ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Yves Saint Laurent Parfums v. Tran Thi Tuyet Nhung, Tran Thi Tuyet Nhung Case No. D2025-1491 1. The Parties The Complainant is Yves Saint Laurent Parfums, France, represented by Dreyfus & associés, France. The Respondent is Tran Thi Tuyet Nhung, Tran Thi Tuyet Nhung, Viet Nam. 2. The Domain Name and Registrar The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2025. On April 14, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2025, 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 (Not disclosed) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 16, 2025, 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 April 18, 2025. 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 April 28, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2025.
page 2 The Center appointed Ik-Hyun Seo as the sole panelist in this matter on June 5, 2025. 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 is a French luxury fashion house founded in 1961, which expanded to fragrances and cosmetics in the 1980s and 1990s. The Complainant owns the trademarks YSL and YVES SAINT LAURENT including the trademark YSL, registered in Malaysia on November 22, 2007 (Trademark Registration Number 05017540), and trademark YSL and Design, registered in Malaysia on January 11, 2013 (Trademark Registration Number 07024975). The Complainant operates a website at the domain name which was registered on February 19, 2007. The Respondent appears to be an individual with an address in Viet Nam. The disputed domain name was registered on March 14, 2025, and resolves to a website prominently displaying the Complainant’s YSL and YVES SAINT LAURENT marks and advertising the Complainant’s YVES SAINT LAURENT perfume products for sale. 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 name. Notably, the Complainant contends that the disputed domain name is identical or at least confusingly similar to the YSL mark in which the Complainant has rights since the disputed domain name reproduces the YSL trademark, combined with the term “beauty” which is generic and descriptive and the term “Malaysia” which is a geographical term. The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name and confirms that it has not authorized or licensed rights to the Respondent in any respect. The Complainant further contends that there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name in providing any bona fide offering of goods or services, nor any evidence that the Respondent has been commonly known by the disputed domain name, or a legitimate noncommercial or fair use of the disputed domain name by the Respondent. The Complainant further contends that the Respondent has linked the disputed domain name to a website that creates a false affiliation with the Complainant and displays alleged YSL products, which is likely to mislead Internet users into believing that it is an official website of the Complainant, and does not represent use in connection with a bona fide offering of goods and services. Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant contends that it is implausible for the Respondent to have been unaware of the Complainant at the time of registration of the disputed domain name, especially considering the nature of the contents displayed on the website linked to the disputed domain name. The Complainant also contends that the composition of the dispute domain name entirely reproduces the Complainant’s YSL trademark and closely imitates its official domain name, which further indicates that the Respondent was aware of the Complainant and its marks when registering the disputed domain name. In addition, the Complainant contends that the website at the disputed domain name offers for sale alleged YSL Beauty branded products, thereby creating the false impression that it is an authorized distributor or official retail platform of the Complainant, and that more likely than not, the Respondent’s primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of Complainant’s trademark rights,
page 3 through the creation of initial interest of confusion. Further, the Complainant contends that the goods sold at the website are likely counterfeits, based on the prices of the goods which are discounted 65% of genuine goods. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 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 trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms – here, “beauty” and “Malaysia” – 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 name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. 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. Although 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 difficult 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 (although the burden of proof always remains on the complainant). 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 available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. 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 name such as those enumerated in the Policy or otherwise. Moreover, “UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it
page 4 effectively impersonates or suggests sponsorship or endorsement by the trademark owner.” WIPO Overview 3.0, section 2.5.1. Here, the descriptive and geographical terms “beauty” and “Malaysia” are added after the YSL mark which may mislead Internet users into believing that the website at the disputed domain name is related to and/or operated by the Complainant’s subsidiary in Malaysia, contrary to the fact. 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 Respondent clearly targeted the Complainant when registering the disputed domain name. The disputed domain name is composed in such a manner that it mimics one of the Complainant’s actual domain names, and further, based on the fame of the Complainant’s mark, it is extremely unlikely for the Respondent to have registered it by chance without prior knowledge of the Complainant and its mark. Further, the disputed domain name is linked to a website prominently displaying the Complainant’s marks and offering perfume products of the Complainant for sale, while not disclosing its lack of any affiliation with the Complainant, misleading Internet visitors to believe that the website is a website operated by the Complainant or by someone with a relationship with the Complainant. The Complainant contends that the products advertised are counterfeit based on the significantly lower prices to those of genuine products, though no evidence was submitted authenticating the products as counterfeit. Nonetheless, based on the facts of this case, the Panel finds that at the very least, the Respondent is using the disputed domain name in bad faith by misleading Internet visitors, and that the Respondent intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark. The Panel finds that the Complainant has established the third element 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 be transferred to the Complainant. /Ik-Hyun Seo/ Ik-Hyun Seo Sole Panelist Date: June 21, 2025
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