The Complainant is DODO (Société par Actions Simplifiée) of Saint-Avold, France, represented by Cabinet Nuss, France.
The Respondent is DoDo Soie of Nanjing, Jiangsu, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 13, 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 April 14, 2017, 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 the same day, the Center received an email communication from the Respondent.
On May 1, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On May 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 of the Complaint in both Chinese and English, and the proceedings commenced on May 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2017. Apart from its previous email communication, the Respondent did not submit any Response. Accordingly, the Center notified the Parties that it would proceed to Panel appointment on May 30, 2017.
The Center appointed Matthew Kennedy as the sole panelist in this matter on June 8, 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 is a French company that manufactures and sells quilts and pillows as well as bed linen, bath linen, mattresses, spring beds and bed accessories. The Complainant has registered trademarks in multiple jurisdictions including French trademark registration number 1430610 for DODO and device, registered from October 9, 1987, specifying goods in classes 20, 22 and 24 including quilts and bed articles of any kind; and International trademark registration number 899148 for DODO, registered from July 10, 2006, and specifying goods in classes 20, 22, 24, 25 and 28 including pillows, mattresses, bed blankets and bed linen. These registrations remain current. The Complainant operates its official website at "" where it sells its products online.
The Respondent's Chinese name is listed in the Registrar's verification as simply the surname "金" (Jin) and its English name is listed as "DoDo Soie". The Respondent is located in Nanjing, China.
The disputed domain name was registered on May 22, 2014. It resolves to a website in French titled "DoDoSoie" that is described as a new boutique specialized in the production and online sale of silk linen, including bed linen, women's silk, men's silk and accessories. The site offers for sale goods such as quilts, sheets, bed linen, pillows, blankets, mattress covers, mattress protectors and nightwear. Prices are quoted in Euro. The site offers delivery worldwide.
The disputed domain name was registered shortly after a panel in a previous proceeding under the Policy ordered the transfer of a nearly identical domain name to the Complainant. See Dodo v Nanjing Mono Internet Tech Ltd, Minfu Wang,WIPO Case No. D2014-0319, regarding . The domain name in that previous proceeding resolved to the same website as that to which the disputed domain name in the current proceeding resolves. The telephone contact of the respondent in that previous proceeding was identical to that of the Respondent in the current proceeding. 5. Parties' Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant's DODO trademark. The domain extension ".com" shall be disregarded. The disputed domain name consists of the DODO trademark plus the generic French word "soie" meaning "silk", which does not avoid a finding of confusing similarity.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent holds no trademark registration for "Dodo Soie". The Respondent is not authorized to use the Complainant's DODO trademark either alone or in combination with another element. It can be assumed that the Respondent was well aware of the existence and reputation of the Complainant's DODO trademark in connection with goods such as quilts, pillows and bedding articles due to the Complainant's extensive use and promotion of that trademark in connection with those goods. Therefore, the Respondent's use of the DODO trademark cannot constitute use in connection with a bona fide offering of goods and services. The disputed domain name registrant's use of the name "DoDo Soie" does not establish rights or legitimate interests in the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The Respondent has attempted, through the registration and use of the disputed domain name, to create a likelihood of confusion with the Complainant's prior trademark DODO in order to divert to its website users attracted by the Complainant's trademark. The Respondent, whose website specializes in selling quilts, pillows and bedding to French consumers, must have been aware of the existence and reputation of the Complainant's trademark. B. Respondent
The Respondent submitted that the disputed domain name had already been transferred. It stated that the registrant's name is simply listed as "金"and asked how the disputed domain name can be transferred. The Respondent did not reply to the Complaint. 6. Discussion and Findings 6.1 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 English be the language of the proceeding. Its main arguments are that the disputed domain name is registered in Latin characters and resolves to a website in French; that the website offers delivery around the world; that the registration agreement was in English in a prior administrative proceeding under the Policy regarding a nearly identical domain name that resolved to the same website with the same contact telephone number; and that translation of the Complaint would incur substantial translation costs and delays. The Respondent did not comment on the language of the proceeding.
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 Respondent sent a brief email to the Center in Chinese. However, the Panel observes that the Respondent has expressed no interest in responding to the Complaint or otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint in Chinese would create an undue burden and unnecessary 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, but that it will accept the email sent by the Respondent in Chinese. 6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that a 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 DODO trademark.
The disputed domain name wholly incorporates the Complainant's DODO trademark as its dominant and only distinctive element.
The disputed domain name contains the additional element "-soie", meaning "-silk" in French. That is merely a dictionary word preceded by a hyphen. Accordingly, the Panel finds that this additional element in the disputed domain name is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant's trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110.
The disputed domain name also contains the TLD suffix ".com". A TLD suffix is a technical requirement of registration and generally has no capacity to dispel confusing similarity between a domain name and a trademark for the purposes of 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 to, 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.
As regards the first circumstance, the Respondent uses the disputed domain name in connection with a website that sells bedding. The disputed domain name is confusingly similar to the Complainant's DODO trademark. The Complainant submits that the Respondent is not authorized to use the Complainant's DODO trademark either alone or in combination with another element. Given these circumstances and the findings in Section 6.2.B below, the Panel finds that this use of the disputed domain name is not in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy.
As regards the second circumstance, the Registrar's verification indicates that the Respondent's Chinese name is simply the surname "金" (Jin) and that its English name is "DoDo Soie". The Respondent's email to the Center drew attention to the Chinese surname listed in the Registrar's verification and made no reference to its so-called English name. In any case, there is no evidence on file that the Respondent has been commonly known as "Dodo Soie" within the terms of paragraph 4(c)(ii) of the Policy.
As regards the third circumstance, the disputed domain name resolves to a website that offers goods for sale. That is not a legitimate noncommercial or fair use for the purposes of paragraph 4(c)(iii) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that case because it did not respond to the Complaint.
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 [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] web site or location or of a product or service on [the respondent's] web site or location."
The Respondent registered the disputed domain name in 2014, years after the Complainant obtained its trademark registrations. The disputed domain name wholly incorporates the Complainant's DODO trademark. More specifically, the Respondent registered the disputed domain name on May 22, 2014, one month after a previous panel ordered the transfer of the domain name to the Complainant. Both the disputed domain name and the domain name in that previous proceeding resolve or resolved to the same website and the registrant's contact telephone number is or was the same in each case. Taking all these circumstances into account, the Panel considers the possibility that the Respondent did not know of the previous proceeding, or of the Complainant's trademark, to be remote. The disputed domain name is identical to the domain name in that previous proceeding but for the addition of a hyphen. Accordingly, the Panel is persuaded that the Respondent was aware of the Complainant's trademark and intentionally registered the disputed domain name in bad faith.
The Respondent uses the disputed domain name, which wholly incorporates the Complainant's DODO trademark, with a website that offers for sale goods that compete with the Complainant's goods. The Respondent has no authorization from the Complainant to register or use its trademark. The Panel considers that the Respondent's use of the disputed domain name intentionally attempts 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.
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.
Lastly, the Respondent asked how the disputed domain name can be transferred when the registrant's Chinese name is simply a surname. The Panel observes that the use of an incomplete or false name to register a domain name does not prevent the transfer or cancellation of a domain name. 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: June 15, 2017
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