The Complainant is Ami Paris of Paris, France, represented by ATM Avocats, France.
The Respondent is Amiparis, Amipa of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with eName Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2016. On March 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2016, 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 March 10, 2016, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. On March 11, 2016, the Complainant submitted its request that English be the language of the proceeding by email to the Center. The Respondent did not submit any comments within the specified due date.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2016.
The Center appointed Jonathan Agmon as the sole panelist in this matter on April 27, 2016. 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 Ami Paris, a company registered from Paris, France, created by the designer Alexander Matiussi, nicknamed “Ami”.
The Complainant and its brands acquired international fame in the fashion business. The Complainant has a network of some 260 points of sale in France and internationally.
The Complainant is the owner of the trademark “AMI PARIS” in France, registration no. 113797848, with the registration date of January 14, 2011.
The Complainant is also the owner of the International trademark AMI ALEXANDRE MATIUSSI, registration no. 1110279, with the registration date of December 12, 2012; United Stated of America trademark AMI ALEXANDRE MATIUSSI, registration no. 4270355, with the registration date of January 8, 2013, and more.
The Complainant also developed a formidable presence on the Internet and is the owner of the domain name , , and more.
The disputed domain name was registered on November 15, 2014.
The Complainant used to be the owner of the disputed domain name.
The disputed domain name currently resolves to an inactive webpage. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant further argues that not only the disputed domain name is identical to the Complaint’s brand “Ami Paris”. It is also very similar to the Complainant’s international trademark AMI ALEXANDER MATIUSSI. And these identities and similarities are likely to lead to confusing similarity between the AMI PARIS brands and products.
The Complainant further argues that the considering the company “Ami Paris” reputation in France and internationally, the Respondent deliberately registered the disputed domain name in order to parasitize the Complainant.
The Complainant further argues that the Respondent had no rights or legitimate interests in respect of the disputed domain name.
The Complainant further argues that the registration circumstances by the Respondent appear highly suspicious including the company “Amipa” bad faith and suggesting that the Respondent registered the disputed domain name for the sole purpose of parasitizing the Complainant.
The Complainant further argues that “Amipa” is not found on an Internet search, and that a Google search leads to the Complainant.
The Complainant further argues that the Respondent does not use the disputed domain name.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith.
The Complainant further argues that due to a system error the registration of the disputed domain name could not be renewed. The Complainant further argues that the disputed domain name was secretly registered in November 2014 by a Korean registrar. The Complainant further contends that its formal notice letters have been sent to the Korean companies and were not answered.
The Complainant further argues that the Respondent has been created solely for the purpose of holding the disputed domain name.
The Complainant further argues that the last owner and the current, the Respondent, share the same telephone number, which this is another indication of the Respondent suspicious registration circumstances.
The Complainant further argues that the term “amiparis” doesn’t bear an ordinary meaning neither in English nor in Chinese. The Complainant further contends that a Google search indicates the Complainant is the only one using this term and it is directly linked to its brand and products. 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 Registrar has confirmed that the language of the Registration Agreement of the disputed domain name is Chinese.
The Complainant requested that the language of proceeding 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 proceeding:
a) The disputed domain name consists of Latin letters, rather than Chinese letters.
b) According to the Complainant it has no knowledge of Chinese. The Panel accepts the Complainant’s claim that the use of a language other than English would impose a significant burden on the Complainant in view of the proceeding in question.
c) The Respondent did not object to the Complainant’s request that English be the language of proceeding.
Upon considering the above, the Panel decides in accordance with paragraph 11(a) of the Rules that English should be the language of proceeding. 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 a trademark registration for the mark AMI PARIS, as well as AMI ALEXANDRE MATIUSSI. For example: The Complainant is the owner of the French trademark AMI PARIS, registration no. 113797848, with the registration date of January 14, 2011; International trademark AMI ALEXANDRE MATIUSSI, registration no. 1110279, with the registration date of December 12, 2012; United Stated of America trademark AMI ALEXANDRE MATIUSSI, registration no. 4270355, with the registration date of January 8, 2013, and more.
The disputed domain name integrates the Complainant’s trademark AMI PARIS in its entirety and the prefix of the Complainant’s trademark AMI ALEXANDER MATIUSSI logo as a dominant element, with the generic Top-Level Domain (“gTLD”) “.com” that do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark.
Previous UDRP panels have ruled that the gTLD suffix generally has no capacity to distinguish a domain name from a trademark (see Dassault (Groupe Industriel Marcel Dassault) v. Ma Xiaojuan,WIPO Case No. D2015-1733,); Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080).
The addition of the 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 is typically without legal significance since use of a gTLD is technically required to operate a 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 identical or 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 of the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s AMI PARIS nor AMI ALEXANDRE MATIUSSI trademarks, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.
The Respondent has not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to 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 evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the AMI PARIS trademark since at least the year 2011. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The disputed domain name is confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Another indication for the Respondent’s bad faith is raised from the incorporation of the Complainant’s trademark into the disputed domain name by the Respondent who has no plausible explanation for doing so (Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273).
Indeed, “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith” (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
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, supra). The Respondent’s passive holding of the disputed domain name also indicates 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. See also: “[t]he 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 Marshmallow, supra).
Based on the evidence presented to the Panel, including the late registration of the disputed domain name which includes to the Complainant’s marks, the confusing similarity between the Complainant’s trademark and the disputed domain name, the Respondent’s failure to reply to the cease-and-desist letter, the failure of the Respondent to respond to the Complaint and the Respondent’s passive holding of the disputed domain name, the Panel draws the inference that on balance the disputed domain name has been registered and is being 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: May 12, 2016
Full & Egal Universal Law Academy