The Complainants are C.C.V. Beaumanoir of Saint Malo, France and Pauline of Saint Malo, France, represented by Inlex IP Expertise, France.
The Respondents are Ma Ya Hong of Qingyang, Gansu, China and Zhang Xiu Ye of Yuncheng, Shanxi, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2019. On February 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 14, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on February 14, 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. On February 21, 2019, the Center sent a communication to the Parties regarding the consolidation of multiple respondents.
On February 14, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On February 15, 2019, the Complainants confirmed its request that English be the language of the proceeding. The Respondents 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 of the Complaint, and the proceedings commenced on February 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2019.
The Center appointed Joseph Simone as the sole panelist in this matter on March 28, 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 two Complainants are related French companies. The first Complainant C.C.V Beaumanoir is the parent company of the second Complainant Pauline, a wholly-owned subsidiary of C.C.V Beamanoir. The Complainants are the owners of French clothing brands Morgan and Bréal, respectively.
C.C.V Beamanoir is the holder of a substantial portfolio of trademark registrations throughout the world for the following marks particularly in relation to clothes, bags, shoes and beauty products. Its main registrations are listed below.
MORGAN
− European Union Trademark Registration No. 014908982, registered on April 19, 2016, in classes 9, 14, 18 and 25;
− European Union Trademark Registration No. 003909843 for MORGAN, registered on September 21, 2005, in class 35
MORGAN with love heart on the letter “O”
− French Trademark Registration No. 4049265, registered on March 14, 2014, in classes 3, 9, 14, 16, 18, 25 and 35
MORGAN (with love heart on the letter “O”) MORGAN DE TOI!
− International Trademark Registration No. 1079868, registered on January 14, 2011, in classes 3, 5, 9, 12, 14, 16, 18, 24, 25, 26, 28, 30, 31, 32 and 35;
− French Trademark Registration No. 3760108, registered on January 14, 2011, in classes 3, 5, 9, 12, 14, 16, 18, 24, 25, 26, 28, 30, 31, 32, 35, 39, 41, 43, 44 and 45
MORGAN, MORGAN DE TOI with love heart design
− International Trademark Registration No. 758140 for, registered on January 26, 2001, in classes 3, 9, 14, 16, 18, 24 and 25.
Pauline owns the following trademarks for BRÉAL, notably registered in relation to clothes, bags, shoes and beauty products.
− International Trademark Registration No. 1190522 for BRÉAL, registered on July 22, 2013, in classes 3, 9, 14, 16, 18, 24, 25, 35, 38, 41 and 42;
− French Trademark Registration No. 3977422 for BRÉAL, registered on August 16, 2013, in classes 3, 9, 14, 18, 25 and 42;
The disputed domain name was registered on July 11, 2018 and the disputed domain name was registered on October 29, 2018. The disputed domain name resolves to a website advertising clothes for sale under the Morgan brand and depicting the Complainant’s trademark at the top of the page: “MORGAN [with love heart on the letter “O”] MORGAN DE TOI”. The disputed domain name similarly resolves to a website advertising clothes for sale under the Bréal brand and depicting the Complainant’s BRÉAL trademark at the top of the page. 5. Parties’ Contentions A. Complainant Consolidation of the Complainants
The Complaint is filed in the name of two Complainants, C.C.V. Beaumanoir and its wholly owned subsidiary Pauline. UDRP panels in previous cases have found consolidation appropriate for a parent and wholly-owned subsidies. Moreover, the Complainants have common grievance against the Respondents. The Complainants submit that it would be equitable and procedurally efficient to permit the consolidation. Consolidation of the Respondents
The Complaint is filed in respect of two different disputed domain names. The Complainants submit that it is appropriate to bring a joint complaint because the disputed domain names are registered by the same domain name holder and the Respondents have engaged in conduct which affects the Complainants in a similar fashion. In support of this, the Complainants note the following factors. The registrants of the disputed domain names both have email addresses with the domain name “jackaoutlet” and many email addresses with this domain have been reported as related to spam activity. The disputed domain names are registered with the same Registrar and are hosted by the same hosting company. They were both registered around the same period in the context of the impending “Black Friday” shopping day and have similar IP addresses, as noted by the Spanish INTERPOL Control Report No. 2018/96401-1. They both target the trademarks of two related French companies, the websites have the same overall appearance and they are targeting the Complainants in the same manner. Therefore, the Complainants submit that the Respondents can be considered as the same entity or under common control and it would be equitable and procedurally efficient to permit the consolidation. Language of Proceedings
The language of the Registration Agreement is in Chinese. However, the Complaint has been submitted in English. The Complainants request that the proceeding be conducted in English given that the disputed domain names are in English and French and the websites are in French, which suggests that the Respondents are familiar with European languages. They submit that the Complainants are two French companies, and it would cause significant expense and delay if the Complainants were required to translate the Complaint and Annexes into Chinese. Furthermore, many UDRP cases involving the same Registrar have been decided in English. Identical or confusingly similar
The Complainants contend that the disputed domain names are identical or confusingly similar to the marks MORGAN and BRÉAL in which they have rights. The Complainants have submitted a portfolio of trademarks and trademark registrations to support their rights, and note the Complainants’ trademark registrations are prior to the date of registration of the disputed domain names. With respect to the disputed domain name , the Complainants submit that the dominant part is the trademark MORGAN and the addition of the word “modern” is non-distinctive and merely suggests that the website offers the current collection. With respect to the disputed domain name , the Complainants submit that it reproduces the trademark BRÉAL as the dominant element, and the addition of the word “raffine” in French, translating to “refined” or “sophisticated” in English, is non-distinctive and merely leads to the idea that the website offers this style of clothing. Therefore, the disputed domain names are confusingly similar to the Complainants’ trademarks. Rights or legitimate interests
The Complainants submit that the Respondents have no rights or legitimate interests in respect of the disputed domain name. Both disputed domain names were registered after the Complainants registered their trademarks and domain names containing their trademarks. The Respondents have not been authorized nor licensed by the Complainants to use the trademark or to register any domain name incorporating the trademarks. In the absence of such license, no actual or contemplated bona fide or legitimate use of the disputed domain names can be claimed. The disputed domain names are used to offer for sale clothing under the Complainants’ trademarks. Both websites copy copyright images of the Complainants’ clothing and logos without authorization, as well as footers claiming they own the copyright, and FAQs guaranteeing the quality and authenticity of the products. Registered and used in bad faith
The Complainants submit that the Respondents acquired and are using the disputed domain names in bad faith. Specifically, the Complainants submit that the Respondents are intentionally attempting to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainants’ trademarks as to source, sponsorship, affiliation or endorsement of the Respondents’ websites, which constitutes evidence of bad faith under paragraph 4(b)(iv) of the Policy. The websites are presented as shops where the consumers are invited to enter contact and bank details into the websites which are not secured. The Complainants seriously doubt that consumers ultimately receive the products, and believe the websites are merely a ploy to access consumers’ personal information. Therefore, these websites pose a serious threat to Internet users and it is in the public interest that the disputed domain names are transferred to the Complainants immediately. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1 Consolidation of the Complainants
The Complaint was filed in the name of two related entities, the parent company C.C.V Beamanoir and its wholly-owned subsidiary Pauline. According to the evidence presented, the disputed domain names appear to be under common control and are targeting the Complainants in the same manner. Therefore, in accordance with section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel believes the Complainants have a common grievance against the Respondent and that the Respondent’s conduct has affected them in a similar fashion. Given this and since the Complainants are related, it would be equitable and procedurally efficient to permit the consolidation. 6.2 Consolidation of the Respondents
The Complaint was filed in respect of two disputed domain names registered under different registrant names. According to the evidence presented, the disputed domain names appear to be under common control as they share strong similarities in contact details, and are targeting the Complainants in the same manner. Therefore, in accordance with section 4.11.2 of WIPO Overview 3.0, the Panel considers equitable and procedurally efficient to permit the consolidation of the Respondents. 6.3 Language of Proceeding
In accordance with paragraph 11 of the Rules:
“[…] 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.”
In this case, the language of the Registration Agreement is in Chinese.
However, the Complainants filed the Complaint in English and requested that English be the language of the proceeding. The Respondents were notified in both English and Chinese regarding the nature of the proceeding and issue of language, and failed to express a language preference or submit a Response.
Given this, the Panel finds that there would be no prejudice caused to the Respondents by conducting the proceeding in English. On the other hand, requiring the Complainants to translate the Complaint would cause undue burden and delay. Noting the aim of conducting proceedings with due expedition and in a cost‑efficient manner, the Panel will proceed in English. 6.4 Substantive Issues A. Identical or Confusingly Similar
Under the first element of the Policy, the Complainants must prove that the disputed domain names are identical or confusingly similar to the trademarks in which the Complainants have rights (paragraph 4(a)(i) of the Policy).
The Complainants have submitted evidence of numerous trademark registrations for MORGAN and BRÉAL, and various marks incorporating MORGAN and the love heart logo (see section 4 of this decision). Based on the evidence submitted, the Complainants have proven the requisite rights to the marks MORGAN and BRÉAL.
The test for whether a domain name is identical or confusingly similar to a trademark is relatively straightforward. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold test (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies,WIPO Case No. D2004-0962).
The disputed domain name can be clearly split into the words “morgan” and “modern”. The word “modern” is descriptive leaving the distinctive portion as the trademark MORGAN. Therefore, the disputed domain name is confusingly similar with the Complainant’s mark.
The disputed domain name contains the Complainant’s trademark BRÉAL with the addition of the term “raffine”. Since the website is targeted at French speakers, the term “raffine” is clearly perceived to mean “refined” or “sophisticated” and is descriptive of the dominant portion of the disputed domain name which is the Complainant’s trademark BRÉAL. Such descriptive terms do not detract from confusing similarity to a trademark and the Panel finds that the disputed domain name is therefore confusingly similar to the Complainant’s mark. B. Rights or Legitimate Interests
Under the second element, the Complainants must demonstrate that the Respondents should be considered as having no rights or legitimate interests in respect of the disputed domain names that are the subject of the Complaint (paragraph 4(a)(ii) of the Policy).
The Panel accepts that the Complainants have neither authorized nor licensed the Respondents to use its trademarks in any way. The content of both websites to which the disputed domain names resolve clearly show the Respondents are specifically targeting each Complainant, using their trademarks, logos and copyrighted images in a misleading manner to offer for sale what is apparently the Complainants’ clothing without disclosing the relationship between the Respondents and the Complainants. In the absence of authorization, this cannot vest the Respondents with rights or legitimate interests. It also precludes any legitimate or bona fide use of the disputed domain names since it is deliberately misleading consumers.
By failing to respond, the Respondents have not presented any evidence to the contrary. Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Finally, the Complainants must prove that the disputed domain names were registered and are being used in bad faith (paragraph 4(a)(iii) of the Policy).
The use of the Complainants’ trademarks, logos and copyright images to offer for sale what is purportedly the Complainants’ clothing clearly indicates the Respondents are actively targeting the Complainants, and in the absence of authorization, are doing so in bad faith. The close similarity of the disputed domain names to the Complainants’ marks indicate the Respondents actively registered the disputed domain names in order to carry out the infringing activity and profit from an implied affiliation with or authorization by the Complainants. The websites are in French, corresponding with the home country of the companies, and have the look and feel of authorized websites. They are clearly designed to defraud Internet users either by selling counterfeit clothing or into providing personal information such as bank account details and passwords. In fact, the websites have already been listed on an “Interpol Purple Notice” regarding an investigation into fraudulent websites in the wake of the approaching “Black Friday” sale on November 23, 2018.
Given all of the above, the Panel finds the disputed domain names were registered and are being used in bad faith. 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 Complainants.
Joseph Simone
Sole Panelist
Date: April 9, 2019
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