The Complainants are Sonia Rykiel Création Paris (the “First Complainant”), France, Cambon Financière SARL (the “Second Complainant”), Luxembourg and Victoire Investissement Holding SARL (the “Third Complainant”), Luxembourg, all represented by Marvell Avocats, France.
The Respondent is Long Li, Li Long, 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 December 9, 2020. On December 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 December 11, 2020, the Center informed the Complainants of the correct identity of the Registrar. Accordingly, on December 18, 2020, the Complainants filed a first amended Complaint. On January 4, 2021, the Complaint submitted a missing annex, further to the Center’s request. On January 12, 2021, the Center informed the Complainants that the first amended Complaint exceeded the maximum file size permitted under paragraph 12(a) of the Supplemental Rules. On the following day, the Complainants filed a second amended Complaint. The Center verified that the Complaint together with the amended Complaints 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 January 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2021. The Center appointed Matthew Kennedy as the sole panelist in this matter on February 23, 2021. 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 Complainants are the assignees of the assets of Sonia Rykiel Création et Diffusion de Modèles (a company founded by fashion designer Sonia Rykiel), pursuant to a deed of assignment dated February 18, 2020. The relaunch of the SONIA RYKIEL brand by the Complainants was previously announced in the news media on December 19, 2019. The Second and Third Complainants are the current registered co-proprietors of trademarks for SONIA RYKIEL including International trademark registration number 585922, registered on May 19, 1992, designating multiple jurisdictions, including China, specifying goods in multiple classes; and International trademark registration number 434218, registered on October 26, 1977, designating multiple jurisdictions, including China, specifying goods in multiple classes. Those trademark registrations remain current. The Second and Third Complainants also operate an online store at “www.soniarykiel.com” that sells SONIA RYKIEL brand fashion clothes and accessories. The Respondent is an individual resident in China. The disputed domain name was registered on May 7, 2020. At the time of the Complaint, it did not resolve to an active website; rather, it was passively held. At the time of this decision, it resolves to a webpage displaying hyperlinks to a sports betting website. The Registrar confirmed that the language of the Registration Agreement is English. 5. Parties’ Contentions A. Complainants The disputed domain name is identical to the Complainants’ SONIA RYKIEL trademarks. The Respondent has no rights or legitimate interests with respect to the disputed domain name. The disputed domain name has not been used since it was registered. The Respondent is not commonly known under the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name but, on the contrary, the Respondent has the obvious intent for commercial gain misleadingly to divert consumers of Sonia Rykiel or to tarnish the trademark or service mark at issue. The disputed domain name was registered and is being used in bad faith. The trademarks SONIA RYKIEL and RYKIEL are well known in France and around the world. The choice of the exact name “soniarykiel” could not be a coincidence. By using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademarks. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1. Multiple Complainants The Complaint was filed by three complainants against a single respondent. All three Complainants are the assignees of the assets of Sonia Rykiel Création et Diffusion de Modèles. The Second and Third Complainants are the current registered coproprietors of trademarks for SONIA RYKIEL. The Panel finds that the Complainants have a common grievance against the Respondent and that it is equitable and procedurally efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Complainant has rights in the SONIA RYKIEL marks. The disputed domain name incorporates the SONIA RYKIEL mark as its initial element (omitting the space between the names for technical reasons). It also includes the dictionary word “digital”. However, as a mere descriptive word, this additional element does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The trademark SONIA RYKIEL remains clearly recognizable within the disputed domain name. The disputed domain name also includes a generic Top-Level Domain (“gTLD”) (“.com”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11. Therefore, the Panel finds that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] 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 (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent 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. As regards the first and third circumstances set out above, at the time of the Complaint, the disputed domain name did not resolve to an active website and currently resolves to a webpage displaying hyperlinks to a sports betting website. The disputed domain name incorporates the Complainant’s SONIA RYKIEL mark as its initial element. It is clear from the Complaint that the Respondent is not affiliated with the Complainant in any way. Nothing in the content of the Respondent’s website suggests any reason for his choice of the disputed domain name besides attracting Internet users searching for the Complainant or its products. Accordingly, the Panel does not consider the Respondent’s use of the disputed domain name to be in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy. Nor does the Panel consider this to be a legitimate noncommercial or fair use of the disputed domain name within the circumstances of paragraph 4(c)(iii) of the Policy. As regards the second circumstance set out above, the Respondent’s name is listed in the Registrar’s WhoIs database, as “Long Li” or “Li Long”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by paragraph 4(c)(ii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint. Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows: “(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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] web site or location.” The disputed domain name was registered in 2020, long after the registration of the Complainant’s SONIA RYKIEL trademark, including in China, where the Respondent is resident. The SONIA RYKIEL trademark is comprised of a person’s name, not dictionary words. The disputed domain name wholly incorporates the SONIA RYKIEL mark and combines it only with the dictionary word “digital”. The disputed domain name was registered soon after the relaunch of the SONIA RYKIEL brand by the Complainants. The Respondent offers no explanation for his choice of the disputed domain name. In view of these circumstances, the Panel considers it likely that the Respondent knew of the Complainant’s SONIA RYKIEL trademark at the time that he registered the disputed domain name and targeted it in bad faith. At the time of the Complaint, the disputed domain name did not resolve to an active website. In the circumstances of this case, passive holding of the disputed domain name does not prevent a finding of bad faith. The Respondent currently uses the disputed domain name, which is confusingly similar to the Complainant’s SONIA RYKIEL mark, in connection with a webpage displaying hyperlinks to a sports betting website. This use is for the commercial gain of the Respondent, or the operators of the linked website, or both. Given the Panel’s findings in section 6.2B above, the Panel considers that the disputed domain name is intended to attract Internet users by creating a likelihood of confusion with the Complainant’s SONIA RYKIEL trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website within the terms of paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 Matthew Kennedy
Sole Panelist
Date: February 28, 2021
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