The Complainant is Etablissements Charles Chevignon of Epinay-Sur-Seine, France, represented by SafeBrands, France.
The Respondent is Li Xiang of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Beijing Innovative Linkage Technology Ltd. dba (the "Registrar"). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 23, 2016. On December 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 26, 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 December 27, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On January 2, 2017, 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 proceedings commenced on January 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 26, 2017.
The Center appointed Jonathan Agmon as the sole panelist in this matter on February 1, 2017. 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, Etablissements Charles Chevignon, is a French based company, part of Vivarte group, a French fashion retailer which owns 4,000 outlets throughout the world and manages some fourteen fashion and footwear brands.
Since 1979, the Complainant's Chevignon brand has become one of the leading names in the men's fashion industry. The Complainant is located in various countries around the world and in particular in China, with over 80 stores/points of sale.
The Complainant is the owner numerous trademark registrations for the mark CHEVIGNON. For example: French trademark registration no. 1695904, with the registration date of April 23, 1991; International trademark registration no. 556238, with the registration date of June 18, 1990, China designated; International trademark registration no. 617138, with the registration date of April 18, 1994; European Union trade mark registration CHEVIGNON no. 6442396, with the registration date of February 20, 2009, and more.
The Complainant is also the owner of numerous domain names composed of the trademark CHEVIGNON alone or combined with another element. For example: , , and more.
The disputed domain name was registered on March 5, 2016.
The disputed domain name previously resolved to a website selling the Complainant's products and the products of the Complainant's competitors. Currently, the disputed domain name is inactive. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name reproduces identically its trademark CHEVIGNON, in which it has rights.
The Complainant argues that the mere addition of the term "France" and the generic Top-Level Domain ("gTLD") ".com", does not serve as a distinguishing feature for the trademark purposes under the Policy.
The Complainant argues the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has no prior rights, as trademarks or corporate/trade name, on the Complainant's trademarks, and that the Respondent is not commonly known by the name "Chevignon" and a fortiori "Chevignon France".
The Complainant further argues that the Respondent's use of the disputed domain name, operating a website pretending to be the official Chinese website of the Complainant and providing advertising and products of the Complainant's competitors, redirecting Internet users to other Chinese online boutiques, cannot be considered as a bona fide offering of goods or services nor as a legitimate noncommercial or fair use of the disputed domain name.
The Complainant further argues that the disputed domain name was registered and used in bad faith.
The Complainant argues that it is unlikely that the Respondent could have ignored the existence of the Complainant's trademark rights in respect of the trademark CHEVIGNON at the time of registration of the disputed domain name.
The Complainant argues that the Respondent's previous use of the disputed domain name in connection with a website purporting to the Complainant's official website amounts to use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Complainant further argues that by preventing the Complainant to own and use the disputed domain name, the Respondent tarnishes the repute of the Complainant's trademark, when Internet users reach a non-active page for a domain name identical, or at least confusingly similar, to the Complainant's trademark.
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 6.1. Language of the Proceeding
Paragraph 11 of the Rules provides that:
"(a) 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, as confirmed by the Registrar in its verification email to the Center of December 26, 2016.
The Complainant requested that the language of the proceeding be English.
The Respondent did not respond to the Center's communication on the language of the proceeding.
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 the proceeding:
(i) The disputed domain name consists of Latin letters, rather than Chinese characters;
(ii) The Respondent having been notified of the proceeding in both Chinese and English failed to submit any comment on the language of the proceeding, or to provide any response to the Complaint;
(iii) The Complainant has no knowledge of Chinese, and in the present case, the use of a language other than English would impose a significant burden on the Complainant in view of the facts in question.
Upon considering the above, the Panel determines that English be the language of the proceeding. 6.2. Substantive Issues A. 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 numerous trademark registrations for the mark CHEVIGNON. For example: French trademark registration no. 1695904, with the registration date of April 23, 1991; International trademark registration no. 556238, with the registration date of June 18, 1990, China designated; International trademark registration no. 617138, with the registration date of April 18, 1994; European Union trade mark registration CHEVIGNON no. 6442396, with the registration date of February 20, 2009, and more.
The disputed domain name reproduces entirely the Complainant's CHEVIGNON trademark with the additional term "France" and the gTLD ".com".
The addition of the term "France" and the gTLD suffix ".com" does not have the capacity to distinguish the disputed domain name from the Complainant's CHEVIGNON registered trademark, noting that the gTLD is typically disregarded for the purposes of comparison under the first element. See Volkswagen AG v. Todd Garber,WIPO Case No. D2015-2175; 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.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the CHEVIGNON trademark in which the Complainant has rights. B. 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 of production shifts to the Respondent to show that it has rights or legitimate interests in respect to 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 trademarks or a variation thereof. Moreover, the evidence presented by the Complainant indicates that the Respondent is not engaged in a bona fide offering of goods or services, but has used the disputed domain name in connection with a website that misleads consumers into thinking that the Respondent is the Complainant, and is now passively holding the disputed domain name.
The Respondent has not submitted any substantive Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name 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. C. 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, the Complainant has owned a registration for the CHEVIGNON trademark since at least the year 1990. 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 trademark. Previous UDRP panels have found 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" (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 Policy. In this case, based on the Complainant's evidence, there are appropriate circumstances, including the fact that the Respondent operated a website under the disputed domain name pretending to be a Chinese site of the Complainant, offering for sale the Complainant's products together with competing products of other brands, as well as links to other brands websites, to be indications of the Respondent's bad faith registration and use of the disputed domain name.
Also, the disputed domain name is currently inactive which can, in appropriate circumstances, indicate the Respondent's bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Having regard to the evidence, the Panel finds that the disputed domain name was registered and is being used by the Respondent with knowledge of the Complainant and in bad faith with the intent to create an impression of an association with the Complainant and profit therefrom. The Respondent's actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that "the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith".
Based on the evidence that was presented to the Panel, including the Complainant's registered trademark, the use of the Complainant's trademark in the disputed domain name, the use of the disputed domain name and the Respondent's failure to answer the Complaint, the Panel finds that the disputed domain name was 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: February 14, 2017
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