The Complainant is Société Anonyme des Galeries Lafayette of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Chen Hua Hui of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2019. On February 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 12, 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 18, 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 20, 2019.
On February 18, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on February 20, 2019. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on February 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2019.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on March 29, 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
In its Complaint and amended Complaint, the Complainant adduces several trademarks (word marks) protecting the sign GALERIES LAFAYETTE, registered in a number of countries and jurisdictions, e.g. European Union trademark registration number 3798147, registered on May 19, 2006 and international trademark registration number 553543, designating inter alia China, registered on April 12, 1990. The Complainant also owns a portfolio of domain names, including , registered on July 31, 1997. The Respondent registered the disputed domain name on December 6, 2018. Upon the Panel’s review, on the date of this decision, the disputed domain name is linked to an active website, which offers the disputed domain name for sale. 5. Parties’ Contentions A. Complainant
The Complainant is a global company exploiting a chain of luxury fashion stores. The Complainant’s group companies own 280 stores throughout the world, including one in the Respondent’s home city Beijing, with another one opening soon in Shanghai. The Complainant’s group is a large and well-known company in the luxury and fashion market and has realized sales of over EUR 4.5 billion and employs 16,000 people globally. The Complainant adduces evidence that its trademarks have been recognized as well-known in earlier UDRP dispute procedures. The Complainant essentially contends that the disputed domain name is identical or confusingly similar to its trademarks for GALERIES LAFAYETTE, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of proceedings
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant states that, to the best of its knowledge, the language of the Registration Agreement could be either English or Chinese. The Complainant filed its Complaint and amended Complaint in English, including a motivated request that the language of proceedings be English. The Respondent did not make any comments on the language of the procedure, and did not submit any arguments on the merits.
The Panel has carefully considered all elements of this case, in particular, the Complainant's request that the language of proceedings be English; the fact that the Respondent did not comment on the language of the procedure and did not submit arguments on the merits (while it had the right to do so in Chinese or English); the fact that the sales offer on the website linked to the disputed domain name is bilingual Chinese-English, from which the Panel deducts that the Respondent is also targeting an English speaking public and should therefore understand, and be able to communicate in English; and the fact that Chinese as the language of proceedings could lead to unwarranted delay and costs for the Complainant. In view of all these elements, the Panel rules that the language of proceedings shall be English. 6.2. Discussion and Findings on the merits
The Policy requires the Complainant to prove three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
Based on the evidence and arguments submitted, the Panel’s findings are as follows: A. Identical or Confusingly Similar
The Panel finds that the Complainant has provided sufficient evidence that it has valid rights in the sign GALERIES LAFAYETTE based on its registration and use of the same as a trademark, incidentally commencing prior to the registration of the disputed domain name.
Moreover, as to identity or confusing similarity, the disputed domain name consists of the Complainant’s GALERIES LAFAYETTE trademark in full, followed by the word “sale”. The word “sale” is used here as a merely descriptive term, suggesting that the website linked to the disputed domain name provides GALERIES LAFAYETTE goods and services at a discounted price. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.7, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademark, as its sole distinctive and dominant feature. The addition of the descriptive word “sale” does not prevent a finding of confusing similarity. Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s trademarks, and the first element required by the Policy is fulfilled. B. Rights or Legitimate Interests
The Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel notes that the Respondent is not a licensee or an authorized reseller, service provider or distributor, and is not making legitimate noncommercial use or fair use of the Complainant's trademarks. The Panel therefore considers that none of the circumstances of legitimate interests envisaged by paragraph 4(c) of the Policy apply (see also Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903). The Panel also notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the requirements of the second element under the Policy. C. Registered and Used in Bad Faith
The registration of the disputed domain name, which incorporates the Complainant’s trademarks in their entirety, as its only distinctive feature, is clearly intended to profit from, or exploit the Complainant’s trademarks and mislead and divert consumers to the disputed domain name. Even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned, and owns, well-known trademarks protecting “GALERIES LAFAYETTE” and uses these marks actively, including in the Respondent’s home city Beijing, China. In the Panel’s view, this clearly indicates the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.
As to use of the disputed domain name in bad faith, the Complainant provides evidence that the website linked to the disputed domain name states in both Chinese and English: “您正在访问的域名可以转让出售！ the domain is for sale!” (and further provides the phone number of the seller in Chinese). In this regard, paragraph 4(b) of the Policy states that registering a domain name “primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name” constitutes evidence of bad faith. The Panel notes that apart from the sales offer, there is no genuine content on the website linked to the disputed domain name, and that the only apparent intention of the Respondent is therefore to make a profit though the sale of the disputed domain name. The Complainant adduces evidence that the price asked for the disputed domain name is CNY 299,999. The Panel concludes that this is clearly a price far in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name. The Panel therefore rules that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.
Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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.
Deanna Wong Wai Man
Sole Panelist
Date: April 8, 2019
Full & Egal Universal Law Academy