The Complainant is Maison Pierre Hardy (SAS) of Paris, France, represented by Cabinet Beau de Loménie, France.
The Respondent is Li Wei Wei of Weinan, Shanxi, China. 2. The Domain Names and Registrars
The disputed domain names and are registered with HiChina Zhicheng Technology Ltd. The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina. HiChina Zhicheng Technology Ltd and Alibaba Cloud Computing Ltd. d/b/a HiChina are referred to below as the “Registrar”. 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2017. On December 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 27, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names and which differed from the named Respondent and contact information in the Complaint. On January 3, 2018, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent two emails in English and Chinese to the Parties regarding a deficiency in the Complaint and the language of the proceeding. On January 8, 2018, the Complainant filed an amended Complaint and requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the amended 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 in English and Chinese of the Complaint, and the proceedings commenced on January 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2018.
The Center appointed Matthew Kennedy as the sole panelist in this matter on February 7, 2018. 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 company founded by Pierre Hardy, a fashion designer. The Complainant produces jewelry, shoes and bags that are sold through flagship stores and retailers in countries around the world, including China. The Complainant owns multiple trademarks, including international trademark registration number 992959 for PIERRE HARDY, registered on March 7, 2008, designating multiple jurisdictions including China and specifying goods in classes 14, 18 and 25. That trademark registration remains current. The Complainant registered the domain name in 2000, among others, which it uses in connection with its official website.
The Respondent is an individual located in China and the registrant of all three disputed domain names. The disputed domain name was registered on September 20, 2017 and resolves to a website in English that prominently displays the PIERRE HARDY trademark and offers for sale what are alleged to be the Complainant’s shoes and bags. The disputed domain names and were registered on November 10, 2017 and do not resolve to any active website, rather, they are passively held.
According to information provided by the Complainant, a panel in a previous proceeding under the Policy found that the Respondent in the present proceeding registered and was using in bad faith the domain name . See Maison Pierre Hardy (SAS) v. Xian Wei Fa / Li Wei Wei, Li Wei Wei / Da Wei Xie, dawei, WIPO Case No. D2017-1160, decision rendered on September 11, 2017. Two other panels in previous proceedings under the Policy found that the Respondent in the present proceeding registered and was using in bad faith the domain names , and . See Sergio Rossi S.p.A. v. Li Wei Wei; Chenxiaomei; Da Wei Xie, dawei, WIPO Case No. D2017-1554 and ASOS plc v. Li Wei Wei, WIPO Case No. D2017-2029. The panel in the latter proceeding found that the Respondent had registered other domain names that incorporated third party trademarks and that this constituted a pattern of bad faith conduct. The Respondent remains the registrant of a large number of other domain names, many of which include third party trademarks, such as and . 5. Parties’ Contentions A. Complainant
The disputed domain names are identical to the Complainant’s PIERRE HARDY trademark because they all include those words.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent received no approval from the Complainant to use its trademark in this way nor has the Respondent acquired any rights in the PIERRE HARDY trademark. The Respondent is making an illegitimate commercial use of the Complainant’s trademark to divert consumers by creating confusion and tarnishing that trademark for the Respondent’s own profit.
The disputed domain names were registered and are being used in bad faith. The Complainant’s trademark is renowned worldwide. PIERRE HARDY is a person’s name and the choice to register it in the disputed domain names cannot be a coincidence. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s trademark by marketing products under this trademark. The Complainant recently obtained a decision under the Policy against the same Respondent in relation to the 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 confirmed that the Registration Agreements for the disputed domain names are in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that one of the disputed domain names resolves to a website entirely in English that invites users, in English, to get in touch via live chat or email; and that English was the language of other proceedings to which the Respondent was party without any contest of the issue.
Paragraph 10(b) and (c) of the Rules requires 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 in this proceeding the Complaint was filed in English. The disputed domain name resolves to a website in English, from which it is reasonable to infer that the Respondent is able to communicate in the English language. Moreover, the Respondent has not expressed any interest in responding to the Complaint or otherwise participating in this proceeding. 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. 6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are 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 PIERRE HARDY trademark.
The Complainant’s PIERRE HARDY trademark is the only distinctive element of all three disputed domain names. Each disputed domain name wholly incorporates that trademark, omitting the space between the words for technical reasons. Two of the disputed domain names include the additional element “on sale” (minus the space between the words) or “outlet” but these are mere dictionary words. Dictionary words do not dispel confusing similarity between domain names and trademarks for the purposes of the Policy. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110.
The only other element in each disputed domain name is a Top-Level Domain (“TLD”) suffix, either “.com” or “.top”. A TLD suffix may generally be 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 names are 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 non-commercial 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 names are confusingly similar to the Complainant’s trademark. The Complainant submits that the Respondent received no approval from the Complainant to use its trademark in this way nor has the Respondent acquired any rights in the PIERRE HARDY trademark.
The disputed domain name resolves to a website that prominently displays the PIERRE HARDY trademark and offers for sale what are alleged to be the Complainant’s shoes and bags. The website is presented as an online store authorized by, or affiliated with, the Complainant, when in fact it is neither. Regardless of whether the goods offered for sale are genuine or counterfeit, there is nothing on the website that discloses its lack of relationship to the Complainant. These facts indicate that the Respondent’s use of this disputed domain name is not in connection with a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Further, use of this disputed domain name in connection with an offering of goods for sale is not a legitimate noncommercial or fair use.
The disputed domain names and do not resolve to any active website. They are not used in connection with a bona fide offering of goods or services, nor in connection with a legitimate noncommercial or fair use.
According to the information in the Registrar’s WhoIs database, the Respondent’s name is “Li Wei Wei”, which does not resemble any of the disputed domain names.
In view of the above circumstances, 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 names. The Respondent failed to rebut that case because he 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 names. 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, but these circumstances are not exhaustive. 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] 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 Respondent registered the disputed domain names in 2017, several years after the Complainant obtained its trademark registration, including in China where the Respondent is located. The disputed domain names wholly incorporate the Complainant’s PIERRE HARDY trademark, but for the space between the words. The Respondent registered the disputed domain names soon after a panel in a previous proceeding ordered the transfer of the domain name from the Respondent to the Complainant on the basis of the Complainant’s rights to the trademark PIERRE HARDY. See Maison Pierre Hardy (SAS) v. Xian Wei Fa / Li Wei Wei, Li Wei Wei / Da Wei Xie, dawei, supra. This demonstrates that the Respondent was aware of the Complainant and its PIERRE HARDY trademark at the time that he registered the disputed domain names in this proceeding and that he registered them in bad faith.
The Respondent uses the disputed domain name , which is confusingly similar to the Complainant’s PIERRE HARDY trademark, in connection with a website to offer for sale what are alleged to be the Complainant’s shoes and bags. Given this circumstance and those described in Section 6.2.B above, the Panel considers that this use of this 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 as described in paragraph 4(b)(iv) of the Policy.
The Respondent passively holds the disputed domain names and but passive holding does not preclude a finding of bad faith use of domain names. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the present dispute, the Panel notes that these two disputed domain names wholly incorporate the Complainant’s PIERRE HARDY trademark and combine it with dictionary words so as to indicate the offering for sale of the Complainant’s goods. The Respondent has registered and used in bad faith two other domain names incorporating the same trademark (one of which is at issue in the present proceeding) and registered and actively used in bad faith multiple domain names incorporating other fashion trademarks. See Maison Pierre Hardy (SAS) v. Xian Wei Fa / Li Wei Wei, Li Wei Wei / Da Wei Xie, dawei, supra; Sergio Rossi S.p.A. v. Li Wei Wei; Chenxiaomei; Da Wei Xie, dawei, supra; and ASOS plc v. Li Wei Wei, supra. In these circumstances, the Panel finds that the Respondent is using in bad faith the disputed domain names and .
Therefore, the Panel finds that the disputed domain names have been registered and are 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 names, , and be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: February 19, 2018
Full & Egal Universal Law Academy