The Complainant is Orlane S.A. of Paris, France, represented by ipSO société selàrl, France.
The Respondent is YongGuo Mei, Mei Yong Guo of Suzhou, Jiangsu, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the "Registrar"). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 29, 2016. On August 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 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 September 2, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On September 2, 2016, the Complainant requested 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 of the Complaint, and the proceedings commenced on September 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 7, 2016.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on October 18, 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 in the business of making and marketing cosmetics, perfumes and skin care products in France. It has conducted its business since October 1945 originally under the name ORLANE JEAN D'ALBRET and has continued since then.
The Complainant is the registered owner of the trade mark ORLANE in many jurisdictions including China (see Chinese registration number 163354, registered on October 15, 1982) and these registrations were filed prior to the registration of the disputed domain name.
The Complainant is also the registered owner of various domain names containing the trade mark ORLANE such as , , , and others. The Complainant's goods are available for purchase online for delivery throughout the world from these websites.
The disputed domain name was registered by the Respondent on June 14, 2016. The disputed domain name does not resolve to an active website. 5. Parties' Contentions A. Complainant
First, the Complainant asserts that the disputed domain name is identical or confusingly similar to its marks. The reasons are summarized as follows:
1. The Complainant is the registered trade mark owner of the ORLANE Mark in many countries, including China.
2. Over a period of 60 years and more, the Complainant's ORLANE Mark has become a well-known trade mark in the world in association with skincare products. In fact, the well-known status of the trade mark has been recognized in China in a decision on the opposition against the trade mark application for D'ORLAN.
3. The disputed domain name reproduces the exact well-known trade mark ORLANE which is incorporated in the disputed domain name.
4. The addition of the generic Top-Level Domain ("gTLD") ".store" is not sufficient to distinguish the signs and to avoid any likelihood of confusion in the public mind.
Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The grounds are summarized as follows:
1. The Respondent is not known under the "Orlane" name and the combination of the characteristics elements does not follow any logic or necessity to offer an online service.
2. It appears that there is no demonstrable use of the disputed domain name which is linked to an inaccessible website.
Third, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The grounds are summarized as follows:
1. The Respondent has prior knowledge of the well-known status of the Complainant's ORLANE mark but went ahead to register the disputed domain reproducing the Complainant's trade mark in its entirety.
2. The disputed domain name is currently linked to an inaccessible website and there is no evidence that the Respondent has rights or legitimate interests in respect of the disputed domain name.
3. The fact that there is no intent to use the disputed domain name is prima facie evidence of bad faith on the part of the Respondent. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the case file, the Registration Agreement is in Chinese. No agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. The Complainant has submitted a request in the Complaint that English should be the language of the present proceeding for the following reasons:
1. To the best of the Complainant's knowledge, the language of the Registration Agreement is English.
2. The website of the Registrar is written in English.
3. The Respondent is a Chinese domiciled in China whilst the Complainant is a company incorporated under French laws. English is thus a compromise language between Chinese and French.
The Respondent did not respond or comment on the Complainant's submission.
After considering the circumstances of the present case and the submission of the Complainant, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its determination on the following reasons: (i) The Panel's discretion under the Policy
Paragraph 11 of the Rules provides:
"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."
Thus, Parties may agree on the language of the administrative proceeding. In the absence of an 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 ability to articulate the arguments for the case. (ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both Parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; and (b) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has failed to respond to the Complaint. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel determines that the language of the proceeding shall be English and the decision will be rendered in English. 6.2 Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the submissions and evidence introduced by the Parties and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has adduced evidence to demonstrate that it has registered trade mark rights and continues to have such rights in the ORLANE mark.
In assessing the degree of similarity between the Complainant's trade mark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant's trade mark and the disputed domain name is to be assessed by an objective comparison of the disputed domain name and the Complainant's trade mark.
The disputed domain name consists of the Complainant's trade mark ORLANE in its entirety and the gTLD ".store". The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the element "orlane" which for all intents and purposes is identical to the Complainant's registered trade mark ORLANE and which is highly distinctive. The addition of ".store" being the gTLD is furthermore not a distinguishing factor. The Panel accepts the Complainant's submission that the generic extension of ".store" will be perceived by Internet users as descriptive of the fact that the services provided are retail services and such services are offered by the Complainant since it is linked with the highly recognized ORLANE mark.
The Panel therefore finds that the disputed domain name is identical to the ORLANE mark in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
1. the Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term "orlane" in registering the disputed domain name;
2. there is no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trade mark or to apply for or use any domain name incorporating the ORLANE mark;
3. there is no indication whatsoever that the Respondent is commonly known by the disputed domain name. Furthermore, there is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Here, the disputed domain name is linked to an inaccessible website which further buttressed the conclusion that this shows that there is no bona fide offering of goods or services by the Respondent;
4. the Complainant and its ORLANE mark enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in the skin care and cosmetic sector and is a registered trade mark in relation to skin care and cosmetics goods in many countries all over the world, including China. Consequently, in the Panel's view, in the absence of contrary evidence from the Respondent, the ORLANE mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant's contentions. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1. Based on the above reasons, the Panel finds that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue."
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second part of the test. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service of the respondent's website or location.
The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of a domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel's assessment of whether the Respondent has registered and is using the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant's rights in the trade mark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcend national borders. Taking into account the international reputation of the Complainant and its ORLANE mark, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant's trade mark rights at the time of the registration of the disputed domain name. Furthermore, the Complainant has established substantial Internet presence via its official website and its many other websites and Internet addresses. A simple search on the Internet would reveal the presence of the Complainant's trade mark and domain names. Therefore, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant's trade mark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of association with the Complainant and its products. However, the Respondent has not provided a plausible explanation of his choice in the disputed domain name.
Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant's trade mark and where the trade mark in question has through substantial use acquired international fame, reputation and notoriety, a reasonable conclusion is that the trade mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. There is no evidence that the Respondent has used or intends to use to the disputed domain name for purposes of a bona fide offering of goods and services over the Internet. As mentioned above, the disputed domain name is linked to an inaccessible website. In this regard, the Panel finds that the Respondent has not provided any plausible explanations.
The Panel finds that given the widespread fame of the Complainant's ORLANE mark and a lack of plausible explanation for the choice of incorporating the Complainant's trade mark in the disputed domain name, the lack of any rights or legitimate interests on the part of the Respondent in the disputed domain name, the fact that the disputed domain name resolves to an inaccessible website indicating a passive holding of the disputed domain name, having been registered without any evidence of plans for use in connection with bona fide offering of goods or services, are factors indicating bad faith registration and use.
In light of the above-mentioned circumstances, the Panel finds for the Complainant on the third part of the test. 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.
Susanna H.S. Leong
Sole Panelist
Date: November 8, 2016
Full & Egal Universal Law Academy