The Complainant is Yves Saint Laurent, France, represented by IP Twins, France.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Gavin Lyu, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2021. On August 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 2021, 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 September 6, 2021, 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 September 8, 2021.
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 September 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2021. The Respondent did not submit any
response. Accordingly, the Center notified the Respondent’s default on October 15, 2021.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on October 21, 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 BackgroundThe Yves Saint Laurent fashion house was founded in 1961 and 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 more than EUR 1.7 billion in 2020.
YVES SAINT LAURENT, commonly represented by its initials YSL are both considered well-known trademarks. Its online store, available at “/www.ysl.com”, is in French, English and Chinese language, references several physical stores worldwide including in mainland China, Hong-Kong, China, and in Singapore. It also ships to more than 50 countries on all continents.
The Complainant is the owner of several trademark registrations consist of or contain the word “YSL”, which have been registered in numerous countries all over the world. Amongst others, International trademark registration YSL, No. 254533, registered on April 10, 1962.
The Complainant is the registrant of the domain name
This disputed domain name
The Complainant argues that the disputed domain name is confusingly similar to its YSL trademark as it incorporates the whole trademark.
As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. The addition of other terms in the domain name may not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark. (NG Biotech v. Whois Agent, Domain Protection Services, Inc. / Patrice SARDA,WIPO Case No. D2021-0177).
The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent has registered the disputed domain name with rights or legitimate interests.
The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including its trademarks.
The Complainant requests that the disputed domain name be transferred to it.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(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 was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly SimilarIn the present case, the disputed domain name incorporate the word “ysl1”, which is confusingly similar to the Complainant’s registered well-known trademark YSL.
The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006‑0189, and Audi AG and Volkswagen AG v. Glenn Karlsson-Springare,WIPO Case No. D2011‑2121: “The additional word ‘environment’ following the trademarks AUDI, VW and VOLKSWAGEN in the disputed domain names is merely generic and does not avoid a finding of confusing similarity of the disputed domain names with Complainants’ trademarks.”; see also section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds the addition of the number “1” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. The Panel therefore concludes that the disputed domain
The Panel finds the first element of the Policy has therefore, been met.
B. Rights or Legitimate InterestsAccording to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent is not in any way affiliated with the Complainant, nor has the Complainant authorized or licensed the Respondent to use its trademark, or to seek registration of any domain name incorporating said trademark.
The Respondent has not demonstrated that it has rights or legitimate interests in the disputed domain name.
The Complainant contends that there is no relationship with the Respondent that gives rise to any license, permit, or other right to which the Respondent could enjoy such use of any domain name incorporating the Complainant’s YSL trademark.
The Respondent has registered the disputed domain name attempting to attract Internet users by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the websites.
The Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Moreover, the Panel finds that the disputed domain name carry a risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0).
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithThe Complainant contends that the Respondent’s registration and use of the disputed domain name is in bad faith, which the Respondent did not rebut.
On the evidence adduced it is improbable that the registrant of the disputed domain name was unaware of the Complainant’s name, trademark, reputation and goodwill when the disputed domain name was registered.
In The Nasdaq Stock Market, Inc., v. Hamid Reza Mohammad Pouran,WIPO Case No. D2002-0770, the panel held: “The Respondent knew or should have known of the existence of the Complainant, [as] the Complainant’s trademark [was] widely publicized globally and constantly featured throughout the Internet, and thus the Panel decides that the disputed domain names were registered in bad faith”.
The Complainant has demonstrated that the disputed domain name
On the basis of the above, noting also the nature of the disputed domain name, the Panel finds that the Respondent registered the disputed domain name to attract Internet users by creating a likelihood of confusion with the Complainant’s trademarks and domain names with the intention to use them for some illegitimate purpose.
Accordingly, pursuant to paragraph 4(b) of the Policy, this Panel finds that disputed domain names were registered and have been used in bad faith by the Respondent.
On this basis the Panel finds that the Complainant has satisfied the third and last element of the Policy, paragraph 4(a)(iii).
7. DecisionFor 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
Eva Fiammenghi
Sole Panelist
Date: November 4, 2021