The Complainant is Les Parfumeries Fragonard, France, represented by Inlex IP Expertise, France.
The Respondent is Stanislav Petryashov, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2019. On May 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 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 May 13, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. On May 13, 2019, the Complainant confirmed its request that English be the language of the proceedings. The Complainant filed an amended Complaint in English on May 13, 2019. The Respondent did not file any comments regarding the language of the proceedings.
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 Russian of the Complaint, and the proceedings commenced on May 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2019.
The Center appointed Taras Kyslyy as the sole panelist in this matter on July 5, 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 manufacturing and selling perfumery and cosmetics products and is the owner of several registrations of the word trademark FRAGONARD in numerous jurisdictions, such as the International Registration no. 312110 registered on April 15, 1966 claiming in particular perfumery products in class 3, based on a French registration and designating numerous countries such as Switzerland, Germany, Italy, Austria, etc.
The disputed domain name was registered by the Respondent on December 20, 2018. According to the evidence provided by the Complainant, the disputed domain name used to resolve to a website comprising online shop purporting to offer the Complainant’s products for sale. The disputed domain name is inactive at the time of the decision. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The Complainant holds prior trademark rights for FRAGONARD sign. The disputed domain name reproduces Complainant’s trademark. The Generic Top-Level Domain (the “gTLD”) “.store” is irrelevant for determining similarity between the Complainant’s trademark and the disputed domain name. The gTLD even enhances confusion given the Complainant’s online presence, and Complainant’s domain name .
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant and its trademark are famous, and the Respondent was aware of it when registering the disputed domain name. The Respondent has not registered or filed for FRAGONARD trademark. The Respondent conducts no activity under “fragonard” and it does not correspond to the Respondent’s name. The Complainant never licensed or otherwise authorized the Respondent to use its trademark. No commercial relationship between the Complainant and the Respondent ever existed.
The disputed domain name was registered and is being used in bad faith. The Respondent knew of the Complainant’s well-known trademark and corresponding domain name while registering the disputed domain name. The Respondent requested EUR 2,000 for transfer of the disputed domain name to the Complainant, and such amount is not justified. The disputed domain name used to redirect to a web page reproducing Complainant’s trademark, where the Respondent sold Complainant’s products without any authorization, and included link to the Complainant’s website, while he was never authorized for this by the Complainant. The Respondent knew the Complainant has official distributor in the Russian Federation, since the Respondent contacted the distributor probably on sales of the Complainant’s products. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of Proceedings
The language of the Registration Agreement for the disputed domain name is Russian. 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 Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334).
In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties.
According to section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. “Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.”
The Complainant has submitted a request that the language of the proceedings be English as it would be unfair to require the Complainant to translate the Complaint in Russian since (i) the Complainant is not familiar with Russian and respective translation would cause tremendous cost, time and unfair prejudice (ii) the disputed domain name is written in Latin not Cyrillic characters, (iii) the Registrar has a website both in Cyrillic and in English, (iv) the Respondent understands English as the Respondent and the Registrar have corresponded in English.
The Panel further notes that no objection was made by the Respondent to the proceedings being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent was invited to present his objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known his preference, but did not do so.
The Panel also finds pre-Complaint correspondence between the Complainant and the Respondent conducted in English confirms the Respondent is familiar enough with the English language, and that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.
Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English. B. Identical or Confusingly Similar
The Panel finds that the Complainant has trademarks rights in FRAGONARD sign.
According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the present case the disputed domain name incorporates the entirety of the Complainant’s trademark.
The addition of the gTLD “.store” does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark. See section 1.1 of the WIPO Overview 3.0.
Considering the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.
The Respondent is not commonly known by the disputed domain name, which could demonstrate his right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642).
The Complainant did not license or otherwise agree for use of its registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong,WIPOCase No. D2014-1875).
According to section 2.8.1 of the WIPO Overview 3.0 resellers, distributors using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods may be making a bona fide offering of goods and thus have a legitimate interest in such domain name. Outlined in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (the “Oki Data Test”), the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods at issue;
(ii) the respondent must use the site to sell only the trademarked goods;
(iii) the site must accurately and prominently disclose the registrant’s relationship with trademark holder; and;
(iv) the respondent must not try to “corner the market” in domain names reflecting trademark.
The Panel finds that the Respondent failed to satisfy at least the third above requirement and did not in any way disclose his actual relationship with the Complainant, and thus failed to pass the Oki Data Test. The Respondent’s use of the disputed domain name was misleading consumers into thinking that the website was operated by or affiliated with the Complainant. As such, the Respondent’s use of the disputed domain name cannot be considered bona fide.
Considering the above, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Respondent’s registration and use of the disputed domain name to purportedly sell the Complainant’s products shows that at the time of the registration of the disputed domain name (an exact match of the Complainant’s mark) the Respondent clearly knew and targeted Complainant’s prior registered and famous trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113). The same is confirmed by the pre-Complaint correspondence between the Complainant and the Respondent.
According to section 3.1 of the WIPO Overview 3.0 bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, UDRP paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:
(i) circumstances indicating that the respondent has registered or acquired the 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; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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.
In this regard, the Panel finds that at least the first and the fourth of the above scenarios apply to the present case confirming the Respondent’s bad faith.
In this case, the Panel finds that the use of the disputed domain name falls under paragraph 4(b)(iv) of the Policy.
Further, the Panel notes that the Respondent tried to sell the disputed domain name to the Complainant at the price of EUR 2,000, which amounts to a finding of bad faith under paragraph 4(b)(i) of the Policy.
Moreover, the Respondent failed to comment on the contrary and provide any explanation to prove his good faith while registering and using the disputed domain name.
Considering the above, the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) 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.
Taras Kyslyy
Sole Panelist
Date: July 9, 2019
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