The Complainant is Yves Saint Laurent of Paris, France, represented by Brandstorming, France.
The Respondent is Xian Wen（文现）of Hefei, Anhui, China. 2. The Domain Name and Registrar
The disputed domain name was at the time of the filing of the Complaint registered with Chengdu Fly-Digital Technology Co., Ltd. (the “First Registrar”). The disputed domain name is currently registered with Safenames Ltd (the “Second 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 27, 2016, the Center transmitted by email to the First Registrar a request for registrar verification in connection with the disputed domain name. On December 28, 2016, the First 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 28, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On December 29, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by 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”).
On January 4, 2017, in accordance with paragraphs 2(a) and 4(c) of the UDRP Rules, the Center conducted a WhoIs search to verify certain aspects of the registration of the disputed domain name and found that, contrary to the information provided to the Center by the First Registrar in its registrar verification dated December 28, 2016, the disputed domain name was held in the name of a privacy service.
Accordingly, on January 4, 2017, the Center emailed the First Registrar inviting it to confirm the registrant details for the disputed domain name, and to confirm whether the disputed domain name remained under lock.
On January 4, 2017, the First Registrar sent an email response to the Center confirming that the underlying registrant of the disputed domain name remains the above-named Respondent, and confirming that the disputed domain name would remain under lock for the duration of the proceeding.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in Chinese and English of the Complaint, and the proceeding commenced on January 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2017.
On January 13, 2017, the First Registrar informed the Parties and the Center that the disputed domain name had been transferred to a holding account at the Second Registrar due to a court order in an ongoing court proceeding filed in the United States District Court, Southern District of Florida (the “Court Proceeding”).
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on February 2, 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.
At the time of this Decision, the disputed domain name is registered with the Second Registrar. 4. Factual Background A. Complainant
The Complainant is a simplified joint stock company incorporated in France and founded in 1961, and is one of the world’s most prominent fashion houses.
The Complainant is the owner of numerous registrations in jurisdictions around the world for the trade mark YSL (the “Trade Mark”), including several registrations in China (e.g., Chinese registration number 665588, YSL (figurative), registered on November 21, 1993).
The Complainant has since 1961 used the Trade Mark continuously worldwide in relation to its well-known global fashion business. B. Respondent
The Respondent is apparently an individual located in China. C. The Disputed Domain Name
The disputed domain name was registered on March 19, 2014. D. The Website at the Disputed Domain Name
Prior to the filing of the Complaint, the disputed domain name was resolved to an English language website (the “Website”) which advertised and offered for sale handbags under the Trade Mark and also under trade marks of the Complainant’s third party competitors, including under the trade mark HERMÉS owned by Hermès International and Hermès of Paris, Inc. (“Hermès”)
As at the date of this Decision, the disputed domain name is resolved to a parking website hosted by the Second Registrar. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the Parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. However, paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding be English, on several grounds, including:
1. The disputed domain name comprises the Trade Mark (in Roman letters) and the English language word “kings”, and it does not have any meaning in Chinese, which indicates that the Respondent understands English;
2. Translating the Complaint would involve additional expense and delay; and
3. The Website is an English language website.
The Respondent, having received the Center’s communication regarding the language of the proceeding in both Chinese and English, did not make any submissions regarding the language of the proceeding. Having received notice of the proceeding in both Chinese and English, the Respondent chose not to file a response.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel considers that the content of the English language Website provides sufficient evidence to suggest the likely possibility that the Respondent is conversant in English. The Panel further considers that, in light of the Respondent’s decision to take no part in this proceeding, it would be inappropriate to conduct the proceeding in Chinese, which would necessarily involve extra costs on the part of the Complainant in translating the Complaint into Chinese, and would delay the resolution of this proceeding.
In all the circumstances, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2 Court Proceeding
On January 13, 2017, the Center received notification from the First Registrar that the disputed domain name had been transferred pursuant to a court order, obtained in the Court Proceeding. The First Registrar provided the court docket number for the Court Proceeding and a copy of the “Order Granting Ex Parte Temporary Restraining Order” (the “Court Order”), dated January 3, 2017 obtained by Hermès in the Court Proceeding
Paragraph 4(k) of the UDRP provides as follows:
“Availability of Court Proceeding. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel’s decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details.) If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel’s decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name.”
Paragraph 4(k) of the Policy contemplates situations where court proceedings are commenced either before a UDRP proceeding is commenced, or after it has been concluded. It does not expressly contemplate a situation where a legal proceeding may have been commenced during the pendency of UDRP proceeding.
Paragraph 18 of the Rules provides as follows: “Effect of Court Proceeding
(a) In the event of any legal proceeding initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.
(b) In the event that a Party initiates any legal proceeding during the Pendency of an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, it shall promptly notify the Panel and the Provider. See Paragraph 8 above.”
Paragraph 4.14 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states as follows:
“As paragraph 4(k) of the UDRP indicates, the UDRP does not bar either the complainant or the respondent from seeking judicial remedies. Paragraph 18(a) of the Rules gives the panel discretion to suspend, terminate or continue a UDRP proceeding where the disputed domain name is the subject of other pending legal proceedings. A panel may determine (as happens in rare instances) that a UDRP dispute cannot be evaluated separately from such ongoing court proceeding, and may terminate or suspend the UDRP case on that basis, normally (in the case of termination) without prejudice to the filing of a future UDRP complaint pending resolution or discontinuation of such court proceeding. As to any previous court proceedings, it is in the UDRP panel’s discretion to determine what weight to ascribe thereto, in light of all circumstances…
Courts are not bound by UDRP panel determinations; where a domain name subject to a UDRP panel decision becomes subject to a court proceeding (for example, because a respondent elects to take the matter to court under paragraph 4(k) of the UDRP); such court case is generally acknowledged to represent a De novo hearing of the case under national law.”
Neither of the Parties has notified the Panel and the Center that it has commenced any separate legal proceeding regarding the disputed domain name during the pendency of this proceeding.
The Panel observes from the Court Order that the plaintiffs in the Court Proceeding are Hermès and that they have brought a trade mark infringement action against a number of named Defendants identified in a list of domain names attached to the Court Order in a schedule (the “Schedule”). The disputed domain in the present UDRP proceeding appears as a “Defendant” in the Schedule.
On the basis of Hermès’ declarations, the Court found that “Plaintiffs have a strong probability of proving at trial that consumers are likely to be confused by Defendants’ advertisement, promotion, sale, offer for sale, and/or distribution of goods using counterfeits, reproductions, and/or colorable imitations of the Hermès Marks” and granted the Court Order which directed, inter alia, that:
“The registrars for the Subject Domain Names shall immediately assist in changing the registrar of record for the Subject Domain Names to a holding account with a registrar of Plaintiffs’ choosing (the ‘New Registrar’), excepting any such domain names which such registrars have been notified in writing by Plaintiffs have been or will be dismissed from this action, or as to which Plaintiffs have withdrawn their request to immediately transfer such domain names …. Upon the change of the registrar of record for the Subject Domain Names, the New Registrar will maintain access to the Subject Domain Names in trust for the Court during the pendency of this action …. As a matter of law, this Order shall no longer apply to any Defendant or associated domain name dismissed from this action or as to which Plaintiffs have withdrawn their request for a temporary restraining order …. This Temporary Restraining Order shall remain in effect until the date of the hearing on Plaintiffs’ Motion for Preliminary Injunction set forth below, or until such further dates as set by the Court or stipulated to by the parties….”
The Panel has not been informed of any further procedural actions in relation to the Court Order, nor has it received from the Registrars or Parties in this UDRP proceeding any further details about the ongoing Court Proceeding other than what is apparent from the face of the Court Order.
The Panel considers that the limited information before it does not in itself provide any reason why this UDRP dispute cannot be evaluated separately from the ongoing Court Proceeding, and whose effects in any event appear at this time to be conditional in nature and subject in large part to the discretion of third-party plaintiffs (whose rights have no bearing on the Panel’s assessment under the Policy of the Complaint filed by the party whose Trade Mark is actually incorporated in the disputed domain name). Accordingly, in all the circumstances, the Panel does not therefore consider that the present UDRP dispute should be suspended or terminated.
The Panel would also note that, whilst the determination of the plaintiffs’ claims in the Court Proceeding are of course a matter for the United States District Court, Southern District of Florida, it would appear from the evidence filed with the Complaint in this proceeding (namely, screenshots of the Website) and from the contents of the Court Order that, whilst Hermès might have a trade mark infringement cause of action against the Respondent in this proceeding in respect of the unauthorised use of the HERMÉS trade mark on the Website to which the disputed domain name was previously linked, it would seem that Hermès might not have a trade mark infringement cause of action entitling Hermès to assert proprietary rights in respect of the disputed domain name itself (comprising not the HERMÉS trade mark, but the Complainant’s YSL trade mark together with the non-distinctive word “kings”).
The Panel will therefore proceed to a Decision.
The Panel notes, however, that this Decision is without prejudice to any action the relevant court may deem appropriate or necessary in furtherance of the Court Order, which the Panel assume would in any event entail discussion between the filing parties in the two respective cases. 6.3 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name comprises the textual elements of the Trade Mark in its entirety, together with the non-distinctive word “kings”, which does not serve to distinguish the disputed domain name from the Trade Mark in any significant way.
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(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 trade mark 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 trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that he or she has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the Website, which features prominently the various word and logo trade marks of the Complainant (including the Trade Mark); advertises, offers for sale and sells not only replicas of the Complainant’s handbags, but also apparently replicas of handbags of the Complainant’s competitors; and contains, at the bottom of the Website, the disclaimer “Copyright © 2016 Yves Saint Laurent Official” in order to attempt to legitimise the infringing content of the Website, or otherwise to misrepresent or pass off the Website as an official, authorised website of the Complainant, contrary to the fact.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and therefore finds that the requirements of paragraph 4(a)(ii) are met. C. Registered and Used in Bad Faith
In light of the evidence of the Respondent’s use of the Website in the manner described above, the Panel finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been 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.
Sebastian M.W. Hughes
Sole Panelist
Dated: February 16, 2017
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