The Complainant is Laboratoires Expanscience, France, represented by Nameshield, France.
The Respondent is 权中俊 (Quan Zhong Jun), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2021. On September 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 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 October 5, 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 in English on October 6, 2021.
On October 5, 2021, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on October 6, 2021. 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 in English and Chinese of the Complaint, and the proceedings commenced on October 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2021.
The Center appointed Jonathan Agmon as the sole panelist in this matter on November 8, 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 Complainant, Laboratoires Expanscience, is a French family-owned pharmaceutical and dermo-cosmetics laboratory which has been operating for more than 70 years. The Complainant develops and manufactures skincare products, including two brands “Piasclédine 300” and “Mustela”, which are sold in nearly 120 countries. The Complainant owns 14 subsidiaries around the world and earned more than EUR 250 million turnover in 2020. In 2020, 75% of the Complainant’s turnover was generated by international business.
The Complainant owns the following MUSTELA trademark registrations, including but not limited to:
- International Registration No. 154904 for MUSTELA registered on July 16, 1951; and
- International Registration No. 574185 for MUSTELA registered on August 1, 1991, which designates China.
The Complainant also owns the domain name
The disputed domain name
The Complainant argues that the disputed domain name is confusingly similar to its MUSTELA trademark as the disputed domain name wholly contains “mustela” in its entirety with the addition of the geographical term “us” which is insufficient to avoid the finding of confusingly similarity. The addition of the generic Top-Level Domain (“gTLD”) “.com” also does not prevent the likelihood of confusion between the disputed domain name and the Complainant’s trademark.
The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name as it is not affiliated with or authorized the Respondent to use any of its trademarks or register the disputed domain name and that the Respondent is not commonly known by the disputed domain name.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith for commercial gain by creating a likelihood of confusion with the Complainant’s MUSTELA mark and the Respondent had actual knowledge of the Complainant’s mark at the time of registration.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1 Language of the ProceedingParagraph 11 of the Rules provides that: “(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding be English.
The Respondent did not comment on the language of the proceeding.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (See Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) the disputed domain name consists of Roman letters, rather than Chinese characters;
(ii) the Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language; and
(iii) Although the Respondent has been notified by the Center in English and Chinese of the language of the proceeding, the Respondent did not object to the Complainant’s request that English be the language of the proceeding.
Upon considering the above, the Panel determines that English be the language of the proceeding.
6.2 Substantive Issues A. Identical or Confusingly SimilarParagraph 4(a)(i) of the Policy requires a complainant to show that a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belongs to its respective owner. The Complainant has provided evidence that it owns the MUSTELA trademarks.
The disputed domain name wholly contains the MUSTELA trademark in its entirety with the addition of the geographical term “us” (which stands for the United States of America) and the gTLD “.com”.
It is established that “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusingly similar” for purposes of the first element (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
It is also established that the applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (WIPO Overview 3.0, section 1.11). The addition of a gTLD to a disputed domain name does not avoid a finding of confusing similarity as the use of a gTLD is technically required to operate a domain name (see Accor v. Noldc Inc.,WIPO Case No. D2005-0016; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; L’Oréal v Tina Smith,WIPO Case No. D2013-0820; Titoni AG v Runxin Wang,WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A.,WIPO Case No. D2009-0877).
The disputed domain name consists of the Complainant’s MUSTELA mark, the addition of the geographical term “us” and the gTLD “.com” which in the Panel’s view does not avoid a finding of confusing similarity with the Complainant’s trademark (see Schneider Electric S.A. v. Domain Whois Protect Service / Cyber Domain Services Pvt. Ltd.,WIPO Case No. D2015-2333).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the MUSTELA mark and paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsParagraph 4(a)(ii) of the Policy requires the complainant to show that the respondent has no rights or legitimate interests in respect of the domain name. Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the domain name (see WIPO Overview 3.0, section 2.1).
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Complainant submitted evidence that it did not authorize or license the Respondent to use the MUSTELA mark (see OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org,WIPO Case No. D2015-1149; Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The Complainant also submitted that the Respondent’s use of the disputed domain name resolves to a parking page with PPC links related to the Complainant’s business. It is well established that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering of goods or services where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see WIPO Overview 3.0, section 2.9). In this case, the Panel finds that the Respondent is not making a bona fide offering of goods or services as the PPC links on the website at the disputed domain name appear to be competitive with the Complainant and would also mislead unsuspecting Internet users seeking the Complainant.
In addition, the evidence submitted by the Complainant shows that the Respondent is not commonly known by the disputed domain name.
The Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name which is sufficient to rebut the Complainant’s prima facie case.
The Panel is therefore of the view that the Respondent has no rights or legitimate interests in respect of the disputed domain name and accordingly, paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad FaithThe complainant must show that the respondent registered and is using the disputed domain name in bad faith (paragraph 4(a)(iii) of the Policy). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence that the disputed domain name resolves to a parked page containing PPC links on the website that appear to be competitive with the Complainant and would likely mislead unsuspecting Internet users seeking the Complainant. It is up to the Respondent to control the content appearing on the website under the disputed domain name. PPC links that provide links to competitors of the Complainant represent a clear indication of bad faith registration and use of the disputed domain name.
The Complainant also states that given the distinctiveness of its MUSTELA marks and its reputation, it is reasonable to infer that the Respondent was aware of the Complainant and its MUSTELA marks at the time of registration of the disputed domain name.
In addition, the Respondent did not submit a Response this proceeding which is a further indication of the Respondent’s bad faith, which has been considered by the Panel.
Based on the totality of evidence presented to the Panel, including the confusing similarity between the disputed domain name and the Complainant’s mark, the distinctive nature of the Complainant’s mark, the fact that the disputed domain name is being used for PPC links to competitive products or services, and the fact that no Response was submitted by the Respondent to the Complaint, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith, and accordingly, paragraph 4(a)(iii) of the Policy is satisfied.
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,
Jonathan Agmon
Sole Panelist
Date: November 22, 2021