The Complainant is Promod of Marcq-en-Baroeul, France, represented by Dreyfus & associés, France.
The Respondent is Zhaoxingming of Huaian, Jiangsu, China. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2018. On August 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 10, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On August 14, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On August 20, 2018, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the 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 August 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2018.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on September 21, 2018. 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, founded as a fashion boutique in 1975, is now one of France’s largest fashion store chains and owns more than 700 retail outlets in 42 countries. Promod launched its first online store in 1999. In 2006, the brand was introduced in Asia. Promod also administers a Facebook page which connects more than 1 million followers.
The Complainant owns the trademark PROMOD for use in connection with women’s clothing, women’s shoes, jewelry, and accessories. The Complainant owns International Trademark Registration Nos. 743777 (registered October 11, 2000 and covering goods in Class 25) and 597138 (registered February 8, 1993 and covering goods in Classes 24, 25, and 26), designating China, for the PROMOD mark, both of which are protected in several jurisdictions. The Complainant registered the domain names and in 1996 and 2006, respectively and uses them to promote its PROMOD trademark and to promote its goods and services.
The Respondent registered the Disputed Domain Name on December 7, 2017. The Disputed Domain Name resolves to a parking page consisting of links related to clothing, which is the Complainant’s field of activity. The page also indicates that the Disputed Domain Name is for sale. The website to which the Disputed Domain Name resolves includes English, French and Chinese words.
The Complainant made efforts to resolve the dispute prior to filing the Complaint. The Complainant sent a cease-and-desist letter to the Respondent via email, requesting that the Respondent ceased use of the Disputed Domain Name and transferred the same to the Complainant. The Respondent replied back and simply indicated that the Disputed Domain Name was for sale at a minimum price of USD 1,500. Consequently, the Complainant informed the Respondent that it should assume the financial burden to transfer the Disputed Domain Name because of the Respondent’s lack of prior audit to determine if the Disputed Domain Name could violate the rights of third parties and its lack of request of an authorization from the Complainant. The Respondent replied to this mail and reiterated its offer to sell the Disputed Domain Name at USD 1,500. 5. Parties’ Contentions A. Complainant
The Complainant requests that the Disputed Domain Name be transferred to the Complainant based on the following grounds:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant owns numerous PROMOD trademark registrations around the world. In addition, the Complainant operates domain names, including and , reflecting its trademark in order to promote its goods and services. The Disputed Domain Name reproduces entirely the Complainant’s trademark PROMOD, which previous panels have considered to be “well-known” or “famous”. Moreover, the adjunction of the country code Top-Level Domain (“ccTLD”) “.cc” does not cause the Disputed Domain Name to be distinguishable from the Complainant’s trademark. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant asserts that it has neither affiliated with the Respondent in any way nor has it licensed or granted permission to the Respondent to use the PROMOD trademark in any form, including use of this trademark in the Disputed Domain Name. The Respondent does not have any prior rights or legitimate interests in the Disputed Domain Name since it was registered by the Respondent some years after the Complainant first registered and used its trademark. Furthermore, the Disputed Domain Name directs Internet users to a parking page, displaying commercial links related to clothing, with pay-per-clicks links which are likely to generate revenues. Moreover, the Respondent has a clear intention for commercial gain as the Respondent replied to the Complainant’s cease-and-desist letter by simply indicating that the Disputed Domain Name price was USD 1,500. Furthermore, email servers have been configured on the Disputed Domain Name and thus, there might be a risk that the Respondent is engaged in a phishing scheme. Therefore, the Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Names and has no rights or legitimate interests in respect to the Disputed Domain Name.
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
1) Registration in bad faith
The Complainant’s PROMOD trademark is a well-known trademark throughout the world and the composition of the Disputed Domain Name reproducing entirely the Complainant’s trademark PROMOD. Therefore, the Respondent could not be unaware of the existence of the Complainant’s well‑known trademark. Supposing that the Respondent was not aware of the possibility of searching trademarks online before registering a domain name, a simple search via Google or any other search engine using the keyword “promod” demonstrates that all first results relate to the Complainant’s products or news.
2) Use in bad faith
The Respondent is using the Disputed Domain Name to direct Internet users to a website for commercial gains by creating a likelihood of confusion with the Complainant’s PROMOD trademark. Furthermore, the Respondent has previously been involved in a UDRP case where it registered a domain name incorporating a third party’s trademark. It appears therefore that the Respondent is a cyber-squatter and this set of behavior cannot reasonably be deemed to be a registration in good faith. Finally, the offer to sell a domain name for an amount in excess of the out of pocket expenses of the Respondent in registering the Disputed Domain Name can be compelling evidence of bad faith registration and use.
Thus, the Disputed Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Preliminary Procedural Issues Language of the Proceeding
The Panel determines that the language of the proceeding should be English. Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. The Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant requested the proceeding be in English. The Center formally notified the Respondent of the Complaint in both Chinese and English, giving the Respondent opportunity to comment on the language of the proceeding. The Respondent did not reply to the Center’s request for comment on the Language of Proceedings. The Disputed Domain Name resolves to a website that contains English words and links that redirect Internet users to other websites that contain English words. Prior to these proceedings, the Respondent has replied back to the Complainant’s cease-and-desist letter twice in English, indicating that the Disputed Domain Name was for sale at a minimum price of USD 1,500. Lastly, if the Complainant were required to submit all documents in Chinese, the proceeding would be unduly delayed and the Complainant would incur substantial expenses. Thus, the Panel concludes that the language of proceedings should be English. 7. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”
The Complainant has rights in the PROMOD trademark. It is the registered owner of trademark registrations, including in China, for the PROMOD mark. Use and registration of the PROMOD mark by the Complainant precedes the Respondent’s registration of the Disputed Domain Name by decades. Previous cases have found that the Complainant’s mark is internationally well known (Promod v. Hossein Sadeghi,WIPO Case No. D2015-0258; Promod v. Yuan Qi aka Qi Yuan,WIPO Case No. DPW2016-0004).
The Disputed Domain Name is identical to the Complainant’s trademark. It consists solely of the term “promod”, which is identical to the Complainant’s PROMOD trademark. The addition of the ccTLD does not distinguish the Disputed Domain Name from the Complainant’s trademark (see section 1.11 of WIPO Overview 3.0), and the ccTLD “.cc” is irrelevant as it does not affect the confusing similarity between the Disputed Domain Name and the trademark (Amundi S.A. v. Songguangxiu,WIPO Case No. DCC2018‑0001).
The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s PROMOD trademark. The condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative‑dispute‑resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”
Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
A complainant may show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). The Complainant has established that it is the owner of the PROMOD trademark and confirmed that it has no connection or affiliation with the Respondent. It appears that the Disputed Domain Name is unrelated to the Respondent’s name and there is no evidence in the record that the Disputed Domain Name has any connection with the Respondent’s name or the Respondent is otherwise commonly known by the Disputed Domain Name. The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production thus shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.
The Respondent did not submit any evidence or allegation to show that it has rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy in respect of the Disputed Domain Name. Therefore, the Respondent has not claimed that it has rights or legitimate interests in the Disputed Domain Name.
The Disputed Domain Name resolves to a parking page displaying commercial links related to clothing. There is no indication that the Respondent offers the Complainant’s products for sale (either with or without authorization), thus the Panel finds that the Respondent did not demonstrate use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services as contemplated by paragraph 4(c)(i) of the Policy.
The evidence provided by the Complainant demonstrates that the Disputed Domain Name resolves to pay‑per-click advertising. Such use demonstrates that the Respondent has used the Disputed Domain Name to derive a commercial benefit. Moreover, the Respondent replied to the Complainant’s cease‑and‑desist letter by simply indicating that the Disputed Domain Name price was USD 1,500 for twice. Therefore, it appears that the Respondent has registered the Disputed Domain Name for the purpose of selling it to the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name. Therefore, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative‑dispute‑resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith”.
Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or has acquired the disputed 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 the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
The Complainant and its PROMOD mark are widely known throughout the world. Additionally, the Complainant owns trademark registrations in several jurisdictions, including in China where the Respondent is located. No allegation or evidence suggests that the Respondent selected the PROMOD trademark as used in the Disputed Domain Name for any reason other than the reputation of the Complainant’s trademark. Therefore, the Panel finds that the Respondent was aware of the Complainant’s PROMOD mark at the time of registration of the Disputed Domain Name and that the Disputed Domain Name was registered in bad faith (Alstom v.Domain Investments LLC,WIPO Case No. D2008-0287).
According to the evidence filed by the Complainant, the Disputed Domain Name directs Internet users to a parking page with pay-per-clicks links. It appears that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to other website by creating a likelihood of confusion with the Complainant’s trademark. The use of a well-known trademark to attract Internet users to a website for commercial gain constitutes use in bad faith (FHoffmann-La Roche AG v. Anna Valdieri,WIPO Case No. D2007-0956).
Furthermore, the Respondent has previously been involved in a UDRP case where it registered a domain name incorporating third party’s trademark (Wärtsilä Technology Oy Ab v. Zhaoxingming,WIPO Case No. DCC2018-0003). The previous panel held that the Respondent was involved in cybersquatting behavior and made multiple registrations in bad faith (Compagnie Générale des Etablissements Michelin, Michelin Recherche et Technique S.A. v. Rajeev Sankaran,WIPO Case No. D2012-0730).
In addition, the Respondent asking the Complainant to pay USD 1,500 to transfer the Disputed Domain Name demonstrates that the Disputed Domain Name is being used in bad faith. The offer to transfer the Disputed Domain Name for sums exceeding the reasonable cost of registration and maintenance falls squarely within the circumstances in paragraph 4(b)(i) of the Policy which is evidence of bad faith. Further the current use of the Website is for the purpose of selling the Disputed Domain Name with the caveat that any offer is subject to meeting the expectations of the Disputed Domain Name owner. An indication of the likely expectation has been given in the offer of sale to the Complainant which supports the bad faith use under this limb (Wärtsilä Technology Oy Ab v. Zhaoxingming,WIPO Case No. DCC2018-0003).
Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the condition of paragraph 4(a)(iii) of the Policy has been fulfilled. 8. 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.
Peter J. Dernbach
Sole Panelist
Date: October 4, 2018
Full & Egal Universal Law Academy