The Complainant is Van Cleef & Arpels, S.A. of Fribourg, Switzerland, represented by Richemont International Ltd, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Nexperian Holding Limited of Hangzhou, Zhejiang, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2017, the Registrar transmitted by email to the Center its response disclosing registrant and contact information for the disputed domain name which differed from the Respondent and contact information in the Complaint. On March 13, 2017, the Center transmitted to the Complainant by email the registrant and contact information disclosed by the Registrar and invited the Complainant to amend the Complaint. The Complainant did not respond to this invitation and did not amend the Complaint. From this point on, the Center sent all communications not only to the named Respondent but also to the person disclosed by the Registrar as the registrant of the disputed domain name.
On March 13, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 15, 2017, the Complainant confirmed its request that English be the language of the proceeding. Neither the Respondent nor the person disclosed by the Registrar as the registrant of the disputed domain name commented 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 March 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2017. Neither the Respondent nor the person disclosed by the Registrar as the registrant of the disputed domain name submitted any response. Accordingly, the Center notified the Respondent’s default on April 21, 2017.
The Center appointed Matthew Kennedy as the sole panelist in this matter on May 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. 4. Factual Background
The Complainant sells luxury watches, jewelry and perfumes around the world through a network of boutiques and authorized retailers. The Complainant owns multiple trademark registrations in multiple jurisdictions, including European Union trademark registration number 006709241 for VCA, registered from February 5, 2009, and Chinese trademark registration number 3660895 for VCA and device, registered from August 28, 2005. Both registrations specify watches and jewelry and remain in effect.
The Respondent is a privacy registration service located in Hangzhou, Zhejiang, China. The person subsequently disclosed by the Registrar as the registrant of the disputed domain name is an individual named “Wu Fan” located in Beijing, China.
The disputed domain name was registered on January 14, 2016. At the time of filing the Complaint, the disputed domain name resolved to a website for “VCA alhambra” that offered for sale what was alleged to be replica Van Cleef & Arpels jewelry. The website repeatedly displayed the words “Van Cleef and Arpels”. Some of the items for sale were described as “fake” and “knockoff”. Prices were displayed in US dollars. The website was in English but had buttons for other languages. At the time of this decision, the disputed domain name no longer resolves to any active website. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s VCA trademark. The disputed domain name fully incorporates the term VCA and merely adds the generic term “jewelry” and the generic Top-Level Domain (“gTLD”) suffix “.com”, which do not render the disputed domain name less confusing.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has never been commonly known by any of the VCA trademarks or any variations thereof. The Respondent has never operated any bona fide or legitimate business under the disputed domain name. The Respondent is using the disputed domain name to publish a website offering goods and services that compete directly with the Complainant’s, and the goods may be counterfeit. The Complainant has not granted the Respondent any license, permission or authorization by which it could own or use any domain name registrations that are confusingly similar to any of the Complainant’s VCA trademarks.
The disputed domain name was registered and is being used in bad faith. The Respondent had actual or constructive knowledge of the Complainant’s prior registrations of the VCA trademarks. The Respondent had no reason to register the disputed domain name other than to trade off the reputation and goodwill of the Complainant’s VCA trademarks. The Respondent’s website offers for sale products that compete with those of the Complainant and which appear to be counterfeit copies of the Complainant’s products. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Identification of the Respondent
Paragraph 3(b)(v) of the Rules provides that the Complaint shall provide “the name of the Respondent (domain-name holder)”. In the present case, the Complaint provides the name of Nexperian Holding Limited, which was the entity recorded in the Registrar’s WhoIs database as the disputed domain name holder at a time shortly before the Complaint was filed on March 3, 2017, as evidenced by the search result provided in Annex 1 to the Complaint. However, in response to a request from the Center, the Registrar disclosed on March 7, 2017 that the registrant of the disputed domain name was Wu Fan, and that this person had registered (or acquired the registration of) the disputed domain name on January 14, 2016. The Panel understands that the entity named as the Respondent in the Complaint is a privacy protection service and that the person disclosed by the Registrar is the underlying registrant.
The Panel is satisfied that the Complaint against Nexperian Holding Limited is a valid complaint because it was the entity identified in the publicly available Registrar’s WhoIs database at the time that the Complaint was submitted to the Center. The Panel finds support for this view in paragraph 1 of the Rules which defines “mutual jurisdiction” in terms of a court jurisdiction at the location of the domain-name holder’s address “as shown for the registration of the domain name in Registrar’s Whois database at the time the complaint is submitted to the Provider.”
Therefore, the Panel finds that it was not necessary for the Complainant to amend its Complaint to satisfy the formal requirements of the Policy and the Rules. See Mrs. Eva Padberg v. Eurobox Ltd.,WIPO Case No. D2007-1886; Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320.
Nevertheless, the Center has notified the Complaint and sent all communications both to the entity named as the Respondent in the Complaint and to the underlying registrant of the disputed domain name as disclosed by the Registrar. The Panel finds that this satisfies the requirement in paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice. 6.2 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 a large section of the website to which the disputed domain name resolved was in English, which indicates that the Respondent is familiar with that language, and that the Complainant would be disadvantaged by having to translate all proceeding materials. Neither the Respondent nor the underlying registrant of the disputed domain name commented 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 Panel also observes that the website to which the disputed domain name resolved was in English, from which it is reasonable to deduce that the Respondent understands that language. Moreover, neither the Respondent nor the underlying registrant of the disputed domain name has expressed any wish to respond to the Complaint or otherwise participate in this proceeding. 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. 6.3 Substantive Issues
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 the VCA trademark.
The disputed domain name wholly incorporates the Complainant’s VCA trademark as its initial and only distinctive element.
The disputed domain name also includes the dictionary word “jewelry”. A dictionary word is generally insufficient to dispel the confusing similarity of a disputed domain name to a trademark for the purposes of the first element of the Policy. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110. If anything, the addition of the word “jewelry” increases the confusing similarity in this case because it describes the goods in connection with which the Complainant uses its VCA trademark.
The disputed domain name also includes the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix is generally disregarded for the purposes of assessing confusing similarity under the Policy. 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.
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 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 VCA trademark. The website to which the disputed domain name formerly resolved offered for sale what was alleged to be replicas of the Complainant’s goods. The Complainant submits that the replicas compete directly with its own goods. That is not a use of the disputed domain name in connection with a bona fide offering of goods or services within the terms of the first circumstance of paragraph 4(c) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
The name of the Respondent is “Nexperian Holding Limited” and the website to which the disputed domain name formerly resolved displayed the name “VCA alhambra”. Neither of these names is “vcajewelry”. There is no evidence that the Respondent has been commonly known by the disputed domain name within the terms of the second circumstance of paragraph 4(c) of the Policy.
The disputed domain name resolved to a website offering goods for sale. That is not a legitimate noncommercial or fair use within the terms of the third circumstance of paragraph 4(c) of the Policy.
Accordingly, 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 Respondent did not rebut that case because it did not respond to the Complaint. The Panel also notes that the name of the underlying registrant of the disputed domain name is not “vcajewelry” either.
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 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 on [the respondent’s] website or location.”
The disputed domain name was registered in 2016, several years after the Complainant obtained its trademark registrations, including in China, where the Respondent is located. The only distinctive element of the disputed domain name is the Complainant’s trademark. The disputed domain name combines the Complainant’s VCA trademark with the dictionary word “jewelry”, which describes the goods in connection with which the Complainant uses that trademark. The website to which the disputed domain name resolved offered for sale what was alleged to be replicas of the Complainant’s jewelry. This all gives the Panel reason to believe that the Complainant’s trademark was deliberately registered as part of the disputed domain name in bad faith.
At the time of filing the Complaint, the disputed domain name, including the Complainant’s trademark, was being used with a website to offer replicas of the Complainant’s jewelry for sale. These goods compete with the Complainant’s own jewelry. Given these facts, the Panel considers that the disputed domain name was used intentionally to an attempt 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. Since the commencement of this proceeding, the disputed domain name has ceased to resolve to an active website but this does not alter the Panel’s decision. Indeed, that change in use may be further evidence of bad faith.
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: May 8, 2017
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