The Complainant is Yves Saint Laurent, France, represented by IP Twins, France.
The Respondent is Ye Li, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2021. On December 20, 2021, the Center transmitted by email to Registry .MX a request for registrar verification in connection with the disputed domain name. On December 21, 2021, Registry .MX transmitted by email to the Center its verification response disclosing information on the Registrar and confirming that the Respondent is the person that appears as registrant, and providing his administrative, technical, and billing contact information.
The Center verified that the Complaint satisfied the formal requirements of the Domain Name Dispute Resolution Policy for “.MX” (the “Policy” or “LDRP”), the Rules for the Domain Name Dispute Resolution Policy for “.MX” (the “Rules”), and the Supplemental Rules for the Domain Name Dispute Resolution Policy for “MX” (the “Supplemental Rules”).
In accordance with article 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 7, 2022. In accordance with article 5 of the Rules the due date for Response was January 27, 2022. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on January 28, 2022.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on February 1, 2022. 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, article 9.
3.1 Language of ProceedingsThe Complaint was filed in English.
In accordance with article 13 of the Rules, the language of the proceedings is to be Spanish, unless otherwise agreed by the Parties, and subject to the Panel’s decision, considering the circumstances of the case.
In the Complaint, the Complainant requested English to be the language of the proceedings. The Respondent did not reply to the Complainant’s communication regarding the language of proceedings and did not file a Response. Therefore, there is no agreement between the parties on the language of the proceedings.
However, to preserve the spirit of the Policy, which is to provide an agile, expedite, and low-cost proceeding, the Panel decides that, in accordance with the powers granted under article 13 of the Rules, the language of the proceedings shall be English.
The Panel finds that accepting the Complaint as submitted in English, and proceeding to a Decision in English would be fair and equitable to the Parties.
This is so, because, on the balance of probabilities, English seems to be a language that is likely to be understood by the parties, considering that the Complainant is French, and the Respondent is apparently Chinese.
4. Factual BackgroundThe Complainant is a French company founded in 1961, by the couturier Yves Saint Laurent.
The Complainant owns several trademark registrations for YSL across the world, among which are the following:
Trademark
No. Registration
Jurisdiction
Date of Registration
International Classes
YSL
254533
International Registration
April 4, 1962
14, 18, 24, 25 and 26
YSL
484835
International Registration
March 26, 1984
8, 14, 18, 21, and 34
YSL
651883
International Registration
March 1, 1996
18, and 25
YSL
10187257
China
January 21, 2013
35
YSL
14045042A
China
August 14, 2015
24
YSL
1281633
Mexico
April 25, 2012
18
YSL
1875521
Mexico
April 20, 2018
25
The disputed domain name was registered on January 15, 2018. The disputed domain name resolves to a parked website comprising pay-per-click links related to the Complainant’s apparel and accessories business.
5. Parties’ Contentions A. ComplainantThe Complainant asserted the following:
That it is one of the most prominent fashion houses, marketing a broad range of women’s and men’s ready-to-wear products, leather goods, shoes, and jewelry.
That throughout the years, its groundbreaking styles have become iconic cultural and artistic references, and that its founder has secured a reputation as one of the twentieth century’s foremost designers.
That the Complainant’s products are distributed worldwide, generating a revenue of about EUR 1.7 billion in 2020.
That the Complainant’s online store is available in French, English, Chinese, and Spanish, and ships to more than 50 countries in all continents, including to China and Mexico.
I. Identical or Confusingly SimilarThat the disputed domain name is identical to the YSL trademark.
That the country code Top-Level Domain (“ccTLD”) “.mx” does not have any legal significance since the use of a Top-Level Domain is technically required to operate a domain name.
II. Rights or Legitimate InterestsThat the Respondent’s use of the disputed domain name demonstrates no connection with a bona fide offering of goods and services.
That the disputed domain name redirects to a parked website comprising pay-per-click links, as well as a link that redirects to
That the Respondent does not have any authorization, license, or any right whatsoever to register and/or use the disputed domain name.
That the Respondent is not commercially linked to the Complainant.
That the Respondent does not hold any trademark registration that would provide him with rights to or legitimate interests in the disputed domain name.
That the evidence shows that the Respondent is not known or referred to as “Yves Saint Laurent”.
That the Complainant has made a prima facie case showing the Respondent’s lack of rights to or legitimate interests in the disputed domain name.
III. Registered or Used in Bad FaithThat the Complainant believes that the YSL trademark is so widely known that it is inconceivable that the Respondent ignored the Complainant’s prior rights to the YSL trademark when registering the disputed domain name.
That the YSL trademark is well-known in China (where Respondent resides) since the Chinese upper-class is very interested in the Complainant’s products.
That several press articles have popularized the Complainant’s collections all over China, and that famous magazines have widely covered news and events related to the Complainant.
That the Respondent had the Complainant’s trademark in mind when registering the disputed domain name.
That the Respondent’s choice of the disputed domain name could not have been accidental and must have been influenced by the fame of the Complainant’s trademark.
That the Respondent knew or should have known that, when registering the disputed domain name, he would be doing so in violation of the Complainant’s prior rights.
That there is no possible explanation for the registration of the disputed domain name but the Respondent’s intention to benefit from the Complainant’s well-known trademark.
That the Respondent currently offers the disputed domain name for sale on
That the abovementioned conducts qualify as use in bad faith.
That the Respondent has been involved in several other LDRP cases as a respondent, including a previous LDRP proceeding regarding the domain name
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn accordance with article 1.a) of the Policy, the Complainant must prove that the three elements concur in order to obtain the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark, service mark, slogan, designation of origin, or reservation of rights on which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect of the disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith.
Given the Respondent’s failure to submit a Response, the Panel may decide this proceeding based on the Complainant’s undisputed factual allegations according to articles 5(e), and 14 of the Rules, and shall draw such inferences as it considers appropriate pursuant to articles 16(a) and 16(c) of the Rules (see Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292; and Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487).
This Panel points out the similarities between the Policy and the UDRP Policy. Therefore, in order to benefit from have interpretation criteria applicable to the existing circumstances, this Panel will rely on previous decisions issued within the framework of the UDRP Policy and the jurisprudence reflected in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A. Identical or Confusingly SimilarThe Complainant has proven to be the owner of registrations for the trademark YSL throughout the world, including China, where the Respondent has declared to have his domicile.
The disputed domain name is identical to the Complainant’s trademark YSL, as said disputed domain name includes it entirely (see section 1.7 of the WIPO Overview 3.0).
The inclusion of the ccTLD “.mx” in the disputed domain name constitutes a technical requirement of the Domain Name System (“DNS”). Thus, it has no legal significance in assessing identity or confusing similarity in the present case (see CARACOLITO S SAS v. Nelson Brown, OXM.CO,WIPO Case No. D2020-0268; International Business Machines Corporation v. chenaibin, WIPO Case No. D2021-0339; and Société Air France v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, WIPO Case No. D2019-0578).
In light of the above, the first element of the Policy has been met.
B. Rights or Legitimate InterestsArticle 1(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name:
“(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed 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 (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it did not acquire trademark, service mark, slogan, designation of origin, or reservation of 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, service mark, slogan, designation of origin, or reservation of rights at issue.”
This Panel considers that the Complainant has submitted enough evidence to prove that the YSL trademark is well-known. Also, the Panel agrees with the determinations reached in Yves Saint Laurent v. Lin Yunfei, WIPO Case No. D2020-2892; and Yves Saint Laurent, SAS v. shenxingyu, WIPO Case No. D2018-2589, in that the YSL trademark is well-known.
The case file contains no evidence that demonstrates that the Respondent has used or has made 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 (see Valentino S.p.A. v. Qiu Yufeng, Li Lianye,WIPO Case No. D2016-1747; and Associated Newspapers Limited v. Manjeet Singh WIPO Case No. D2019-2914).
The Complainant has asserted that there is no relationship between the Complainant and the Respondent, that it has not authorized nor granted a license to the Respondent to register the disputed domain name, and that the Respondent has not been commonly known by the disputed domain name (see Beyoncé Knowles v. Sonny Ahuja,WIPO Case No. D2010-1431, and Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272). The Respondent did not contest these allegations.
The disputed domain name resolves to a parked website comprising pay-per-click links related to the Complainant’s apparel and accessories business (such as “YSL Bags”, “Parfums”, and “Glasses”). Article 1(c) of the Policy establishes that this cannot constitute a bona fide offering of goods, because said links capitalize on the reputation and goodwill of the Complainant’s trademark, or otherwise mislead Internet users to think that there is some sort of relationship or association between the Complainant and the Respondent (see section 2.9 of the WIPO Overview 3.0; see also ABSA Bank Limited v. Domain Administrator, See PrivacyGuardian.org / Sidoti Parmer,WIPO Case No. D2020-2992; Archer-Daniels-Midland Company v. Wang De Bing,WIPO Case No. D2017-0363; Fontem Holdings 4, B.V. v. J- B-, Limestar Inc.,WIPO Case No. D2016-0344; Barceló Corporación Empresarial, S.A. v. Hello Domain,WIPO Case No. D2007-1380; and Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc.,WIPO Case No. D2017-0302).
The Complainant has established a prima facie case that the Respondent lacks rights to or legitimate interests in the disputed domain name. The Respondent did not submit any evidence or arguments to challenge the Complainant’s prima facie case.
Therefore, the second element of the Policy has been fulfilled.
C. Registered or Used in Bad FaithAccording to article 1(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration or use in bad faith:
“(i) circumstances indicating that the respondent has registered or the respondent has 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, service mark, slogan, designation of origin, or reservation of rights 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 domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark, service mark, slogan, designation of origin, or reservation of rights from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 its web site or location.”
Considering the intensive use that the Complainant has made of its YSL trademark, the reputation that it enjoys internationally, and that said trademark does not correspond to a dictionary word, since it’s the Complainant’s acronym, it is safe to infer that YSL is a well-known trademark (see Yves Saint Laurent v. Lin Yunfei, supra., and Yves Saint Laurent, SAS v. shenxingyu, supra.).
The fact that the Respondent registered the disputed domain name, which entirely reproduces the Complainant’s well-known trademark YSL, allows an inference that the Respondent knew and targeted Complainant at the time of registration of said disputed domain name, which constitutes opportunistic bad faith (see section 3.2.2 of the WIPO Overview 3.0; see also L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter,WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot,WIPO Case No. D2019-0980; and Nutricia International BV v. Eric Starling,WIPO Case No. D2015-0773).
Previous panels appointed under the Policy have found that – depending on the case circumstances – the mere registration by an unauthorized party of a domain name that is identical to a well-known trademark, can by itself create a presumption of bad faith (see section 3.1.4 of the WIPO Overview 3.0). This is so in the present case.
Under the Policy, the findings of registration of a disputed domain name in bad faith are enough to determine that the third element has been fulfilled. However, due to the circumstances of this case, the Panel will proceed to analyze the use of the disputed domain name.
The disputed domain name resolves to a parked website comprising pay-per-click links related to the Complainant’s apparel and accessories business (such as “YSL Bags”, “Parfums”, and “Glasses”). Therefore, this Panel considers that the Respondent is trying to capitalize on the reputation and goodwill of the Complainant’s trademark by misleading Internet users, for commercial gain, to the disputed domain name by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, which constitutes bad faith under article 1(b)(iv) of the Policy (see section 3.1.4 of the Policy, see also Fontem Holdings 4, B.V. v. J- B-, Limestar Inc.,WIPO Case No. D2016-0344; Archer-Daniels-Midland Company v. Wang De Bing,WIPO Case No. D2017-0363; and Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc.,WIPO Case No. D2017-0302).
Another indicator of bad faith is the pattern of abusive registrations in which the Respondent has been involved. This pattern, established in the precedents cited below, further supports a finding of bad faith according to article 1(b)(ii) of the Policy, which provides that a “pattern of such conduct” is evidence of bad faith (see Revlon Consumer Products Corporation v. Ye Li,WIPO Case No. D2010-1568; Lange Uhren GmbH v. Ye Li,WIPO Case No. D2013-1947; Enterprise Holdings, Inc. v. Ye Li,WIPO Case No. DMX2014-0020; Yves Saint Laurent, SAS v. Ye Li,WIPO Case No. DMX2019-0020; Lesaffre et Compagnie v. Ye Li,WIPO Case No. DNL2020-0061; and Wolverine Outdoors, Inc. v. Ye Li,WIPO Case No. DMX2021-0014).
The abovementioned facts show that not only the Respondent registered the disputed domain name in bad faith, but also, that Respondent has been using the disputed domain name in bad faith.
Therefore, the third element of the Policy has been fulfilled.
7. DecisionFor the foregoing reasons, in accordance with article 1 of the Policy and 19, and 20 of the Rules, the Panel orders that the disputed domain name,
Kiyoshi Tsuru
Sole Panelist
Date: February 18, 2022