The Complainant is Salomon S.A.S of Les Croiselets, Metz-Tessy, France, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is chen yuepeng of Hongze, Jiangsu, 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 July 16, 2015. On July 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 July 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2015.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on August 18, 2015. 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 well and widely known manufacturer of sporting equipment, footwear and clothing particularly in the field of skiing and other nordic sports. It claims to have distribution in almost every country of the world including China. Its products are distributed through 179 company stores and in 2012 its group of companies had an approximate worldwide turnover of EUR 650,000,000.
The Complainant is the registered proprietor of the trademark SALOMON registered in international classes 9, 18, 25 and 28, including registrations in Sweden since 1974, in China since 1981 and in the European Community since 2007. The Complainant asserts that its SALOMON trademark has become famous and well-known throughout the world including China and Sweden. It has registered more than 307 domain names which incorporate the trademark SALOMON.
The disputed domain name was registered on September 4, 2013. It is currently redirected to an online shop operating in English and Swedish at the domain name . It advertises for sale, in Swedish, a range of sporting footwear at substantially discounted prices. Many of these items are, or purport to be, Salomon items but the website also offers corresponding footwear by Nike, Mizuno, Jordan, ASICS, Reebok, New Balance and others.
The Complainant has sent to the Respondent several emails demanding, inter alia, cessation of use of the disputed domain name, the last of which was sent on February 11, 2015 but no response has been received to any of those emails. The Complainant asserts however that it was following the February 11, 2015 email that the disputed domain name redirected to . 5. Parties’ Contentions A. Complainant
The Complainant claims that its name and trademark are well known and widely promoted throughout the world including China, and produces many examples of publicity in support of this claim. The Complainant asserts that it has not licensed or otherwise authorized the Respondent to use its trademark and disputed domain name and is not in any way connected to the Respondent. The Complainant submits that the disputed domain name, wholly incorporates the Complainant’s trademark with the addition only of the Swedish words meaning “shoe” and “Sweden” and that the addition of those words does not serve to distinguish the disputed domain name from the Complainant’s trademark but rather serves to increase the likelihood of confusion, particularly in Sweden and among people familiar with the Swedish language, leading them to believe that the website at the disputed domain name is that of the Complainant or was authorized by it.
The Complainant contends that in the light of the renown and reputation of its trademark worldwide, including China, it is apparent that the Respondent was familiar with that trademark at the time of registering the disputed domain name and that its continued use in the light of that knowledge is in bad faith and cannot be a use in the offering of bona fide goods or services. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant is the owner of several registrations of, and has a reputation in, the trademark SALOMON predating by many years the registration of the disputed domain name. As the Complainant submits, the disputed domain name comprises wholly the Complainant’s trademark with the addition only of the Swedish descriptive words meaning “shoe” and “Sweden” which do not diminish the confusing similarity between the disputed domain name and the Complainant’s trademark.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant's trademark SALOMON in which it has long established rights. B. Rights or Legitimate Interests
For the reasons discussed more fully below the Complainant has established a strong showing that the Respondent’s use of the disputed domain name to direct to an unauthorized website offering for sale the Complainant’s products in conjunction with those of many other competing suppliers is not a bona fide use and cannot be claimed to be a use in the bona fide offering of goods or services. The Respondent has not sought to rebut that showing. The use made by the Respondent of the disputed domain name offering shoes for sale is clearly a commercial use. The Respondent is not commonly known by the disputed domain name and there is no other basis upon which the Respondent could claim a right or a legitimate interest.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant has produced substantial evidence to show that long before the registration of the disputed domain name, its name and trademark was well-known throughout the world, including in China, in the field of sporting equipment and clothing. The disputed domain name wholly includes the trademark with the addition only of non-distinguishing descriptive elements. In the light of those facts it may readily be concluded that the disputed domain name is “not one traders would legitimately choose unless seeking to create an impression of an association” with the Complainant, see, Telstra Corporation v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The Panel therefore concludes that the Respondent must have been aware of the Complainant’s rights and reputation in the trademark SALOMON at the time of registering the disputed domain name and that the disputed domain name was registered with intent to use it in bad faith. The subsequent use of the disputed domain name is evidence of the correctness of that conclusion.
The use which has been made of the disputed domain name is to direct to a website offering for sale goods purporting to be those of the Complainant but also those of several other manufacturers in competition with the Complainant. It is unclear whether the products offered at the website are the genuine goods of the respective trademark owners or whether they are counterfeit. The Complainant refers to the shoes offered at the website as “purported Salomon Products” but does not specifically allege that the products are not genuine Salomon products. It is unnecessary to determine that point for the purpose of this decision. The Panel proceeds on the assumption that the goods offered are genuine goods.
The website at the disputed domain name is clearly a commercial website offering for sale the goods of the Complainant and of several other competing manufacturers. The circumstances in which it is legitimate for a reseller to register a domain name incorporating the trademark of a supplier have been set out in the oft-cited decision in Oki Data Americas, Inc., v. ASD, Inc.,WIPO Case No. D2001-0903. The site to which the Respondent has directed the disputed domain name fails to satisfy at least two of those criteria. Even assuming that the Complainant’s goods offered at the website are genuine goods, the website offers not only those goods but also the goods of several other competing manufacturers. Secondly, the website fails to disclose accurately the Respondent’s relationship with the trademark owner.
In the present case the Respondent is not an authorized reseller or repairer of the Complainant’s products and there is no indication at the website that this is the case. The Respondent persisted in its conduct notwithstanding the receipt of several demands that its conduct should cease. Internet users attracted by the disputed domain name could reasonably expect that the website is the website of one of the Complainant’s many company stores or is at least the website of an authorized reseller of the Complainant’s products. A website which offers not only the Complainant’s products but also those of many of its competitors fails to meet that expectation. The fact that, following the most recent letter of demand the disputed domain name redirected to another domain name does not alter the matter, save to provide further evidence of bad faith. In the opinion of the Panel the Respondent’s conduct falls within paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith. 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.
Desmond J. Ryan AM
Sole Panelist
Date: September 2, 2015
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