World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pierre Fabre Dermo-Cosmetique v. Simon Chen/personal/jinpingguo

Case No. D2011-0769

1. The Parties

The Complainant is Pierre Fabre Dermo-Cosmetique, represented by Deprez Guignot & Associés, France.

The Respondents in respect of each of the disputed domain names are as follows:

1. <avenechina.com> Personal

2. <ya-yang.com> Simon Chen

3. <buyavene.com> jinpingguo

4. <avenebuy.com> Simon Chen

2. The Domain Names and Registrars

The disputed domain names <avenechina.com>, <ya-yang.com>, <buyavene.com> and <avenebuy.com> are registered with Go Daddy, ONLINE NIC, Go Daddy and ONLINE NIC respectively (the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2011. On May 4, 2011, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names <avenechina.com> and <ya-yang.com>. On May 5, 2011, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants of the disputed domain names <avenechina.com> and <ya-yang.com>, and providing the Respondents’ contact details.

The Center has verified that the Complaint satisfies 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”).

The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on June 10, 2011. 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.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents in respect of the disputed domain names <avenechina.com> and <ya-yang.com> of the Complaint, and the proceeding commenced on May 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2011. The Respondents did not submit any Response. Accordingly, the Center notified the parties of the Respondents’ default on June 6, 2011.

On May 20, 2011 the Complainant filed an Amendment to the Complaint with the Center seeking to add the additional disputed domain names <buyavene.com> and <avenebuy.com>.

On June 16, 2011 the Panel issued a Panel Order accepting for filing the Complainant’s Amendment to the Complaint and ordering that it be considered with the Original Complaint. The Panel further ordered that the Amendment to the Complaint would be considered by the Panel as a complaint seeking consolidation of multiple Respondents involving more than one disputed domain name. The Panel also directed the Center to formally notify the Respondents of the Amendment to the Complaint, and to set a due date for Response in accordance with paragraph 5(a) of the Rules.

On June 16, 2011, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names <buyavene.com> and <avenebuy.com>. On June 17, 2011, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants of the disputed domain names <buyavene.com> and <avenebuy.com>, and providing the Respondents’ contact details.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified each of the Respondents of the Amendment to the Complaint, and the proceeding in respect of all four disputed domain names commenced on June 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2011. None of the Respondents submitted any Response.

4. Factual Background

A. Complainant

The Complainant is a company incorporated in France and the owner of trade mark registrations in France for the device mark A AVENE and the word mark DERM-AVENE, an international trade mark registration for the device mark A AVENE, and several trade mark registrations in China for the word marks AVENE and 雅漾, each registered in respect of cosmetics and related goods and services (the “Trade Marks”).

B. Respondent

According to the WhoIs search results for the disputed domain names, the Respondents are individuals apparently with addresses in China.

The disputed domain names <avenechina.com>, <ya-yang.com>, <buyavene.com> and <avenebuy.com> were registered on January 4, 2011, September 26, 2010, May 9, 2011 and May 8, 2011 respectively.

5. Parties’ Contentions

A. Complainant

The Complainant made the following submissions in the Complaint.

The disputed domain names are confusingly similar to the Trade Marks. The Respondents’ addition of generic terms such as “buy” and “china” does nothing to distinguish the disputed domain names from the Trade Marks. The disputed domain name <ya-yang.com> is confusingly similar to the Complainant’s雅漾 trade mark, being a phonetic transliteration of the mark in occidental script.

The disputed domain names are linked to websites containing similar content and offering for sale, without authorization from the Complainant, infringing and counterfeit products under the Trade Marks (the “Websites”).

The Respondents have no rights or legitimate interests in the disputed domain names and have registered and used the disputed domain names in bad faith to intentionally attract users, for commercial gain, to the Websites, by creating confusion with the Trade Marks.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Consolidation of Proceedings

The Complainant has submitted evidence in support of its contentions that the disputed domain names and the Websites are under common control and ownership and, therefore, it is appropriate for the proceedings against each of the Respondents to be consolidated into the one proceeding. This includes evidence of identical content, privacy policies, business contact information and payment conditions on each of the respective Websites.

It would appear therefore, in the circumstances, and absent any submissions to the contrary from the Respondents, that the Respondent in respect of each of the disputed domain names is likely the same person.

The Panel has therefore determined that it is appropriate for the proceedings to be consolidated and for a single Decision to be handed down.

B. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration which predate by many decades the dates of registration of the disputed domain names.

UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

It is also established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).

It is further well established that domain names comprising phonetic transliterations of Chinese language trade marks are confusingly similar to such trade marks under the Policy.

In the present case, the Panel concludes that the addition of the non-distinctive words “buy” and “china” does not serve to distinguish the disputed domain names from the Trade Marks. The Panel further concludes that the disputed domain name <ya-yang.com>, being a direct phonetic transliteration into pinyin of the雅漾trade mark, is confusingly similar to the雅漾trade mark.

The Panel finds that the disputed domain names are confusingly similar to the Trade Marks.

The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondents have rights or legitimate interests in the disputed domain name:

“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

There is no evidence that the Complainant has authorised, licensed, or permitted the Respondents to register or use the disputed domain names or to use the Trade Marks. To the contrary, the Complainant has submitted evidence of its exclusive licence granted to its exclusive distributor in China, a company with no relation to the Respondents. The Complainant has prior rights in the Trade Marks which precede the Respondents’ registration of the disputed domain names by decades. There is therefore a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondents to produce evidence to rebut this presumption (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 Complainant contends the Websites are used by the Respondents to market goods which are counterfeit AVENE goods. There can be no legitimate interest in the sale of counterfeits (Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750). The Panel further notes the Websites feature the Trade Marks as well as images of the Complainant’s products, all without the authorisation or approval of the Complainant.

The Respondents have failed to show that they have acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names are used in connection with a bona fide offering of goods or services.

There has been no evidence adduced to show that the Respondents have been commonly known by the disputed domain names.

There has been no evidence adduced to show that the Respondents are making a legitimate noncommercial or fair use of the disputed domain names.

The Panel finds that the Respondents have failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.

D. Registered and Used in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondents:

“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”

The Complainant asserts that the disputed domain names have been used to offer for sale counterfeit products under the Trade Marks via the Websites. Using domain names to facilitate the sale of counterfeit goods is strong evidence of bad faith (Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019).

Even if the goods on the Websites are not counterfeit, the Panel finds the Respondents’ conduct in registering the disputed domain names and setting up the Websites using the Trade Mark and images of the Complainant’s goods, and offering for sale skin care and cosmetic goods under the Trade Marks, all without the authorisation, approval or licence of the Complainant, amounts to bad faith registration and use under paragraph 4(b)(iv) of the Policy, irrespective of whether the goods offered for sale on the Websites are indeed counterfeits (and in particular given the exclusive trade mark licence granted to the Complainant’s Chinese distributor).

The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.

Given the circumstances of this case, the Panel also considers the failure of the Respondents to file a Response constitutes further evidence of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).

For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <avenechina.com>, <ya-yang.com>, <buyavene.com> and <avenebuy.com> be transferred to the Complainant.

Sebastian Hughes
Sole Panelist
Dated: July 15, 2011

 

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