The Complainant is Yves Saint Laurent, SAS of Paris, France, represented by IP Twins S.A.S., France.
The Respondent is Mo Zeghloul of Pittsburgh, Pennsylvania, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2017. On January 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 3, 2018, 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.
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 January 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2018.
The Center appointed Dawn Osborne as the sole panelist in this matter on February 1, 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 commonly represented by and owns, inter alia, international registered trade marks for the mark YSL registered since March 26, 1984 (No. 484835), the word mark YSL registered since March 1, 1996 (No. 651883), and for its YSL logo registered since April 10, 1962 (No. 254533). The mark is well known. The Complainant has been the owner of the domain names and since 1998. The Complainant also owns international registrations for its YVES SAINT LAURENT logo in stylised form registered since June 7, 1966 (e.g., No. 314625).
The Domain Name registered in 2017 has been used for a site bearing the Complainant’s YVES SAINT LAURENT logo in stylised form which is selling clothing, is not connected with the Complainant and the Complainant suspects is selling counterfeit goods. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
The Complainant is commonly represented by and owns, inter alia, international registered trade marks for the word mark YSL registered since March 26, 1984 (No. 484835), the word mark YSL registered since March 1, 1996 (No. 651883), and for its YSL logo registered since April 10, 1962 (No. 254533). The mark is well known. The Complainant has been the owner of domain names and since 1998. The Complainant also owns international registrations for YVES SAINT LAURENT in stylised form registered since 1966.
The Domain Name contains the entire YSL mark. The Respondent does not avoid likely confusion by adding the descriptive terms “sale” and “outlet” which are relevant to the fashion business in which the Complainant operates and the generic Top-Level Domain (“gTLD”) “.com” which is technically required to operate a domain name. The Domain Name is confusingly similar to the Complainant’s mark.
The Respondent is not commonly known by the Domain Name and has no trade mark rights relating to YSL. The Respondent is not an authorised distributor of the Complainant, but falsely identifies with the Complainant by reproducing its YVES SAINT LAURENT logo in stylised form on the masthead of the web site attached to the Domain Name. The Complainant has not given the Respondent authorisation to use the Complainant’s trade marks. Respondent has no rights or legitimate interests in the Domain Name.
The Respondent is using the Complainant’s trade marks to attract Internet users by causing confusion, using the YVES SAINT LAURENT logo of the Complainant prominently on its site without authorisation. The goods are suspected to be counterfeit given the low prices and there was some evidence in this complaint of a warning on the Internet about the site as a site not delivering any goods or delivering fakes.
Further the contact details may be incorrect as they do not relate to China, where it appears the Respondent is based. However, the same details given on the WhoIs have been used to register many domain names containing famous trade marks in their entirety.
The Domain Name has been registered and used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical and/or Confusingly Similar
The Domain Name combines the Complainant’s YSL mark (registered as an International Registration, inter alia, for clothing since 1984), and the dictionary terms “sale” and “outlet” and the gTLD “.com”.
The addition of common commercial dictionary terms such as “sale” and “outlet” do not serve to distinguish the Domain Name from the Complainant’s YSL mark which is still identifiable within the Domain Name.
The gTLD “.com” does not serve to distinguish the Domain Name from the Complainant’s YSL mark.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy. B. Rights or Legitimate Interests
The Respondent does not appear to be commonly known by the Domain Name. The Complainant has not authorised the Respondent to use its marks. The use of the Domain Name is commercial and so cannot be legitimate noncommercial use.
Panels have found that a respondent is not using a disputed domain name for a bona fide offering of goods or services if it uses the name to divert Internet users to a web site competing with the Complainant under the Complainant’s mark. Here the Respondent has, in fact, used the Complainant’s name and YVES SAINT LAURENT logo on its web site attached to the Domain Name to appear to be a site authorised by the Complainant in an act of passing off, which cannot be bona fide use.
The Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use the Complainant’s trade marks in this way. As such the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy. C. Registration and Use in Bad Faith
The Respondent’s use of the site attached to the Domain Name is commercial and it is using its site to compete in a confusing manner. The usage of the Complainant’s official logo on the web site attached to the Domain Name is a misrepresentation and because of this use with the Domain Name which is confusingly similar to the Complainant’s YSL mark, the Respondent’s site is highly likely to be confused as a site belonging to or connected with the Complainant. The use of the Complainant’s logo on the web site attached to the Domain Name indicates the Respondent was aware of the Complainant’s rights at the time of registration and throughout use.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its web site by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation, or endorsement of that web site under paragraph 4(b)(iv) of the Policy. This is also clearly designed to be competitive and disruptive and constitutes bad faith under paragraph 4(b)(iii) of the Policy. The Panel also notes the Respondent appears to own a large number of domain names containing the famous marks of third parties. There would also, therefore, appear to be a pattern of bad faith registrations sufficient to satisfy paragraph 4(b)(ii) of the Policy.
As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4(b)(ii), 4(b)(iii) and 4(b)(iv) and has satisfied the third limb 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.
Dawn Osborne
Sole Panelist
Date: February 8, 2018
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