ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Yves Saint Laurent SAS v. Ilyas Kerbal Case No. DAE2023-0001 1. The Parties The Complainant is Yves Saint Laurent SAS, France, represented by IP Twins, France. The Respondent is Ilyas Kerbal, Morocco. 2. The Domain Name and Registrar The disputed domain name (the "Disputed Domain Name") is registered with AE Domain Administration (.aeDA). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 24, 2023. On January 25, 2023, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrant verification in connection with the Disputed Domain Name. On January 26, 2023, AE Domain Administration (.aeDA) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for - UAE DRP approved by .aeDA (the "Policy"), the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the "Rules"), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the "Supplemental Rules"). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 31, 2023. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2023. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on February 21, 2023. The Center appointed Nick J. Gardner as the sole panelist in this matter on February 28, 2023. 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. page 2 4. Factual Background The Complainant was founded in 1961 and it 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 EUR 1.18 billion in 2019. The Complainant's online store, available at "www.ysl.com", is available in English and Chinese language, and references several physical stores worldwide including in mainland China and in Singapore. The Complainant is the owner of numerous registered trademarks that comprise the letters "YSL" in various jurisdictions throughout the world. See for example Emirati trademark registration YSL No. 021086 registered on May 30, 1999. These trademarks are referred to as the YSL trademark in this decision. The Complainant is also the holder of among others the domain name since April 22, 1998, which it uses for its official website. The Disputed Domain Name was registered on December 8, 2022. It resolves to a web page which indicates the Disputed Domain Name is for sale. On December 9, 2022 the Respondent sent a LinkedIn message to a named individual at the Complainant which was entitled "Your UAE website is unavailable (Yves Saint Laurent)" and which read as follows: "We have recently acquired the domain name ysl.ae, and we are writing to you to offer this domain for sale. The domain is extremely affordable, and I am confident that it could be a great long-term asset for your company. I am happy to answer any questions you may have and discuss any other details you would like to know. It is important to act quickly, as the domain is currently available. If you miss this opportunity, the domain may be acquired by another party, resulting in potential customers being directed to the wrong website. This would mean losing potential customers and traffic from the UAE. By owning ysl.ae, you can ensure that customers looking for products from Yves Saint Laurent are directed to your website and not to a scam or counterfeit website. We urge you to act quickly to acquire this domain name and prevent losing potential customers and traffic from the UAE. Sincerely, I.K." 5. Parties' Contentions A. Complainant The following is a summary of the Complainant's contentions. The Disputed Domain Name is identical to the Complainant's YSL trademark. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant has not authorised the Respondent to use its trademark or register the Disputed Domain Name. The Disputed Domain Name has been registered and is being used in bad faith. The Complainant relies on the fact that the Respondent has not substantively used the Disputed Domain Name and as soon as it had registered the Disputed Domain Name, it offered it for sale to the Complainant, whilst at the same time page 3 threatening that if the Complainant did not buy it, the Disputed Domain Name could be used by a third party for the sale of counterfeit products. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Preliminary issue - Nature of the .AE Policy So far as the .AE Policy is concerned the Panel notes that it is substantially similar to (though not identical to) the Uniform Domain Name Dispute Resolution Policy (the "UDRP") as adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). The Panel will where appropriate apply principles that have been established in relation to the UDRP in determining this dispute. Preliminary issue - no Response The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to "employ reasonably available means calculated to achieve actual notice". Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent's failure to file any Response. While the Respondent's failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent's default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909). Substantive Matters Under paragraph 6(a) of the Policy the Complainant is required to prove on the balance of probabilities that: - the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and - the Disputed Domain Name has been registered or is being used in bad faith. A. Identical or Confusingly Similar The Complainant has rights in the YSL trademark. The Panel finds the Disputed Domain Name is identical to this trademark. It is well established that the Top-Level Domain in this case ".ae", does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark and hence the first condition of paragraph 6(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests The Panel finds the YSL trademark is, on the evidence before the Panel, a term in which the Complainant has developed a significant reputation. page 4 Paragraph 6(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name: (i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use YSL trademark. The Complainant has prior rights in the YSL trademark which precede the Respondent's acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 6(a) of the Policy has been fulfilled. C. Registered or Used in Bad Faith In the present circumstances, the evidence as to the extent of the reputation the Complainant enjoys in the YSL trademark, and the fact that the Disputed Domain Name was immediately after registration offered for sale to the Complainant lead the Panel to conclude the registration and use were in bad faith. Under paragraph 6(b) of the Policy a non-exhaustive list of factors evidencing registration or use in bad faith comprises: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location. page 5 In the present circumstances, the Panel concludes that the Respondent's LinkedIn message of December 9, 2022 (see above) clearly establishes that (i) above applies. The Panel also notes that the Respondent has not filed a Response and hence has not availed himself of the opportunity to present any case of good faith that he might have. The Panel infers that none exists. Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 6(a) of the Policy has been fulfilled. 7. Decision For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant. /Nick J Gardner/ Nick J Gardner Panelist Date: March 14, 2023
Full & Egal Universal Law Academy