The Complainant is Car&Boat Media, France, represented by Inlex IP Expertise, France.
The Respondent is Qingxia Weng (翁青霞), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2020. On May 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 2020, 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 26, 2020, 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 May 27, 2020. On May 26, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on May 27, 2020. 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 of the Complaint, and the proceedings commenced on June 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified of the Respondent’s default on June 25, 2020. The Center appointed Joseph Simone as the sole panelist in this matter on July 1, 2020. 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 provides advertising and marketing services, primarily offering information and editorial content pertaining to cars, motorcycles, and boats. The Complainant holds a series of trademarks incorporating LA CENTRALE, including: - LA CENTRALE and Device, French Trademark Registration No. 99832003, registered on December 29, 1999 in classes 16, 35, 36, 38, 41, 42 and 45; - LA CENTRALE, French Trademark Registration No. 3036751, registered on June 23, 2000 in classes 16, 35, 36, 38, 41, 42 and 45; - LA CENTRALE AUTO, French Trademark Registration No. 3041705, registered on July 19, 2000 in classes 16, 35, 36, 38, 41, 42 and 45; - LACENTRALE.FR and Device, French Trademark Registration No. 3847279, registered on July 20, 2011 in classes 16, 35, 38, 41 and 42; - LA CENTRALE, French Trademark Registration No. 4068666, registered on February 14, 2014 in classes 12, 16, 35, 36, 37, 38, 39, 41 and 42; - LA CENTRALE and Device, French Trademark Registration No. 4143062, registered on December 18, 2014 in classes 12, 16, 35, 36, 37, 38, 39, 41 and 42. Additionally, the Complainant is the owner of domain names The disputed domain name was registered on December 5, 2019, and resolves to a pornographic website in Chinese language. 5. Parties’ Contentions A. Complainant The Complainant asserts that the disputed domain name is identical or confusingly similar to its registered trademark and domain names, as the disputed domain name is composed of LA CENTRALE in its entirety plus the additional term “des circuits” (meaning, “of circuits” in English) – a reference to motor racing circuits. The Complainant next contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has neither licensed nor otherwise authorized the Respondent to use its trademark. Further, there are no trademarks in the WIPO Global Brand Database for LA CENTRALE or LA CENTRAL DES CIRCUITS registered in the Respondent’s name. On the other hand, the Respondent is using the disputed domain name, which itself suggests some type of affiliation to the Complainant, to redirect users to a website with pornographic content. As the disputed domain name was registered some 20 years after the registration of the Complainant’s trademark and domain names, it would be impossible for the Respondent not to know of the Complainant and its rights prior to registering the disputed domain name. And this cannot confer legitimate interests in the disputed domain name. Finally, the Complainant argues that the disputed domain name was registered and is being used in bad faith. In view of the Complainant’s prior rights in its widely-known trademarks, and many references to the Complainant on the Internet, the Respondent must have known of the Complainant’s rights when it registered the disputed domain name – a domain name that is identical or confusingly similar to the Complainant’s trademarks. Furthermore, the Respondent is using the disputed domain name to damage the Complainant’s image on its IP rights, as it is using it to redirect users to a website displaying pornographic content. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the 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.” As the language of the Registration Agreement is Chinese, the default language of the proceeding shall be Chinese. However, the Complainant filed the Complaint in English and requested that English be the language of the proceeding. The Complainant is unable to communicate in Chinese and would incur considerable expenses if it were required to do so. Further, the disputed domain name is registered in Latin characters. The key consideration in choosing the language of the proceeding is to ensure that each party has a fair opportunity to present its case. The Respondent was notified of each step of the proceeding in both Chinese and English, and did not respond regarding the choice of language, or submit a formal response to the Complaint. Therefore, the Panel believes there would be no prejudice to the Respondent by proceeding in English. By contrast, requiring the Complainant to submit the Complaint in Chinese would be a waste of resources and would unduly delay the proceeding. Therefore, the Panel has decided that the language of the proceeding shall be English and shall proceed with a decision in English. A. Identical or Confusingly Similar Under the first element of the Policy, a complainant must prove that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy). The Complainant has shown valid rights in the trademark by providing evidence of trademark registrations for LA CENTRALE. The test for whether a domain name is identical or confusingly similar to the Complainant’s trademarks is fairly straightforward and a domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (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). Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term may however bear on assessment of the second and third elements (see, e.g., BHP Billiton Innovation Pty Ltd v. Oloyi,WIPO Case No. D2017-0284). In the present case, the disputed domain name is comprised of the Complainant’s trademark LA CENTRALE in its entirety, plus the additional descriptive term “des circuits” which means “of circuits” in English. This mere addition of a descriptive term at the end of the Complainant’s trademark cannot prevent a finding of confusing similarity. Thus, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and the first element is therefore established. B. Rights or Legitimate Interests Under the second element, a complainant must demonstrate that the respondent should be deemed as having no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii) of the Policy). While the overall burden of proof rests with the complainant, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production for this element shifts to the respondent to produce evidence demonstrating its rights or legitimate interests in the domain name. Otherwise, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant states that it has never licensed its trademark to, or otherwise authorized the Respondent to use it in any way. There is also no evidence that the Respondent is commonly known by the disputed domain name. To the contrary, the Complainant has submitted screenshots showing that the Respondent is not commonly known by the disputed domain name. Moreover, the disputed domain name incorporates the Complainant’s trademark in its entirety and was registered some 20 years after the Complainant first registered its trademark and domain name. Under these circumstances, the Complainant has established a prima facie case, which the Respondent has not rebutted with any explanation of its own. In accordance with paragraph 4(c) of the Policy, the Panel may also consider whether the Respondent is making legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers. In this regard, the Respondent’s use of the disputed domain name will not be considered “fair” if it falsely suggests an affiliation with the trademark owner, such as where the disputed domain name is identical to the Complainant’s trademark. Where the disputed domain name contains certain additional terms within the trademark owner’s field of commerce or indicating services related to the brand, further examination of the broader facts and circumstances of the case by the Panel is normally required to assess the Respondent’s rights or legitimate interests. These facts and circumstances, include, inter alia, whether the disputed domain name has been registered and is being used for legitimate purposes and is not as a pretext for commercial gain. See generally section 2.5 of the WIPO Overview 3.0. Here, the disputed domain name incorporates the Complainant’s trademark in its entirety and an additional descriptive term “des circuits” – meaning “of circuits” – a reference to motor racing that is commonly seen in the Complainant’s field of practice. Further, the disputed domain name is being used to redirect to a website offering pornographic content, for no apparent purpose than the Respondent’s own commercial gain. This certainly cannot confer any rights or legitimate interests on the Respondent. In view of the foregoing, the Panel finds that the second requirement of the Policy has been met. C. Registered and Used in Bad Faith Under the final element of the Policy, the Complainant must prove that a disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy). Bad faith under the Policy is understood to include circumstances where: “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” (paragraph 4(b)(iv) of the Policy). In assessing this element, UDRP panels may take into consideration factors such as the nature of the domain name, the content of the website to which the disputed domain name directs, and other indicia that the respondent had somehow targeted the complainant. See generally section 3.2.1 of the WIPO Overview 3.0. The disputed domain name in this case fully contains the Complainant’s trademark LA CENTRALE – which the Complainant has been developing in commerce for more than 20 years. Since first registering its trademark in 1999 and its domain name in 1996, the Complainant has become an established provider for information and content pertaining to the automobile industry. Indeed, the Complainant has submitted evidence showing that its website receives a considerable amount of traffic monthly. The disputed domain name, on the other hand, was registered in 2019, more than 20 years after the Complainant first registered its own domain name. It is therefore highly unlikely that the Respondent was totally unaware of the Complainant’s business and prior rights when it registered the disputed domain name. Further, the Respondent is using the disputed domain name in bad faith. After registering the disputed domain name, the Respondent proceeded to use the disputed domain name to redirect users to a website with pornographic content. Given the significant possibility that Internet users will come across the website when searching for the Complainant’s official websites, there is a real risk that the Complainant’s reputation and goodwill in the trademark will be tarnished. Therefore, it may be concluded that the only reason for the Respondent to have registered the disputed domain name was as a pretext for commercial gain, by riding on the reputation of the Complainant. The Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith, and the third element of the Policy is satisfied. 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 Joseph Simone
Sole Panelist
Date: July 14, 2020
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