The Complainant is KERING of Paris, France, represented by Cabinet Santarelli, France.
The Respondent is Ren Xiang, HK KERING INC.LTD of Dongguan, Guangdong, China / YinSi BaoHu Yi KaiQi of Beijing, China. 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 October 24, 2014. On October 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 27, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 30, 2014 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 October 31, 2014. On October 30, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On October 31, 2014, the Complainant confirmed its request that English be the language of the proceeding. 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 November 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 27, 2014.
The Center appointed Jonathan Agmon as the sole panelist in this matter on December 12, 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 KERING is a France-based company which business consists of marketing and sale of apparel and accessories. The Complainant was formerly known under the name PPR.
The Complainant is the owner of multiple trademark registrations and applications for the mark KERING around the world. For example: French trademark registration KERING No. 3920561 filed on May 16, 2012 and registered in classes 3, 14, 18, 25, 28, 35, 36, 38 and 41; CTM registration KERING No. 010978741, filed on June 20, 2012 and registered on November 27, 2012, in classes 3, 14, 18, 25, 28, 35, 36, 38 and 41; and U.S. trademark application KERING No. 85/982044, filed on November 12, 2012, in classes 14, 18, 25, 28, 35, 36, 38 and 41.
Through extensive use, the KERING trademark has generated vast good will.
The Complainant also developed a formidable presence on the Internet and is the owner of multiple domain names, which contain the name "Kering", for example: , , , , , , , , and more.
The disputed domain name was registered on September 2, 2013.
The disputed domain name currently resolves into an inactive webpage. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the KERING trademark, in which the Complainant has rights, seeing that it incorporates the KERING trademark as a whole, with the additional descriptive term "inc" which is an abbreviation of "incorporated".
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name, that it had not licensed or otherwise permitted the Respondent to use its KERING trademark and is not affiliated or otherwise connected to the Respondent.
The Complainant further argues that the Respondent is not generally known by the disputed domain name, or has acquired trademark rights in the name "Kering".
The Complainant further argues that the Respondent is not using the disputed domain name to provide a bona fide offering of goods or services as allowed under the Policy.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin.
The Complainant contends that the Respondent registered the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark and disrupting the Complainant's business.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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 proceeding."
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of proceedings should be English.
The Panel cites the following with approval:
"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case." (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceedings:
(a) The disputed domain name consists of Latin letters, rather than Chinese letters;
(b) The Complainant is not fluent in the Chinese language;
(c) The Respondent did not object to the Complainant's request that English be the language of proceedings.
Upon considering the above, the Panel decides to render the Complainant's request and rules that English be the language of proceedings. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of multiple trademark registrations and applications for the mark KERING around the world. For example: French trademark registration KERING No. 3920561 filed on May 16, 2012 and registered in classes 3, 14, 18, 25, 28, 35, 36, 38 and 41; CTM registration KERING No. 010978741, filed on June 20, 2012 and registered on November 27, 2012, in classes 3, 14, 18, 25, 28, 35, 36, 38 and 41; and U.S. trademark application KERING No. 85/982044, filed on November 12, 2012, in classes 14, 18, 25, 28, 35, 36, 38 and 41.
The disputed domain name differs from the registered KERING trademark by the additional descriptive term "inc".
The disputed domain name integrates the Complainant's trademark KERING in its entirety, as a dominant element, with additional descriptive term "inc" which is an abbreviation of the word "incorporated" referring to the state of a corporation, and does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's KERING trademark.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differ the domain name from the registered trademark: "The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark" (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
Also, the addition of a generic Top-Level Domain ("gTLD") ".com" to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD ".com" is without legal significance since use of a gTLD is technically required to operate the disputed domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, as described above, the Complainant alleged, and thus proved, that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent failed to assert any such rights, or legitimate interests.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its KERING trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the KERING trademark since the year 2012. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
In addition, the evidence shows that the Respondent has not been using the disputed domain name. Evidence of passive holding of a domain name has been held under some circumstances to constitute use in bad faith. Failure to meet paragraph 4(a)(iii) of the Policy while holding a domain name passively would be regarded as evidence of bad faith use. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In the instant case, the Complainant has provided sufficient evidence to show that its KERING trademark has strong reputation and is widely known. The record also shows that the Respondent provided no evidence of use of the disputed domain name and did not respond to the Complaint. The Panel has also found that the Respondent's true identity is hidden by WhoIs Privacy Protection Service. Thus, it is evident that the Respondent has taken steps to conceal its true identity by operating under a name that is not his or hers true identity. The Respondent's actions, including use of a privacy protection service and the passive use of the disputed domain name indicate, in this case, bad faith registration and use of the disputed domain name - "[t]he concept of a domain name being used in bad faith is not limited to positive action: inaction is within the concept" See Cho Yong Pil v. Kee Dooseok,WIPO Case No. D2000-0754. "The significance of the distinction is that the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith" (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Furthermore, previous UDRP panels have determined that incorporating a widely-known trademark, such as the Complainant's KERING trademark, as a domain name may be considered as a clear indication of bad faith (see Caixa D'Estalvis I Pensions de Barcelona ("La Caixa") v. Eric Adam,WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441).
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the use of the Complainant's trademark in the disputed domain name, the passive use of the disputed domain name, the concealment of the Respondent's true identity and the similarity between the disputed domain name and the Complainant's mark, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 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.
Jonathan Agmon
Sole Panelist
Date: December 25, 2014
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