The Complainant is MAGELLAN of Saint Malo, France, represented by Inlex IP Expertise, France.
The Respondent is Ma Ya Hong of Qingyang, Gansu, 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 in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2019. 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 February 11, 2019, 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 February 12, 2019 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 February 15, 2019.
February 12, 2019, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint 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 February 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2019.
The Center appointed Matthew Kennedy as the sole panelist in this matter on March 15, 2019. 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 sells men and women’s fashion under the trademark BONOBO. The Complainant owns multiple trademark registrations including French trademark registration number 3127913 for BONOBO in a particular script, registered from October 25, 2001 and specifying footwear and clothing in class 25; French trademark registration number 3437302 for BONOBO, registered from June 27, 2006, and specifying footwear, clothing and other goods in classes 3, 14, 16, 18, 24 and 25; and International trademark registration number 1051866 for BONOBO and device (the “Bonobo logo”), registered on July 20, 2010 and specifying footwear, clothing and other goods in classes 14, 18 and 25. The Complainant has also registered the domain name that it uses in connection with an official online store where it sells its clothing, footwear and accessories.
The Respondent is an individual resident in China. She registered the disputed domain name on October 29, 2018. The disputed domain name resolves to a website in French that is an online store, which prominently displays the Complainant’s Bonobo logo and has a look and feel very similar to the Complainant’s official online store. The website offers for sale what are alleged to be the Complainant’s clothing and footwear at heavily discounted prices. Prices are displayed in euro. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s BONOBO trademark. The disputed domain name reproduces the BONOBO trademark as its dominant part. The adjunction of the French word “actuel” meaning “modern” or “current” gives consumers the idea that the website offers the Complainant’s current collection.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been authorized by the Complainant to use the BONOBO trademark or to register any domain name incorporating that trademark. The Respondent has no licence from the Complainant to use the BONOBO trademark. The website offers for sale clothing that is presented as discounted clothing under the Complainant’s trademark.
The disputed domain name has been registered and is being used in bad faith. The website to which the disputed domain name resolves is a servile copy of the Complainant’s official website. 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 Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name is in Latin characters, the website to which the disputed domain name resolves is in French, and translation of the Complaint into Chinese would cause significant expense and delay.
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 in this proceeding the Complaint was filed in English. Despite having received a notice regarding the language of the proceeding and written notice of the Complaint in Chinese and English, the Respondent did not respond in Chinese or English or express any interest in participating in this proceeding in any other way. Therefore, 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. The Panel would have accepted a Response filed in Chinese, but none was filed. 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 BONOBO trademark.
The disputed domain name wholly incorporates the BONOBO trademark. That trademark is clearly recognizable in the disputed domain name.
The disputed domain name also incorporates the French dictionary word “actuel”, meaning current, contemporary or modern. A dictionary word is generally incapable of dispelling confusing similarity between a domain name and a trademark 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 the disputed domain name is the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix is generally 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 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 disputed domain name is confusingly similar to the Complainant’s trademark and is being used with a website that offers for sale what is presented as the Complainant’s clothing and footwear. The Complainant states that it has not authorized the Respondent to use the BONOBO trademark or to register any domain name incorporating that trademark but the website fails to disclose the Respondent’s lack of any relationship to the Complainant. Whether the products displayed on the Respondent’s website are counterfeit or genuine, these facts show that the Respondent’s use of the 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. Accordingly, the Panel does not find that the Respondent’s use falls within the first circumstance of paragraph 4(c) of the Policy.
As regards the second circumstance, the Respondent’s name is recorded in the Registrar’s WhoIs database as “Ma Ya Hong”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
As regards the third circumstance, the disputed domain name resolves to a website that offers goods for commercial sale. That is not a legitimate noncommercial or fair use of the disputed domain name. Accordingly, the Panel does not find that the Respondent’s use falls within the third circumstance of paragraph 4(c) 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 did not rebut that case because she 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] 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 name in 2018, years after the Complainant obtained its trademark registration. The disputed domain name wholly incorporates the Complainant’s BONOBO trademark, adding only the French dictionary word “actuel”, plus a gTLD suffix. The addition of the word “actuel” to the Complainant’s mark, which is used in connection with fashion, gives the impression that the Respondent’s website will present the Complainant’s current collection. Soon after the registration of the disputed domain name, the website to which it resolves offers for sale what are alleged to be the Complainant’s products. This all indicates to the Panel that the Respondent intentionally chose to register the Complainant’s trademark as part of the disputed domain name in bad faith.
The Respondent uses the disputed domain name, which wholly incorporates the Complainant’s trademark, with a website that prominently displays the Complainant’s Bonobo logo, imitates the look and feel of the Complainant’s official website and offers for sale what are alleged to be the Complainant’s products. The Respondent is not affiliated in any way with the Complainant but this is not disclosed on the website to which the disputed domain name resolves. This all gives the impression that the website is approved by, or affiliated with, the Complainant. Given these facts, 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. 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: March 17, 2019
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