The Complainant is ZV Holding, France, represented by Nameshield, France.
The Respondent is admin, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Gabia, Inc. (the “Registrar”). 3. Procedural History
The Complaint 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 confirming that the Respondent is listed as the registrant and providing the contact details.
On May 20, 2019, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On May 20, 2019, the Complainant requested for English to be the language of the proceeding. The Respondent did not reply to this communications.
The Center verified that the 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 in both English and Korean, and the proceedings commenced on May 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2019. On June 19, 2019, the Center received an email communication from the Respondent in Korean.
The Center appointed Andrew J. Park as the sole panelist in this matter on July 2, 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
ZV Holding, the Complainant, is a French company in the fashion industry. “Zadig & Voltaire” is a luxury casual wear brand founded in 1997 by Thierry Gillier, one of the leading designers in France. The brand “Zadig & Voltaire” stands for ready-to-wear fashion, accessories and perfumes and the identity of the brand can be felt in the liberty of coexistence of military mood and lingerie look. The Complainant has established itself as a worldwide well-known fashion brand using the trademark ZADIG & VOLTAIRE that has been registered internationally including the Republic of Korea.
The Complainant is the owner of the International trademark, ZADIG & VOLTAIRE registered on September 15, 2006 with the registration number No. 907298. The Complainant also owns an important domain names portfolio, including the same distinctive wording ZADIG & VOLTAIRE, such as the domain name registered and used for its official website since May 16, 2002.
The disputed domain name was registered on March 26, 2008. It redirects to a parking page with commercial links related to the Complainant and its activities. Besides, the disputed domain name is offered for sale for a minimum price of USD 3,000.
The Complainant requested for English to be the language of the proceeding. 5. Parties’ Contentions A. Complainant
Concerning the language of the proceedings, the Complainant requests that the language in this case be English because:
1) The English language is the language most widely used in international relations and is one of the working languages of the Center.
2) The disputed domain name is formed by words in Roman characters (ASCII) and not in Korean script;
3) In order to proceed in Korean, the Complainant would have had to retain specialized translation services at a cost very likely to be higher than the overall cost of these proceedings.
Also, the Complainant contends that the disputed domain name should be transferred to the Complainant because:
1) the disputed domain name is identical and confusingly similar to the Complainant’s trademark in which the Complainant has rights. The Complainant insists that the Respondent incorporates the Complainant’s trademark ZADIG & VOLTAIRE in the disputed domain name, only without “&” meaning “and” and the Complainant contends that just omitting one character does not eliminate the likelihood of confusion with the Complainant’s trademark. Also, the mere addition of the “.com”, generic Top-Level Domain (“gTLD”) does not change the overall impression of the designation as being connected to the Complainant’s trademark and official domain name , and may be disregarded when assessing whether a domain name is identical or confusingly similar to the trademark.
2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent is not related in any way with the Complainant. The Complainant does not carry out any activity for, nor has any business with the Respondent. Neither license nor authorization have been granted to the Respondent to make any use of the Complainant’s trademark ZADIG & VOLTAIRE, or apply for registration of the disputed domain name by the Complainant. The Complainant asserts that the Respondent is not known in the WhoIs database as the disputed domain name which means the Respondent is not commonly known by the disputed domain name. Moreover, the disputed domain name points to a parking page with commercial links related to the Complainant and its activities and the Respondent is even offering of USD 3,000 for the disputed domain name in its website, which can be another evidence that the Respondent has no rights or legitimate interests in the disputed domain name.
3) the disputed domain name was registered and is being used in bad faith. First, the Complainant claims that the Respondent registered the disputed domain name in bad faith because the Complainant is a worldwide and well known fashion company, and given the distinctiveness of the Complainant’s trademarks and reputation, it is inconceivable that the Respondent could have registered the disputed domain name without actual knowledge of the Complainant’s company and its trademarks.
Second, the Complainant also claims that the Respondent has used the disputed domain name in bad faith because (i) the website which the disputed domain name resolved to is a parking page that includes pay-per-click (“PPC”) commercial links which relates to the Complainant’s business activities in order to attract, for commercial gain, Internet users to the Respondent’s website; (ii) the website of the disputed domain name also indicates that the disputed domain name is for sale offering a minimum bid of USD 3,000. B. Respondent
The Respondent did not submit any formal Response to the Complainant’s contentions, but later sent an informal email communication to the Center.
The Respondent contends that the Respondent could not submit a response because the Complaint is all in English and the Respondent as a party to this dispute, cannot understand it at all.
In his email, the Respondent also insists that the Complainant’s trademarks and the domain name are ZADIG & VOLTAIRE and respectively which are totally different from the disputed domain name the Respondent owns since the disputed domain name is which is just a compound noun with two common nouns, zadig and voltaire. Therefore, it is not subject to dispute.
Lastly, the Respondent mentioned that it should put all of these situations into the Blue House National People’s Petition. 6. Discussion and Findings A. Language of the Proceeding
The registration agreement for the disputed domain name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the proceeding shall be the language of the registration agreement, i.e., Korean.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean;
2) The website which the disputed domain name resolved to contains links which are in English;
3) The Panel is proficient in both English and Korean, capable of reviewing all the documents and materials in both languages and able to give full consideration to the Parties’ respective arguments; and
4) The Complainant and the Respondent use different languages, and neither of them likely understand the language of the other party. The Complainant is French and the Respondent is Korean. Therefore English would be a fair language for both Parties.
5) The Respondent did not reply to the language of the proceeding of May 20, 2019 in which it was invited to submit its comments/objections.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English; (2) consider any relevant materials in Korean; and (3) issue a decision in English. B. Identical or Confusingly Similar
This element consists of two parts; first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel finds that the Complainant has established registered rights in the mark ZADIG & VOLTAIRE, and that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, omitting “&” which means “and”, it does nothing to avoid a finding of confusing similarity to the Complainant’s trademark. The Respondent’s argument that the Complainant’s trademark ZADIG & VOLTAIRE and the domain name are different from the disputed domain name because there is no “&” or “et” in the disputed domain name are not relevant. Also, the addition of the gTLD extension “.com” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182).
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. C. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case.
The Panel finds that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of 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 registration 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 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 Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraphs 4(b)(i) and (iv) by registering the disputed domain name in order to (1) attempt to attract, for commercial gain, Internet users to the Respondent’s website which the disputed domain name resolves to by creating a likelihood of confusion with the Complainant’s trademark, and (2) sell the disputed domain name to the Complainant for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name.
The Panel finds the Respondent intentionally registered the disputed domain name which is identical or confusingly similar to the Complainant’s trademark ZADIG & VOLTAIRE in bad faith for several reasons. First, the Complainant’s commencement of its business in 1997, its use of the domain name for the Complainant’s official website in 2002, and its first use of the ZADIG & VOLTAIRE trademark since 2006 all far pre-date the registration date of the disputed domain name by the Respondent. Second, the website which the disputed domain name resolves to contains commercial PPC links related to the Complainant’s business, and offers a sale of the disputed domain name.
Accordingly, the evidence shows that the Respondent likely knew of and had sought to take unfair advantage of the confusing similarity between the disputed domain name and the Complainant’s trademarks when it registered the disputed domain name and prevented the Complainant from reflecting the mark in a corresponding domain name in order to resell the disputed domain name to the Complainant for commercial gain. The fact that the Respondent offered to sell the disputed domain name in its website which the disputed domain name resolved to for a minimum bid of USD 3,000 which must be more than the actual cost to register the disputed domain name also shows that the Respondent registered and has been using the disputed domain name in bad faith.
As the conduct described above falls squarely within paragraphs 4(b)(i) and (iv) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, 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.
Andrew J. Park
Sole Panelist
Date: July 16, 2019
Full & Egal Universal Law Academy