The Complainant is Promod of Marcq-en-Baroeul, France, represented by Dreyfus & associés, France.
The Respondent is Yuan Qi aka Qi Yuan of Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2016. On October 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 14, 2016, 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.
October 18, 2016, the Center sent an email communication to the Parties in both Chinese and English. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in both Chinese and English of the Complaint, and the proceedings commenced on October 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2016.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on November 21, 2016. 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 900 retail outlets in about 40 countries. The Complainant has more than 5,000 employees around the world.
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. 623483 (dated August 31, 1994 and covering goods in Class 9) and 597138 (dated February 8, 1993 and covering goods in Classes 24, 25, and 26) for the PROMOD mark, both of which are protected in several jurisdictions, including China. The Complainant registered the domain names and in 1996 and uses them to promote its PROMOD trademark and to promote its goods and services.
The Respondent registered the disputed domain name on March 1, 2016. The disputed domain name resolves to a website featuring the name “Marques boutique” and advertising fashion brands such as Ralph Lauren, Ray-Ban, Moncler, and Christian Louboutin. The website features links that direct Internet users to third-party retail outlet websites purporting to sell such branded goods. The Respondent’s website includes English and French words as do the third-party websites.
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 registered letter and email, requesting that the Respondent cease use of the disputed domain name and transfer the same to the Complainant. The Respondent did not reply. 5. Parties’ Contentions A. Complainant
The Complainant states that the disputed domain name is identical or confusingly similar to the Complainant’s mark. The Complainant and its PROMOD mark enjoy a worldwide reputation. The disputed domain name reproduces the PROMOD mark exactly. The country code Top-Level Domain (“ccTLD”) “.pw” does not affect the likelihood of confusion and should not be considered. See, e.g., L’Oréal S.A. v. Lianfa,WIPO Case No. DPW2014-0003; Pirelli & C. S.p.A. v. Gaoxiang,WIPO Case No. DPW2014-0004. By registering the disputed domain name, the Respondent has created a likelihood of confusion with the Complainant’s trademark. Consumers have learned to perceive goods offered under the PROMOD mark as being those of the Complainant. Therefore, it is likely that the public would assume that the disputed domain name would be owned by or somehow associated with the Complainant.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant nor has the Complainant authorized the Respondent to use the PROMOD trademark or to register any domain name including the PROMOD trademark. The Respondent does not have prior rights in the PROMOD mark. The Complainant’s registrations for the PROMOD mark precede the registration of the disputed domain name for many years. Additionally, the disputed domain name is so similar to the famous PROMOD trademark that the Respondent cannot reasonably pretend that he intended to conduct legitimate activity through the disputed domain name. The Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services nor has the Respondent shown any intention to make noncommercial fair use of the disputed domain name. Instead, the Respondent uses the disputed domain name to operate a website under the name “Marques boutique” that displays clothes and accessories of various renowned brands. A click on the images displayed on the website directs Internet users to different websites that commercialize the clothes and accessories, and such goods appear to be counterfeits.
Additionally, the Respondent did not respond to the Complainant’s letter requesting that the Respondent cease use of the disputed domain name and to transfer it to the Complainant. Because the Respondent did not avail himself of the right to respond to the Complainant, the Complainant argues that it can be assumed that the Respondent has no rights of legitimate interest in the disputed domain name. See, e.g., Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269.
The disputed domain name was registered and is being used in bad faith. Bad faith registration can be found where the Respondent knew or should have known of the Complainant’s trademark rights and, nevertheless, registered a domain name in which he has no rights or legitimate interest. Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113. It is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain name. Given the reputation of the PROMOD trademark, registration in bad faith can be inferred. Additionally, the disputed domain name reproduces the PROMOD mark exactly and it resolves to a website commercializing exactly the same products as the Complainant, indicating that the Respondent was aware of the Complainant. Moreover, it is a domain name registrant’s obligation to verify that the registration of the domain name would not infringe the rights of a third party. In this case, a quick trademark search for the PROMOD mark would have revealed to the Respondent the existence of the Complainant and its trademark. That the Respondent failed to do so is a contributing factor to his bad faith registration. LANCOME PARFUMS ET BEAUTE & CIE, L’OREAL v. 10 Selling,WIPO Case No. D2008-0226.
Bad faith use can be found based on the following circumstances. The Respondent does not have permission from the Complainant to use its trademark and has made no bona fide or legitimate use of the disputed domain name. See Alstom, Bouygues v. Webmaster,WIPO Case No. D2008-0281; Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055. The disputed domain name is confusingly similar to the Complainant’s trademark, therefore a likelihood of confusion can be presumed and such confusion will inevitably result in Internet traffic being diverted from the Complainant to the Respondent’s website. See MasterCard International Incorporated (“MasterCard”) v. Wavepass AS,WIPO Case No. D2012-1765; E, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095. Additionally, the disputed domain name resolves to a webpage that displays clothes and accessories of various renowned brands. Links on the webpage redirect the user to other websites that sell counterfeit goods. Therefore, the disputed domain name is being used to sell counterfeit goods under the PROMOD mark, which is strong evidence of bad faith. See Goyard St-Honore v. Fundacion Private Whois, Domain Administrator,WIPO Case No. D2013-0443; Canon U.S.A. Inc. v. Miniatures Town,WIPO Case No. D2011-1777. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or products advertised on his website. The Respondent’s use of the Complainant’s trademark to direct Internet users to websites relating to the Complainant’s competitors is evidence of a clear intent to disrupt the Complainant’s business, to deceive consumers, and to trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s mark. The Respondent likely registered the disputed domain name to prevent the Complainant from using its trademark in the disputed domain name. See L’oreal v. Chenxiansheng,WIPO Case No. D2009-0242. Finally, the Respondent has not replied to the Complainant’s cease-and-desist letter. See, e.g., Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787. These circumstances confirm that the disputed domain name is being used in bad faith.
The Complainant requests that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 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 comment. Regardless, the Respondent’s conduct suggests that the Respondent understands English. 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. Additionally, if the Complainant were to submit all documents in Chinese, the proceeding would be unduly delayed and the Complainant would incur substantial expenses. 6.2 Substantive Issues
The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical or confusingly similar to a trademark 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 proceeds the Respondent’s registration of the disputed domain name by decades. The Panel accepts that the Complainant’s mark is internationally well known.
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, and the ccTLD “.pw”. The ccTLD, being a technical part of the disputed domain name, is not relevant in determining whether the disputed domain name is identical or confusingly similar to the PROMOD trademark and is without legal significance. See, e.g., CBS Broadcasting Inc. v. Worldwide Webs, Inc.,WIPO Case No. D2000-0834; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Under paragraph 4(c) of the Policy, a respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) The respondent’s use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the respondent of the dispute; or
(ii) The respondent 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.
The Respondent is not using, nor is there evidence that the Respondent has made 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. First, the Respondent is using the disputed domain name to publish a website promoting goods and services that compete directly with the Complainant’s and which could be confused with those offered by the Complainant. This is not a bona fide offering. See, e.g., America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374 (“[I]t would be unconscionable to find that a bona fide offering of services in a respondent’s operation of a web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business.”). Second, the links featured on the Respondent’s website redirect Internet users to websites that offer products that appear to be counterfeit, and the Respondent has not refuted this allegation. There can be no legitimate interest in the sale of counterfeit goods. See, e.g., Mattel, Inc. v. Magic 8 ball factory,WIPO Case No. D2013-0058. Third, the PROMOD trademark is long-established and known globally, including in China, the location of the Respondent. In the absence of evidence to the contrary, knowledge of the Complainant and its rights in the PROMOD mark may be imputed to the Respondent at the time of registration of the disputed domain name. The term “Promod” bears no obvious relationship to the Respondent’s activities in connection with the disputed domain name. “The inevitable conclusion is that [this] word[] [is] not one[] that the Respondent would legitimately choose in the context of provision of goods, services or information via a web site unless seeking to create an impression of an association with the Complainant.” See Harvey Norman Retailing Pty Ltd v. Pty Ltd,WIPO Case No. D2000-0945. No rights or legitimate interests can be created where the Respondent would not have chosen the disputed domain name unless seeking to create an impression of association with the Complainant. See Drexel University v. David Brouda,WIPO Case No. D2001-0067.
There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Complainant contends, and the Respondent does not deny, that the Complainant never authorized the Respondent to use the PROMOD mark or to register a domain name including the PROMOD mark.
The Respondent is not making any noncommercial or fair use of the disputed domain name. To the contrary, the evidence in the record indicates that the Respondent is using the disputed domain name for commercial gain by seeking to create an impression of an association with the Complainant and to misleadingly divert consumers.
Finally, the Respondent did not respond to the Complainant’s letter requesting that the Respondent cease use of the disputed domain name and to transfer it to the Complainant. The Panel may conclude that the Respondent has no evidence to rebut the Complainant’s assertions. See, e.g., Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, supra. C. Registered and Used in Bad Faith
The Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed 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
(ii) The Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 such website or location or of a product or service on such website or location.
The Panel finds that the Respondent was undoubtedly aware of the Complainant and its PROMOD mark at the time of registration of the disputed domain name and that such registration was in bad faith. 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. Although the Respondent may not be under an obligation to conduct an exhaustive trademark search before registering a domain name, a simple Internet search for PROMOD would have yielded many obvious references to the Complainant. The Respondent must have had the Complainant’s famous trademark in mind when the Respondent registered the disputed domain name, as evidenced by the Respondent’s use of the disputed domain name to sell goods that compete with the Complainant’s goods. See Balenciaga v. liu zhixian, zhixian liu,WIPO Case No. D2010-1831. The Respondent’s registration of the disputed domain name incorporating the Complainant’s mark, being fully aware of the Complainant’s rights in the mark, without any right or legitimate interest in doing so is registration in bad faith. See, e.g., Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, supra; The Gap, Inc. v. Deng Youqian, supra.
Given that the disputed domain name is identical to the Complainant’s well-known PROMOD mark, the Panel finds that the Respondent must have been aware that Internet users may reasonably believe that the disputed domain name and resolving website would be owned, controlled, established or otherwise associated with the Complainant. See AXA S.A. v. P.A. van der Wees,WIPO Case No. D2009-0206. In the absence of a response by the Respondent, the Panel can only conclude that the Respondent must be deriving commercial benefit from using the disputed domain name to advertise clothing and accessory products. See Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Rohit Katoch,WIPO Case No. D2011-0402. The Respondent has intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s PROMOD mark as to the source, sponsorship, affiliation, or endorsement of that website. These activities fall within those described in paragraph 4(b)(iv) of the Policy. Additionally, the Respondent’s website redirects Internet users to websites that advertise what appear to be, and the Respondent has not denied this, counterfeit goods. This is further indication of use in bad faith. See Sanofi-aventis v. Igor Peklov,WIPO Case No. D2008-1419; Chrome Hearts LLC v. James Hart,WIPO Case No. DCC2011-0005. Finally, bad faith can be inferred from the Respondent’s failure to reply to the Complainant’s attempts to settle this dispute amicably. See, e.g., Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., supra. Accordingly, the Panel finds that the Respondent is using the disputed domain name in bad faith. 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.
Kimberley Chen Nobles
Sole Panelist
Date: December 6, 2016
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