The Complainant is Yves Saint Laurent of Paris, France, represented by Brandstorming, France.
The Respondent is Nashan of Shenyang, Liaoning, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 2, 2017. On June 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 6, 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 June 9, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On June 9, 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, and the proceedings commenced on June 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 11, 2017.
The Center appointed Jonathan Agmon as the sole panelist in this matter on July 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. 4. Factual Background
The Complainant is Yves Saint Laurent, a company registered from Paris, France. The Complainant was founded in 1961, and is a global fashion brand, designing and marketing a broad range of women's and men's ready-to-ear products, leather goods, shoes and jewelry.
The Complainant products are distributed throughout the world on all continents, generating a revenue of USD 1.06 billion in 2015.
The Complainant is the owner of numerous trademarks SAINT LAURENT PARIS worldwide. For example: French trademark registration no. 123947684, with the registration date of September 21, 2012; European Union trademark registration no. 011445947, with the registration date of September 4, 2013; International trademark registration no. 1161983, with the registration date of December 7, 2012; Chinese registration no. 11874416, with the registration date of May 21, 2014, and many more.
The Complainant is also the owner of numerous trademark registration for the mark "SAINT LAURENT" worldwide. For example; French trademark registration no. 123966829, with the registration date of December 7, 2012; European Union trademark registration no. 011445905, with the registration date of April 29, 2013; International trademark registration no. 1195681, with the registration date of August 8, 2013; Chinese registration no. 11874420, with the registration date of May 21, 2014, and many more.
The Complainant also developed a formidable presence on the Internet and is the owner of the several domain name, including , , and more.
The disputed domain name was registered on March 30, 2017.
Currently, the disputed domain name resolves to an inactive webpage. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name incorporates the well-known SAINT LAURENT PARIS and SAINT LAURENT (Annexes 1.4-1. and 1-4-2) trademarks in their integrity and in attack position for this last mark within the domain name.
The Complainant further argues that the addition of the generic Top-Level Domain ("gTLD") ".trade" to the disputed domain name typically does not avoid confusing similarity.
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant further argues that the Respondent is not commonly known by the disputed domain name.
The Complainant further argues that the Respondent has never been granted authorization, license or any right whatsoever to use the Complainant's SAINT LAURENT PARIS and SAlNT LAURENT trademarks, in the disputed domain name or on any other support and in any capacity whatsoever.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant further argues that it is clear that the Respondent had the Complainant's trademarks in mind when registering the disputed domain name.
The Complainant further argues that the sole detention of the disputed domain name by the Respondent, in an attempt to prevent the Complainant from reflecting its trademarks, is a strong evidence of bad faith.
The Complainant further argues that the Respondent is associated with 189 other domain names and its email address to 641, and this demonstrate that the Respondent's goal was to block the Complainant is using the disputed domain name and/or to sale it to the Complainant, as on the WhoIs page it is listed for sale.
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(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 has confirmed that the language of the Registration Agreement of the disputed domain name is Chinese.
The Complainant requested that the language of proceeding should be English.
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 proceeding:
a) The disputed domain name consists of Latin letters, rather than Chinese letters.
b) According to the Complainant it has no knowledge of Chinese. The Panel accepts the Complainant's claim that the use of a language other than English would impose a significant burden on the Complainant in view of the proceeding in question.
c) English language is not the native language of the Complainant or its representative, therefore it would not give it unfair advantage over the Respondent. Hence, the Complainant deems it fair to both parties to conduct the proceeding in English.
d) The Respondent did not object to the Complainant's request that English be the language of proceeding.
Upon considering the above, the Panel decides in accordance with paragraph 11(a) of the Rules that English should be the language of 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 trademarks for the mark SAINT LAURENT PARIS worldwide. For example: French trademark registration no. 123947684, with the registration date of September 21, 2012; European Union trademark registration no. 011445947, with the registration date of September 4, 2013; International trademark registration no. 1161983, with the registration date of December 7, 2012; Chinese registration no. 11874416, with the registration date of May 21, 2014, and many more.
The Complainant is also the owner of numerous trademark registration for the mark SAINT LAURENT worldwide. For example; French trademark registration no. 123966829, with the registration date of December 7, 2012; European Union trademark registration no. 011445905, with the registration date of April 29, 2013; International trademark registration no. 1195681, with the registration date of August 8, 2013; Chinese registration no. 11874420, with the registration date of May 21, 2014, and many more.
The disputed domain name integrates the Complainant's trademark SAINT LAURENT and the trademark SAINT LAURENT PARIS in its entirety as a dominant element, with the gTLD ".trade" that does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's trademark.
Previous UDRP panels have ruled that the gTLD suffix generally has no capacity to distinguish a domain name from a trademark (see 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).
The addition of the gTLD ".trade" to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD is typically without legal significance since use of a gTLD is technically required to operate a domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to the trademarks 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 of the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 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 SAINT LAURENT PARIS trademarks nor SAINT LAURENT trademarks, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.
The Respondent has not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is 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 and the trademark search performed by the Panel, the Complainant has owned a registration for the SAINT LAURENT PARIS trademark since at least the year 2012. 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 identical to the Complainant's trademarks. Previous UDRP panels ruled 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" (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095).
Indeed, "when a domain name is so obviously connected with a Complainant, it's very use by a registrant with no connection to the Complainant suggests 'opportunistic bad faith'" (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
In addition, the evidence shows that the Respondent has not been using the disputed domain name. Evidence of passive holding of a domain name has been held under some circumstances to constitute use in bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, supra). The Respondent's passive holding of the disputed domain name indicates in this case bad faith use of the disputed domain name: "[t]he concept of a domain name being used in bad faith is not limited to positive action: inaction is within the concept". See Cho Yong Pil v. Kee Dooseok,WIPO Case No. D2000-0754. See also: "[t]he significance of the distinction is that the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith" (Telstra Corporation Limited v. Nuclear Marshmallow, supra).
The Panel adopts the Complainant arguments of the Respondent's pattern of conduct, where it seems that the Respondent has registered other domain names associated with famous trademarks, and this is considered by the Panel as another clear indication of the Respondent's bad faith registration and use of the disputed domain name (see Home Interiors & Gifts, Inc. v. Home Interiors,WIPO Case No. D2000-0010; AMPO, S. COOP v. C, Taeho Kim, Philippine,WIPO Case No. D2009-0177).
Another indication for the Respondent's bad faith is raised from the incorporation of the Complainant's trademark into the disputed domain name by the Respondent who has no plausible explanation for doing so (Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273).
Based on the evidence presented to the Panel, including the timing of the registration of the disputed domain name which is identical to the Complainant's SAINT LAURENT PARIS mark, the confusing similarity between the Complainant's SAINT LAURENT trademark and the disputed domain name, the failure of the Respondent to respond to the Complaint and the Respondent's passive holding of the disputed domain name, the Panel draws the inference that on balance the disputed domain name has been 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: July 28, 2017
Full & Egal Universal Law Academy