The Complainant is Céline of Paris, France, represented by Studio Barbero, Italy.
The Respondents are Peujun Chen of Alaska, United States of America (“United States”) and Jason Zhao of Shanghai, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2017. On January 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 18, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details.
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 Respondents of the Complaint, and the proceedings commenced on January 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2017.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on February 17, 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. 3.A. Preliminary Matter: Consolidation of Respondents
The Complainant has requested that the disputed domain names and the named Respondents shall be consolidated in a single UDRP proceeding since the disputed domain names are under the control of a single individual or entity, or at least, reflective of a group of individuals acting in concert. The disputed domain names are registered with the same authoritative email address. Historical WhoIs records indicate that identical postal addresses have been used. Furthermore, both disputed domain names were directed to very similar websites, featuring the Complainant’s trademarks and offering for sale, prima facie counterfeit Céline products.
The consensus view of UDRP panels on the consolidation of multiple domain names and respondents is summarized in paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), whereby: “WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.”
The Panel concludes that sufficient evidence has been presented in this case to enable the conclusion to be drawn that common control is being exercised over the disputed domain names. Given the above, the Panel determines under paragraph 10(e) of the Rules that consolidation of the Respondents is procedurally efficient and equitable to the Parties, is consistent with the Policy and Rules and in conformity with prior relevant UDRP decisions in respect of this issue. 4. Factual Background
The Complainant has provided evidence that it is the owner of a number of trademark registrations for CELINE and CÉLINE in numerous jurisdictions, including the following:
International trademark registration No. 280101 for CELINE (word mark), registered on February 22, 1964 and duly renewed thereafter, in classes from 1 to 34. The aforesaid International trademark designates also China, where the protection has been granted for goods in class 14.
European Union Trade Mark registration No. 003977063 for CELINE (word mark), filed August 9, 2004, registered on May 12, 2006 and duly renewed thereafter, in classes 3, 9, 14, 18 and 25.
European Union Trade Mark registration No. 012086674 for CÉLINE, filed on August 23, 2013, and registered on January 23, 2014, in classes 3, 24 and 35.
United States trademark registration No. 1000156 for CÉLINE, filed September 07, 1972, registered on December 24, 1974 and duly renewed thereafter, in International class 18.
United States trademark registration No. 0982010 for CELINE (word mark), filed on September 7, 1972, registered on April 9, 1974 and duly renewed thereafter, in International class 10, 25, 26.
French trademark registration No. 1460941 for CELINE (word mark), registered on April 19, 1988 and duly renewed thereafter, in classes from 1 to 42.
Chinese trademark registration No. 3033745 for CELINE (word mark), filed on December 7, 2001 and registered on February 7, 2003, in class 18.
Chinese Trademark Registration No. 16870948 for CÉLINE, filed on May 5, 2015 and registered on June 28, 2016, in class 18.
Chinese Trademark Registration No. 16870947 for CÉLINE, filed on May 5, 2015 and registered on June 28, 2016, in class 25.
The disputed domain name was registered on October 29, 2012 and the disputed domain name was registered on October 14, 2015. The disputed domain names previously resolved to websites with a similar look and feel to those of the Complainant and offered for sale what appear to be counterfeit versions of the Complainant’s products. 5. Parties’ Contentions A. Complainant
The Complainant is active in the field of creation, production and marketing of ready-to-wear articles and luxury leather products that are famous throughout the world. The Céline fashion house was founded in Paris in 1945 by the designer Céline Vipiana. The Complainant explains that the story of the brand began in Rue de Malte, when Mr. Vipiana offered Céline, his young fiancée, a brand-new store named “CELINE, Le Bottier pour Enfants” (“CELINE, the Bottier for Children”) to revive the family business of tailor-made shoes for children. Immediately the company developed a reputation for creating an exceptional product combining both with flair and comfort.
As of the beginning of 1960s, the Complainant started offering a complete range of women’s shoes. Between 1963 and 1965, the Complainant began manufacturing accessories, including scarves, gloves, belts, jewels, hats, small leather goods, and introduced its first perfume “Vent fou”. In 1966, the first Céline bags were launched. In 1967, the Complainant created its first ready-to-wear collection, named “Couture Sportswear”. In the same year, it opened a luxury boutique in Paris, in the quarter of Saint-Germain-des-Prés. From 1975 to 1978, the Complainant opened its first seven boutiques outside France – in Monte-Carlo, Geneva, Hong Kong and Rome, soon followed by those in Lausanne, Toronto and Beverly Hills. At the same time, sales were flourishing in the Republic of Korea and Europe and the brand was developing in the United States.
In 1996, the Complainant became part of the LVMH luxury brands portfolio. The American fashion designer Michael Kors was named the first ever women’s ready-to-wear designer and creative director for the Complainant in 1997. During his tenure at Céline, Michael Kors brought modern femininity with a luxurious spirit. Since 2008, the artistic management of Céline has been entrusted to Phoebe Philo, who has radically changed the spirit of the house, redefining its style around a minimalism both chic and modern.
The Complainant employs over 1,800 people around the world and the Céline-branded products are commercialized through 140 stores worldwide, including the United States and China. The Complainant’s sales in China amounted to EUR 39.9 million in 2015 and EUR 42.8 million in the first eleven months of 2016. With reference to the United States market, the Complainant’s sales generated revenues for EUR 69.4 million in 2015 and EUR 68.7 million in the first eleven months of 2016. The Complainant has invested a substantial amount of time and resources to promote and advertise the trademark CELINE and the associated products through media. In light of the Complainant’s significant investments in marketing, sales and distribution channels, as well as the existence of a truly impressive client base for these products, CELINE is a famous and well-known trademark worldwide.
The Complainant is the holder of more than 100 domain names identical to or comprising the CELINE trademark.
At least until December 15, 2016, both disputed domain names were redirected to websites where the Complainant’s trademarks as well as images taken from the Complainant’s advertising campaigns were misappropriated and the sale of purported Céline products was promoted. Since the prices of the alleged Céline products offered for sale via the disputed domain names were unusually low, the Complainant made a test purchase of a bag from the Respondent’s website connected to “www.”. The Complainant was able to verify that the product received was a counterfeit product.
After the Complainant had sent a cease and desist letters to the holder of the disputed domain name , the Complainant noticed that the domain name became registered using the same email address as . The Complainant sent another cease and desist letter on November 4, 2016 and another reminder on December 15, 2016. While drafting the Complaint, the Complainant noticed that the website at the disputed domain name was deactivated.
The disputed domain name is identical to the trademark CELINE, as it reproduces the trademark in its entirety with the mere addition of the generic Top-Level Domains (“gTLD”) “.online”, which is typically ignored when assessing identity or confusing similarity between a trademark and a domain name. The disputed domain name is also substantially identical to the Complainant’s trademark CÉLINE, since the only difference between the disputed domain name and the trademark, besides the gTLD which can be omitted for the purpose of this comparison, is the accent present in the Complainant’s trademark and not reproduced in the disputed domain name.
The disputed domain name incorporates the whole of the Complainant’s trademark CELINE, with the addition of a hyphen and of the non-distinctive elements “online”, which does not affect the confusing similarity. The Complainant asserts that domain names that wholly incorporate trademarks, in particular ones as famous as CELINE, are found to be confusingly similar for the purposes of the Policy, despite the fact that they may also contain descriptive or generic terms. In addition, the Complainant submits that the disputed domain name is also confusingly similar to the Complainant’s trademark CÉLINE. Furthermore, in the present case, the generic term “online” included in the disputed domain name is apt to increase the likelihood of confusion and to induce Internet users to believe that there is an association or affiliation with the Complainant and its products. The addition suggests a reference to online services offered by the Complainant.
The Respondents are not licensees, authorized agents of the Complainant or in any other way authorized to use the Complainant’s trademarks. Specifically, the Respondents are not authorized resellers of the Complainant and have not been authorized to register and use the disputed domain names. The Respondents are not commonly known by the disputed domain names as individuals, business or other organization and their family names do not correspond to “Celine”, “Céline” or to the disputed domain names. The Respondents have not provided the Complainant with any evidence of the use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services before any notice of the dispute.
The disputed domain names were directed by the Respondents to websites displaying the Complainant’s trademarks and images and offering for sale prima facie counterfeit Céline products. Moreover, no disclaimer has been published on the websites at the disputed domain names as to the Respondents’ lack of relationship with the Complainant.
The unauthorized publication of the Complainant’s trademarks and images is apt to induce Internet users to believe that the websites to which the disputed domain names resolve are owned or controlled by the Complainant or its affiliated companies. In addition, the Respondents have been offering for sale prima facie counterfeit Céline products on the websites corresponding to the disputed domain names, thus engaging in an illegitimate activity that is undoubtedly commercial and not bona fide in nature.
As to the assessment of the Respondents’ bad faith at the time of registration, in light of the extensive use of the trademark CELINE since as early as the end of 1940s and the amount of advertising and sales of the Complainant’s products worldwide, including in China and the United States, where the Respondents are located according to the Whois records, the Respondents could not have possibly ignored the existence of the Complainant’s trademarks when they registered the disputed domain names and .
The use of the disputed domain names in connection with commercial websites where the Complainant’s trademarks are misappropriated and prima facie counterfeit Céline branded products are offered for sale clearly indicates that the Respondents’ purpose in registering the disputed domain names was to capitalize on the reputation of the Complainant’s trademarks by diverting Internet users seeking Céline branded products to their own websites for financial gain, by intentionally creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its websites and/or the goods offered or promoted through said websites, according to paragraph 4(b)(iv) of the Policy.
As a further circumstance evidencing the Respondents’ bad faith, they did not deem it appropriate to reply to the Complainant’s cease and desist letters. Prior UDRP panels have held that a failure to respond to a cease and desist letter can be evidence of bad faith.
The Complainant also asserts that the use of what appears to be a false address in the WhoIs suggests that the Respondents may have indicated inaccurate contact details on purpose to avoid being identified and to evade enforcement of the Complainant’s intellectual property rights against them. In a number of prior UDRP cases, the use of incomplete and/or inaccurate contact information by a registrant has been found to be an indication of bad faith. B. Respondent
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondents have no rights or legitimate interests in the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademarks CÉLINE and CELINE. The disputed domain name incorporates the Complainant’s trademark CELINE in its entirety with the addition of a hyphen and the descriptive term “online”. The mere addition of the descriptive term to the CELINE trademark does not eliminate the confusing similarity between the Complainant’s trademark and the disputed domain name.
The disputed domain name comprises the Complainant’s trademark CELINE in its entirety with the addition of the gTLD suffix “.online”. It is standard practice to disregard the gTLD under the confusingly similar test, except in cases where the applicable gTLD may itself form part of the relevant trademark. See WIPO Overview 2.0, paragraph 1.2.
Having the above in mind, the Panel finds that the disputed domain names are identical or confusingly similar to the Complainant’s trademark and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondents have no rights or legitimate interests with respect to the disputed domain names. The Respondents may establish a right or legitimate interest in the disputed domain names by demonstrating any of the following non-exhaustive circumstances listed in paragraph 4(c) of the Policy:
(a) that they have made preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services prior to any notice of the dispute; or
(b) that they are commonly known by the disputed domain names, even if they have not acquired any trademark rights; or
(c) that they are making a legitimate, noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant’s trademark registrations for CÉLINE and CELINE predate the Respondents’ registrations of the disputed domain names and which are confusingly similar to the Complainant’s trademarks. The Complainant has not licensed or otherwise consented to the Respondents’ use of the trademarks in connection with the disputed domain names. From the evidence in the case record, it is clear that the disputed domain names resolved to commercial websites that contained direct references to the Complainant’s trademarks and products.
Furthermore, the evidence in the case record indicates that the Respondents have copied and reproduced the Complainant’s images as well as the Complainant’s advertising material. The disputed domain names have been used by the Respondents to sell the same type of products for which the Complainant has registered its trademarks. The Complainant made a test purchase and came to the conclusion that the products offered for sale via the disputed domain names are counterfeit. Thus, the Respondents are not making a legitimate, noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks.
Although given the opportunity, the Respondents have not submitted any evidence in this case to demonstrate that the Respondents are the owners of any trademark rights similar to the disputed domain names or that the Respondents are or have been commonly known by the disputed domain names.
By not submitting a response, the Respondents have failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain names. Thus, there is no evidence in the case record that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the disputed domain names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain names; or
(ii) the disputed domain names were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or
(iii) the disputed domain names were registered primarily for the purpose of disrupting the business of a competitor; or
(iv) the disputed domain names have intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.
The Complainant has submitted evidence demonstrating that the Respondents have been offering products for sale via the websites to which the disputed domain names and resolve. As mentioned above, the Complainant states that it made a test purchase and came to the conclusion that the products offered for sale via the websites at the disputed domain names are counterfeit. Furthermore, the evidence in the case record demonstrates that the Respondents not only reproduced the Complainant’s trademarks on the websites but also images and other advertising material belonging to the Complainant.
Considering that the Respondents reproduced the Complainant’s trademarks and advertising material without permission and that the disputed domain names have been used to market and sell the same type of products for which the trademarks are registered, the Panel finds, in the absence of contrary evidence, that the Respondents knew or should have known of the Complainant’s trademarks when they registered the disputed domain names.
Thus, the evidence in the case record before the Panel indicates that the disputed domain names have intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondents’ websites by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the websites or of a product or service on the websites.
There is no evidence in the case that refutes the Complainant’s submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy and that the disputed domain names and have been registered and 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 and be transferred to the Complainant.
Johan Sjöbeck
Sole Panelist
Date: February 27, 2017
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