ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Tricots Saint-James, SAS v. 钱念真 (Martin Parker), 窦白梦 (Parker Martin) Case No. D2024-2381 1. The Parties The Complainant is Tricots Saint-James, SAS, France, represented by Fidal, France. The Respondents are 钱念真 (Martin Parker), China and United States of America (“U.S.”) and 窦白梦 (Parker Martin), China and U.S.. 2. The Domain Names and Registrar The disputed domain names and are registered with West263 International Limited (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2024. On June 12, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 13, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (No information) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 18, 2024 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the Complainant to either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint in English on June 21, 2024. On June 18, 2024 the Center informed the parties in Chinese and English, that the language of the registration agreement for the disputed domain names is Chinese. On June 21, 2024, the Complainant requested English to be the language of the proceeding. The Respondents did not submit any comment on the Complainant’s submission. 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
page 2 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 Respondents of the Complaint in English and Chinese, and the proceedings commenced on June 25, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2024. The Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2024. The Center appointed Karen Fong as the sole panelist in this matter on July 19, 2024. 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 Based in France, the Complainant has since 1889 been manufacturing and selling clothing and fashion accessories for men, women and children under the trade mark SAINT JAMES. The Complainant has more than 173 points of sale in France and Europe. It is particularly well known for its Breton tops. The Complainant also sells its products through its main website connected to the domain name . The domain name was registered in 2001. The Complainant’s trade mark registrations for the SAINT JAMES trade mark include the following: - French Trade Mark Registration No. 4000393 for SAINT JAMES, registered on October 4, 2013; - International Trade Mark Registration No. 1178246 for SAINT JAMES designating inter alia, the European Union (“EU”), U.S., and China, registered on May 2, 2013; and - EU Trade Mark Registration No. 4549780 for SAINT JAMES & Device (the “Logo Mark”), registered on October 4, 2019 (individually and collectively, the “Trade Mark”). Both the disputed domain names were registered by the Respondents, who appear to be based in the U.S. and/or China, in May 2024 within a few days of each other with on the May 15, 2024 and on the May 8, 2024. The disputed domain names resolved to websites (the “Websites”) which mimic the Complainant’s own website by using its copyright material, prominently displaying the Trade Mark including the Logo Mark in the banner and heading of the webpages, and offering for sale products that bear the Trade Mark at discounted prices which purport to be the Complainant’s products without any disclaimer clarifying the (lack of) relationship between the Parties. The Websites appear virtually identical. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, the Complainant contends that the disputed domain names are confusingly similar to the Trade Mark in which it has rights, that the Respondents have no rights or legitimate interests with respect to the disputed domain names, and that the disputed domain names were registered and are being used in bad faith. B. Respondents The Respondents did not reply to the Complainant’s contentions.
page 3 6. Discussion and Findings 6.1. Preliminary Issues A. Consolidation: Multiple Respondents The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the Complaint against the disputed domain names registrants pursuant to paragraph 10(e) of the Rules. The disputed domain names registrants did not comment on the Complainant’s request. Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. As regards common control, the Panel notes the following: (1) The disputed domain names include the Trade Mark as part of them; (2) The disputed domain names are registered through the same Registrar seven days apart; (3) The two registrants have different names in Chinese characters but the same two names in English except that they are reversed. They also have the same address and telephone number which appears to be an American address and number, but the registrant country is stated as U.S. in English but China in Chinese characters. (4) The Websites contain almost identical content, and both mimic the Complainant’s websites; and (5) The Respondents failed to file responses. The evidence submitted points to the fact that the disputed domain names are subject to common control by the Respondents. The above pattern evidences common conduct based on the registration and use of the disputed domain names, and such conduct interferes with the Trade Mark. The Respondents had the opportunity but did not respond to the Complaint. As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain names registrants (referred to below as “the Respondent”) in a single proceeding. B. Language of the Proceeding The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complaint was filed in English. The Complainant requested that the language of the proceeding be English as English is the international language for business and both the disputed domain names and Websites are in the English language and contain contact details in the U.S.. This is a clear indication that
page 4 the Respondent is familiar and understands the English language. Having to translate the Complaint into Chinese would lead to additional costs and delay and would unfairly penalize the Complainant. The Respondent has not challenged the Complainant’s language request and in fact has failed to file a response in either English or Chinese. In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview 3.0, section 4.5.1). Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2 Substantive Issues A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trade mark and the disputed domain name. WIPO Overview 3.0, section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds that the entirety of the Trade Mark is reproduced within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the Trade Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. While the addition of other terms here “mall” and “vip” may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the Trade Mark for the purposes of the Policy. WIPO Overview 3.0, sections 1.8. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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. WIPO Overview 3.0, section 2.1. Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.
page 5 Moreover, the nature of the disputed domain names is inherently misleading as they effectively impersonate or suggest sponsorship or endorsement by the Complainant. WIPO Overview 3.0, section 2.5.1. Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent must have been aware of the Trade Mark when he registered the disputed domain names given the reputation of the Trade Mark and the fact that it was registered and used for such an extensive period prior to the registration of the disputed domain names. In the WIPO Overview 3.0, section 3.2.2 states as follows: “Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.” The fact that there is a clear absence of rights or legitimate interests coupled with the Respondent’s choice of the disputed domain names without any explanation is also a significant factor to consider (as stated in WIPO Overview 3.0, section 3.2.1). The disputed domain names fall into the category stated above and the Panel finds that the registration is in bad faith. The disputed domain names are also being used in bad faith. The unauthorised use of the Complainant’s copyright material including images from the Complainant’s website, the Trade Mark, the Logo Mark, and the purported offer for sale of products bearing the Trade Mark at discounted prices on the Websites are clear indications of use for potentially illegal activity. The content of the Websites is calculated to give the impression they have been authorised by or connected to the Complainant when this is not the case. These Websites were set up to deliberately mislead Internet users that they are connected to, authorised by, or affiliated with the Complainant. The Respondent employs the fame of the Trade Mark to mislead Internet users into visiting the Websites instead of the Complainant’s. From the above, the Panel concludes that the Respondent has intentionally attempted to attract, for commercial gain, by misleading Internet users into believing that the Websites and the products purportedly offered for sale and sold on them are those of or authorised or endorsed by the Complainant. It is highly likely that Internet users when typing the disputed domain names into their browser or finding them through a search engine would have been looking for a site operated by the Complainant rather than the Respondent. The disputed domain names are likely to confuse Internet users trying to find the Complainant’s official website. Such confusion will inevitably result due to the fact that both the disputed domain names comprise the Trade Mark in its entirety. The Panel therefore also concludes that the disputed domain names were registered and are being used in bad faith under paragraph 4(b)(iv) of the Policy. Based on the available record, the Panel finds the third element of the Policy has been established.
page 6 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 names and be transferred to the Complainant. /Karen Fong/ Karen Fong Sole Panelist Date: July 29, 2024
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