The Complainant is Tang Freres of Paris, France, represented by Inlex IP Expertise, France.
The Respondent is tang freres of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2018. On August 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 16, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 21, 2018.
The Center verified that the Complaint together with 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 of the Complaint, and the proceedings commenced on August 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2018.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on September 25, 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 French company established in 1976, the main business of which is the import and commercialization of Asian food products (wholesale and retail). It claims to operate the largest chain of Asian supermarkets in France. The Complainant is the proprietor of the following trademark registrations for the term TANG FRERES: European Union Trademark no. 5695077 (word trademark), registered on June 5, 2012, and European Union Trademark no. 5825054 (figurative trademark), registered on June 4, 2012. The Complainant further owns the domain name , registered on July 11, 2005, which corresponds to its official website.
The disputed domain name was registered on July 11, 2018. Screen captures submitted by the Complainant show that on July 13, 2018, the disputed domain name resolved to a website imitating the Complainant’s official website, including a link to the Complainant’s official Facebook page. Currently, the website only contains the following three text blocks: “Home”; “C’est l’endroit pour trouver différents types de plats asiatiques tels que le japonais, le chinois ou le coréen. La qualité est raisonnable et les prix sont en moyenne bas.” (in English: “This is the place to find different kinds of Asian dishes such as Japanese, Chinese or Korean. The quality is reasonable and the prices are average low.”); and “© 2018 ”. 5. Parties’ Contentions A. Complainant
In summary, the Complainant contends the following:
Ignoring the new generic Top-Level Domain (“gTLD”) “.online”, the disputed domain name is identical to the Complainant’s distinctive TANG FRERES trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant is the only entity holding trademark rights in TANG FRERES. The Respondent is not associated with the Complainant nor has it been authorized by the Complainant to use the TANG FRERES trademark in any way. Neither can the Respondent claim to be commonly known by the disputed domain name. The content of the website associated with the disputed domain name as well as the registrant information provided by the Registrar show that the Respondent is abusively impersonating the Complainant, particularly by using “tang freres” as the registrant’s name and providing as the registrant’s address an address similar to the Complainant’s corporate headquarters.
The disputed domain name was registered and is being used in bad faith, to lure Internet users to a pirate website where the Respondent passes itself off as the official Tang Freres website. Specifically, until July 16, 2018, the disputed domain name resolved to a website that copied the structure, presentation and photographs of the Complainant’s official website and was directly linked to the Complainant’s Facebook page. It also made unauthorized use of the Complainant’s TANG FRERES trademarks and contained a series of email addresses allegedly belonging to the company’s employees and officers. This is an attempt to divert customers from the Complainant’s official website, in order to receive pay-per-click commissions, collect user data and/or transmit spam emails. Although most of the website’s content has been subsequently removed, the website still makes unauthorized use of the TANG FRERES trademark and alludes to the Complainant’s commercial activity.
Further indications of bad faith are the fact that the Respondent hid its identity behind a privacy shield and refused to respond to any cease-and-desist letters sent by the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has shown that it has rights in the TANG FRERES trademark. The disputed domain name reproduces the Complainant’s TANG FRERES trademark in its entirety.
It has become a consensus view among UDRP panels that the applicable TLD in a domain name is a standard registration requirement and as such may be disregarded when assessing confusing similarity under the first element of the Policy. This practice also applies with regard to new gTLDs such as “.online” (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.11.1 and 1.11.2).
Therefore, the Panel concludes that the disputed domain name is identical to the Complainant’s TANG FRERES trademark.
The Complainant has thus satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent lacks rights or legitimate interests in relation to the disputed domain name. The Respondent has failed to submit a Response or make any effort to attempt to refute this prima facie case.
The Panel notes that the Complainant has produced screen captures of both its official website and the Respondent’s website under the disputed domain name, showing that the Respondent has been strongly imitating the Complainant’s website. Furthermore, the Respondent has registered the disputed domain name under the registrant name “tang freres”, which is the Complainant’s company name as well as its registered trademark. The Respondent further provided to the Registrar a false address in Paris (while listing “Hong Kong” as the registrant city) that is similar to the address of the Complainant’s registered offices. This leads the Panel to conclude that through the website associated with the disputed domain name, the Respondent is impersonating the Complainant. Such use does not constitute a right or legitimate interest within the meaning of paragraph 4(c) of the Policy.
The Complainant has therefore also established the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel refers to its considerations under the previous section.
Additionally, the Panel notes that the Respondent has failed to contest the Complainant’s contention that the Respondent has created a pirate version of the Complainant’s official website, in order to financially profit from the popularity of the Complainant’s trademark and possibly engage in cybercrime. From the circumstance of this case, it is obvious that the Respondent was aware of the Complainant’s rights in the TANG FRERES trademark at the time of registration of the disputed domain name.
In light of the above, the Panel finds that the disputed domain name has been registered and used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Complainant has thus met the requirement under paragraph 4(a)(iii). 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.
Tobias Zuberbühler
Sole Panelist
Date: October 1, 2018
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