The Complainant is Yves Saint Laurent, SAS of Paris, France, represented by IP Twins SAS, France.
The Respondent is Chen Fei of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 31, 2016. On May 31, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 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 June 2, 2016, 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 confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in both Chinese and English of the Complaint, and the proceeding commenced on June 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 29, 2016.
The Center appointed Matthew Kennedy as the sole panelist in this matter on July 5, 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 a fashion house founded by Yves Saint Laurent, whose initials were "YSL". The Complainant owns many trademarks registered in multiple jurisdictions, including International registration no. 254533 (YSL monogram) registered in 1962, International registration no. 314625 (YVES SAINT LAURENT in a particular script) registered in 1966, and Chinese registration no. 807223 (YSL in a particular script) registered in 1996. These registrations are still in force and specify goods in class 18, including handbags. The Complainant is the registrant of many domain names including , registered in 2014.
The Respondent is the registrant of the disputed domain name, which was created on December 15, 2014. The Respondent's organization name and street address as shown in the Registrar's WhoIs database are merely random words, symbols or letters in both Chinese and English and are manifestly false. The disputed domain name resolves to a website in English that displays the Complainant's YVES SAINT LAURENT trademark. The website offers for sale replicas of the Complainant's handbags of "1:1 mirror quality" with allegedly original Yves Saint Laurent plastic packaging, serial numbers and serial cards. 5. Parties' Contentions A. Complainant
The Complainant submits that the disputed domain name is identical or confusingly similar to its YSL trademark. The disputed domain name incorporates the YSL trademark in its integrity and in "attack" position. The presence of a hyphen and the English term "handbags" does not eliminate the identity or at least the confusing similarity between the Complainant's trademark and the disputed domain name.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name and has acquired no relevant trademark rights. The Respondent is unknown to the Complainant as being an authorized retailer, distributor or manufacturer of the Complainant's products. The Respondent has never been granted authorization, licence or any right whatsoever to use the Complainant's YSL trademarks in any capacity.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant's trademarks are so widely known that it is inconceivable that the Respondent was unaware of the Complainant's prior rights to the term "YSL", especially in relation to handbags. The Respondent is using the Complainant's trademarks and reputation to attract Internet users and cause confusion for commercial gain. The Respondent's website displays the YVES SAINT LAURENT logo and official images of the Saint Laurent Paris advertising campaign and sells replicas of the Complainant's products. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 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 confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the website associated with the disputed domain name is available only in English, that the website ships all over the world and that the Complainant is not in a position to conduct this proceeding in Chinese without a great deal of additional expense and delay due to the need for translation of the Complaint. The Respondent did not comment on the language request.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English. The website to which the disputed domain name resolves is entirely in English, which indicates that the Respondent is able to understand that language. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Analysis and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in registered trademarks consisting of the YSL monogram and YSL in a particular script (collectively, the "YSL trademarks").
The disputed domain name incorporates the letters in the Complainant's YSL trademarks in their entirety. For technical reasons, the disputed domain name cannot include the form of the monogram or the particular script, hence these graphic elements can be disregarded in the comparison with the Complainant's trademarks. See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031.
The disputed domain name includes certain additional elements not present in the Complainant's YSL trademarks. One is the English dictionary word "handbags" but dictionary words do not normally have the capacity to distinguish a domain name from a trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110. The disputed domain name includes a hyphen between "ysl" and "handbags" but that punctuation mark has no capacity to distinguish the disputed domain name from the Complainant's trademark either. Another additional element in the disputed domain name is the generic Top-Level Domain ("gTLD") suffix ".com" but a gTLD suffix generally has no capacity to distinguish a domain name from a trademark. (See 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). Consequently, the only distinctive element of the disputed domain name is the Complainant's YSL trademarks.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel has already found that the disputed domain name is confusingly similar to the Complainant's YSL trademarks. The Complainant informs the Panel that it has never authorized the Respondent to use its YSL trademarks in any capacity. As regards the first circumstance above, the disputed domain name is being used with a website that offers for sale replicas of the Complainant's products. This indicates that the Respondent's use of the disputed domain name is not in connection with a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Accordingly, the Panel does not find that the Respondent's use falls within the first circumstance of paragraph 4(c) of the Policy.
As regards the second circumstance, the Respondent's name is "Chen Fei", not "ysl-handbags", nor are his initials "YSL". There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
As regards the third circumstance, the disputed domain name resolves to a website that offers goods for commercial sale. That is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has prima facie discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The burden now shifts to the Respondent to show that he does have some rights or legitimate interests, but the Respondent did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
"(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] 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 [the Respondent's] web site or location or of a product or service on [the Respondent's] web site or location."
The Respondent registered the disputed domain name in 2014, many years after the Complainant obtained its trademark registrations, including in China where the Respondent is located. The disputed domain name incorporates the Complainant's YSL trademarks. The website with which the disputed domain name is used displays the Complainant's YVES SAINT LAURENT trademark in the same script as that in which it is registered and offers for sale replicas of the Complainant's handbags allegedly with the Complainant's original plastic packaging, serial numbers and serial cards. The form of the disputed domain name also imitates the Complainant's own domain name . This all indicates to the Panel that the Respondent was aware of the Complainant and either or both its YSL trademarks at the time that he registered the disputed domain name and deliberately chose to register them as part of the disputed domain name.
The Respondent uses the disputed domain name, which is confusingly similar to the Complainant's YSL trademarks, in connection with a website to offer for sale replicas of the Complainant's products. The Panel considers that this use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of the products on that website.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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.
Matthew Kennedy
Sole Panelist
Date: July 13, 2016
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