WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Immobilière Dassault SA, Groupe Industriel Marcel Dassault v. DuanZuoChun
Case No. D2011-2106
1. The Parties
The Complainants are Immobilière Dassault SA and Groupe Industriel Marcel Dassault of Paris, France, represented by Cabinet Dreyfus & Associés, France.
The Respondent is DuanZuoChun of GuangDong, China.
2. The Domain Name and Registrar
The disputed domain name <immobilieredassault.com> (the “Disputed Domain Name”) is registered with Guangzhou Ming Yang Information Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2011. On December 2, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 5, 2011, 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 December 6, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceedings. On the same day, the Complainants confirmed their request that English be the language of the proceedings. The Respondent requested that Chinese be the language of the proceedings and indicated that supporting reasons would follow. The Center did not receive any further communication from the Respondent.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2011. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties a proceeding update on December 29, 2011.
The Center appointed Kar Liang Soh as the sole panelist in this matter on January 11, 2012. 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.
Due to exceptional circumstances, the Panel extended the decision due date to February 21, 2012.
4. Factual Background
The 1st Complainant, Immobilière Dassault SA, is a listed property company and owns property assets in France totaling EUR 319 million by December 31, 2010. The 1st Complainant is a subsidiary of the 2nd Complainant, Groupe Industriel Marcel Dassault. The 2nd Complainant operates in the aeronautical and aviation field and is a major player in the global aviation industry. The Complainants’ group of companies have a worldwide presence, including an office in Beijing and publicized business dealings in China.
The 1st Complainant owns French trade mark registration no 3480401 for IMMOBILIERE DASSAULT registered on February 8, 2007. The 2nd Complainant owns trade mark registrations for DASSAULT including the following:
Jurisdiction Trademark no Registration date
Community Trade Mark 004837886 January 31, 2006
France 3373264 July 29, 2005
The 1st Complainant registered the domain name <immobiliere-dassault.com> on February 7, 2007 and members of the Complainants’ group of companies operate websites from this and other domain names including <dassault-aviation.com>, <dassaultfalcon.com>, <dassault.fr> and <serge-dassault.com>.
The Disputed Domain Name was registered on February 21, 2011. Prior to the Compliant, the registrant of the Disputed Domain Name was LIHONGBO and the Disputed Domain Name resolved to a parking website. The 1st Complainant, through its attorneys, issued a cease and desist letter to LIHONGBO on April 11, 2011 in relation to the Disputed Domain Name. The 1st Complainant received a reply offering the Disputed Domain Name for sale at EUR 2,000.
As of July 5, 2011, the Respondent had already become the registrant of the Disputed Domain Name. Other than the WhoIs record of the Disputed Domain Name, little is known about the Respondent. The WhoIs record identified the Respondent’s address as “…, GuangDong, CN 519000”. As of November 4, 2011, the Disputed Domain Name did not resolve to any website.
5. Parties’ Contentions
The Complainants contend that:
1) The Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainants have rights. The Disputed Domain Name is identical to the trade mark IMMOBILIERE DASSAULT which has been registered by the 1st Complainant;
2) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent is not commonly known by the name “Dassault”, is not affiliated with the Complainants and has not been authorized or licensed to use the IMMOBILIERE DASSAULT or DASSAULT trade marks. The prior registrant’s offer to sell the Disputed Domain Name does not support the existence of legitimate interest. The Respondent has not provided any reasons for registering the Disputed Domain Name; and
3) The Disputed Domain Name was registered and is being used in bad faith. The Complainants are part of a world renowned group and publicized business dealings in China. The word “Dassault” is the name of the founder of the Complainants’ group of companies while IMMOBILIERE is a French word which refers to the 1st Complainant’s field of business. The Respondent must have been aware of the Complainants and their well-known marks.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
In order to succeed in the proceedings, the Complainant must establish all 3 limbs of paragraph 4(a) of the Policy. The Panel proceeds to consider each of these limbs below.
6.1. Language of the proceedings
The Registration Agreement is in Chinese and the default language of the proceeding should be Chinese. The Complainants have requested that the proceedings be conducted in English. The Respondent, on the other hand, has requested that the proceeding be in Chinese. Having regard to the circumstances of this case, in particular the following, the Panel determines that English be adopted as the language of the proceedings:
a) The Complainants have confirmed that they are not able to communicate in Chinese and there would clearly be significant burden on the Complainants should Chinese be adopted as the language of the proceeding;
b) Although the Respondent has requested that proceeding be in Chinese, the Respondent has not provided any reasons. Moreover, the Respondent has chosen not to respond to the Complaint;
c) The Complaint has already been submitted in English and the Panel is fully capable of dealing with the Complaint in English;
d) The prior registrant of the Disputed Domain Name demonstrated the ability to communicate in intelligible and adequate English. Although it is not known whether the Respondent is related to the prior registrant, the Respondent must have been in contact with the prior registrant to obtain the transfer of the Disputed Domain Name and in this Panel’s view, could enlist the assistance of the prior registrant; and
e) Since no response has been filed, there does not appear to be any procedural benefit that may be achieved by insisting on the default language of the proceedings and it is likely that delay to the proceedings would result should the Complainants be required to re-submit the Complaint in Chinese.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel agrees that the Complainants have rights in the trade marks IMMOBILIERE DASSAULT and DASSAULT. Ignoring the space between IMMOBILIERE and DASSAULT, the Disputed Domain Name is identical to the trade mark IMMOBILIERE DASSAULT. It is therefore held that the first limb of paragraph 4(a) of the Policy is established.
B. Rights or Legitimate Interests
The Complainants have confirmed that they are not affiliated with the Respondent and have neither authorized nor licensed the Respondent to use the trade marks IMMOBILIERE DASSAULT or DASSAULT. The Respondent (and prior registrant, if connected to the Respondent) is an individual and is not known by the name “Dassault”. There is nothing in the facts before the Panel to suggest that the Respondent has any rights or legitimate interests in the Disputed Domain Name. Prima facie, the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. Since no response was filed to rebut the Complainants’ prima facie case, the second limb of paragraph 4(a) of the Policy is also established.
C. Registered and Used in Bad Faith
The decision of Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003 has defined bad faith in the form of “passive holding” of a domain name, which has become a common scenario visited upon many owners of well-known marks. These cases exhibit a common thread in the following elements (see Guccio Gucci S.p.A. v. Zhou Guodong, WIPO Case No. D2010-1695; Harrods Limited v. Zhang Fashu, WIPO Case No. D2010-0414; UPM-Kymmene Corporation v. yongxi zhang, WIPO Case No. D2009-0882):
1) The disputed domain name incorporates a well-known mark;
2) The respondent is an individual, rather than a business entity;
3) In view of the complainant’s trade mark rights, it is not possible to conceive of any plausible, legitimate, actual or contemplated use of the disputed domain name by the respondent;
4) There is no apparent evidence of actual or contemplated use of the disputed domain name; and
5) The respondent did not adequately respond to the complainant’s cease and desist letter and the complaint under the Policy.
Based on the evidence, the Panel accepts that DASSAULT and IMMOBILIERE DASSAULT are well-known trade marks. It is also probable that knowledge of the real estate business of the Complainants’ group of companies has penetrated the China market. The word IMMOBILIERE which means “real estate” in French is essentially descriptive of the 1st Complainant’s field of business and does not serve to distinguish the adoption of DASSAULT in the Disputed Domain Name. Therefore, for an individual based in China who in all probability does not speak French to combine “Immobiliere” and “Dassault” together as a domain name suggests that that individual must have pre-existing knowledge and awareness of the combination. The Panel is unable otherwise to conceive of any plausible reason for the Respondent’s (and prior registrant’s, if connected to the Respondent) selection of the Disputed Domain Name.
The evidence did not show that the Disputed Domain Name resolves to any website or mail service. The prior registrant’s only response to the 1st Complainant’s cease and desist letter was an offer to sell the Disputed Domain Name. Even if the prior registrant were connected to the Respondent, the Panel does not regard such a response to be a legitimate use of the Disputed Domain Name. Neither does the Panel consider the response adequate in the circumstances. Instead, the response suggested a probable original motive for the passive holding of the Disputed Domain Name.
In addition, the Panel notes that the Respondent did not provide a valid address in association with the Disputed Domain Name. An applicant for registration of a domain name has a duty to act honestly. The deliberate use of fictitious and/or ineffective contact particulars is also indicative of bad faith. (see ECCO Sko A/S v. Protected Domain Services – Customer ID: NCR-2448048 / jizhiteam, WIPO Case No. D2010-1113; Farouk Systems Inc. v. David, WIPO Case No. D2009-1245).
Taking all the circumstances into consideration, including the lack of a formal response from the Respondent to the Complaint, the Panel concludes that the Disputed Domain Name was registered and is being used (in the sense of passive holding) in bad faith. The third limb of paragraph 4(a) of the Policy is established.
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, <immobilieredassault.com> be transferred to the 1st Complainant.
Kar Liang Soh
Dated: February 21, 2012