The Complainant is Yves Saint Laurent, France, represented by IP Twins S.A.S., France.
The Respondent is Lin Yunfei, 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 November 2, 2020. On November 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 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 November 3, 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 November 6, 2020. 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 November 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2020. The Center appointed Mihaela Maravela as the sole panelist in this matter on December 7, 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 was founded in 1961 and it is one of the world’s most prominent fashion houses. The Complainant’s goods are distributed throughout the world on all continents, generating a revenue of 1.18 billion Euros in 2019. The Complainant’s online store, available at “www.ysl.com”, is available in English and Chinese language, and references several physical stores worldwide including in mainland China and in Singapore. The Complainant is the owner of various registered trademarks that include “YVES SAINT LAURENT” or “YSL” in various jurisdictions throughout the world, including the following: - The International trademark registration No. 254533 for YSL (logo), registered as of April 10, 1962 for goods and services in Classes 14, 18, 24, 25, and 26; - The International trademark registration No. 484835 for YSL (logo), registered as of March 26, 1984 for goods and services in Classes 8, 14, 16, 18, 21, and 34; - The Chinese trademark registration No. 814660 for YSL (block letters), registered as of February 14, 1996 for goods and services in Class 9. The Complainant is also the holder of among others the domain name The disputed domain name was registered on April 20, 2017, it redirects to an online shop selling YSL goods, is not connected with the Complainant and the Complainant claims is selling counterfeit goods. 5. Parties’ Contentions A. Complainant The Complainant argues that the disputed domain name is confusingly similar to its trademarks as it incorporates the trademark YSL in its entirety and the addition of the geographic term “singapore” is not sufficient to avoid confusion with the Complainant’s trademarks. With respect to the second element, the Complainant argues that the Respondent is not commonly known by the disputed domain name and has acquired no trademark or service mark rights related to the “Ysl” or “Yves Saint Laurent” terms. Moreover, the Complainant contends that the Respondent has never been granted authorization, license or any right whatsoever to use the Complainant’s YSL trademarks, in the disputed domain name or on any other support and in any capacity whatsoever and that the Respondent is not commercially linked to the Complainant. In addition, the Complainant shows that at the time of the Complaint, the disputed domain name redirects to an online store that offers the Complainant’s goods for sale which the Complainant believes are counterfeit; there was some evidence in the Complaint of a warning on the Internet about the website as a website not delivering any goods or delivering fakes. Moreover, the website at the disputed domain name falsely reproduces the Complainant’s trademark as well as the stylized logo “YVES SAINT LAURENT” on the header of the website and there is not any disclaimer mentioning the relationship between the Respondent and the Complainant. In what concerns the third element, the Complainant argues that the YSL and YVES SAINT LAURENT trademarks are so widely well-known, that it is inconceivable that the Respondent ignored the Complainant’s earlier rights on the term “YSL”. The Complainant contends that the Respondent uses the disputed domain name with an active website where the YVES SAINT LAURENT logo is displayed on the header of the website, which is likely to create confusion, or at the very least an association in the mind of the average Internet user as to the source, sponsorship, affiliation, or endorsement of the online shop by the Complainant. Moreover, the website associated with the disputed domain name is used to sell YSL, YVES SAINT LAURENT, and SAINT LAURENT PARIS branded products at significantly low prices compared to the retail price of genuine YSL and YVES SAINT LAURENT goods. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant. “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. See paragraph 15(a) of the Rules. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed. Here, the Complainant proved rights over the YSL trademark. As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name to the trademarks in which the Complainant holds rights. The disputed domain name incorporates the Complainant’s trademark YSL in addition to the geographic term “Singapore” and a hyphen. Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. (See, Aldermore Bank Plc v. Hildegard Gruener,WIPO Case No. D2016-1617). The fact that a domain name wholly incorporates a complainant’s trademark may be sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The addition of a descriptive term does not serve to distinguish the domain name from the trademark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). As held by previous UDRP panels in similar cases, “The mere addition of a geographically descriptive term to a mark does not negate the confusing similarity between the mark and the domain name.” See, e.g., Mastercard International Incorporated v. MasterCard Brasil,WIPO Case No. D2009-1691; Red Bull GmbH v. Daniel Cobb, CobbCorp Pty Ltd,WIPO Case No. D2018-0021; Dyson Research Limited v. Jia Qiong,WIPO Case No. D2013-2124; Nokia Corporation v. Nick Holmes t/a EType Media,WIPO Case No. D2002-0001. It is well accepted by previous UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. This Panel concludes that the disputed domain name is confusingly similar to the trademarks of the Complainant and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or The consensus view of previous UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has established that it holds rights over the trademark YSL and claims that the Respondent is not sponsored by or affiliated with the Complainant in any way and that the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “ysl”. See ALDI GmbH & Co. KG v. zhou xiaolei,WIPO Case No. D2014-0957. From the evidence put forward by the Complainant, the website to which the disputed domain name resolves redirects Internet users to a website selling products – claimed to be counterfeits – under the Complainant’s YSL trademark. As held by previous panels in similar situations, this is not a bona fide offering of goods and services. See, Cube Limited v. Gueijuan Xu,WIPO Case No. D2017-2514. The Respondent has used the Complainant’s logo and trademark on the website to which the disputed domain name resolves to appear to be a website authorized by the Complainant in an act of passing off, which cannot be bona fide use. See Yves Saint Laurent, SAS v. Mo Zeghloul,WIPO Case No. D2017-2594. By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Cash Converters Pty Ltd v. Mirriam Musonda-salati,WIPO Case No. D2014-1839. With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is used in bad faith. According to the unrebutted assertions of the Complainant, its YSL trademark is widely used in commerce for couple of decades before the registration of the disputed domain name in 2017. The disputed domain name incorporates the Complainant’s trademark and geographically descriptive term in addition to the generic Top-Level Domain (“gTLD”) “.com”. Also, the website to which the disputed domain name resolves includes the Complainant’s logo and trademark. Under these circumstances, it is likely that the Respondent was aware of the Complainant’s trademark at the registration date of the disputed domain name. As regards the use of the disputed domain names, paragraph 4(b)(iv) of the Policy has direct bearing to the present case: “(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 said website location or of a product or service on that website location.” The fact that the disputed domain name is confusingly similar with the Complainant’s trademarks and that the said trademarks are used for a long period of time indicates not only that the Respondent was aware of the Complainant’s business and trademark at the time of registration, but also that it registered the disputed domain name to mislead Internet users into thinking it is some way connected, sponsored, endorsed by or affiliated with the Complainant’s services. This finding is further supported by the fact that the Complainant’s trademarks are distinctive and well known within the fashion sector (e.g., Yves Saint Laurent, SAS v. shenxingyu,WIPO Case No. D2018-2589) and also by the fact that the website to which the disputed domain name redirects displays the Complainant’s trademarks. See Yves Saint Laurent, SAS v. Mo Zeghloul,WIPO Case No. D2017-2594. As regards the use of the disputed domain name, the Complainant adduced evidence not refuted by the Respondent that the website to which the disputed domain name resolves is used for online sale of purportedly counterfeit products marked with the Complainant’s trademarks. This shows in the Panel’s view that the website to which the disputed domain name resolves is used to create a likelihood of confusion as to the Complainant’s affiliation with the website and offers for sale presumably counterfeit replicas of the Complainant’s goods. For a similar finding see Yves Saint Laurent, SAS v. Chen Fei,WIPO Case No. D2016-1071. This Panel finally notes that even in the event that the Respondent offered genuine YSL goods (e.g., as a non-authorized reseller) rather than counterfeits, misleading Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business, or that the Respondent’s activities are approved or endorsed by the Complainant, supports a finding of bad faith (see Swarovski Aktiengesellschaft v. swarovski-coupon.net swarovski-coupon.net swarovski-coupon.net,WIPO Case No. D2013-1529; and also Swarovski Aktiengesellschaft v. bingbing chen,WIPO Case No. D2011-1524). The Panel concludes that the disputed domain name was registered and 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 name, Mihaela Maravela
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Sole Panelist
Date: December 21, 2020
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