cann and Save Family Businesses Panel, WIPO Case No. D2000-0830. Language of the Proceeding
The language of the Registration Agreement is Chinese. The Complainant requested that the language of the proceeding be English on a number of grounds including that the first Respondent had responded to letters sent in English in English and that the website under the disputed domain name was written in English.
The first Respondent did not respond to the Complainant’s language request. The second Respondent said that it wished the proceedings to be conducted in Chinese and that she or he did not understand English.
The Center made a preliminary determination, subject to final decision by the Panel, to accept the Complaint in English but allow the Respondent to file a response in English or Chinese.
The Panel finds that from the fact that the first Respondent responded to the Complainant in English and clearly understood the nature of the Complaint that the Respondents should understand the nature of these proceedings. The second Respondent in one of his or her emails to the Center also showed that he or she was familiar with the UDRP and decisions by UDRP panels. No evidence has been filed as to the relationship between the first and second Respondent as noted, however, given the circumstances of transfer described in the Section 3 above, the Panel is willing to infer that they are related.
The Panel does not consider it appropriate in this case to require the Complainant to translate the Complaint into Chinese.
In the circumstances of this case, the Panel decides that the language of the proceeding shall be English pursuant to paragraph 11 of the Rules. The Panel accepts the Complaint as filed in English and, because there is no other pleading before it, the Panel will render its decision in English. Substantive Decision
The Panel finds that this is a clear case of cybersquatting that the UDRP was designed to stop. The Panel agrees fully with the Complainant’s arguments and accordingly will make on a short decision. A. Identical or Confusingly Similar
The disputed domain name is made up of the Complainant’s registered trademark KERING and the generic word “group”. It is confusingly similar to the Complainant’s registered trademark.
As set out in paragraph 1.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”), the first element of the UDRP is generally considered as a standing issue. Paragraph 1.1 provides:
“If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use) [see also paragraph 1.4 below], and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. However, such factors may bear on a panel's determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP.”
The Complainant has registered French and Community trademarks. This is more than sufficient to satisfy the first element of the UDRP.
The first element of the Policy is made out. B. Rights or Legitimate Interests
The Complainant has made a prima facie case that the Respondents lack rights or legitimate interests in the dispute domain name. The Respondents have not formally responded to the Complaint to assert any rights or legitimate interests in the disputed domain name. The use made by the Respondents of the website at the dispute domain name as a parking page make it hard to imagine that the Respondents could ever establish any rights or legitimate interests. Clearly, none of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
The Panel finds that the second element of the Policy is made out. C. Registered and Used in Bad Faith
For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain name was registered in bad faith and is being used in bad faith.
This case clearly falls within paragraph 4(b)(i) of the Policy. The offer to sell the disputed domain name for EUR 1,100 first and then EUR 1,000 and the previous UDRP decisions against the first Respondent are clear circumstances indicating that the Respondents have registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of your documented out-of-pocket costs directly related to the disputed domain name.
This case also clearly falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.” 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.
Douglas Clark
Sole Panelist
Date: March 17, 2014
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