WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Etam Developpement v. Shengkun Wang
Case No. D2011-2281
1. The Parties
The Complainant is Etam Developpement of Clichy, France, represented by Meyer & Partenaires, France.
The Respondent is Shengkun Wang of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <etam-china.com> is registered with HiChina Zhicheng Technology Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2011. On December 28, 2011, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On December 29, 2011, HiChina Zhicheng Technology Ltd. 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 30, 2011, the Center received an email communication from the Respondent, to which the Center acknowledged receipt. On January 5, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On January 9, 2012, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the parties of the proceeding update on February 3, 2012.
The Center appointed Douglas Clark as the sole panelist in this matter on February 20, 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.
4. Factual Background
The Complainant’s first Etam boutique was established in 1916 in Berlin, Germany. The brand has grown over the years and in 1997 the company was quoted on Euronext Paris. The Complainant’s principal business is the sale of clothes and particularly underwear but also offers bags, shoes and some cosmetic goods. The Complainant opened its first outlet in China in 1995 and now has 3,000 outlets in China.
The Complainant is the registrant of a large number of trademarks consisting of or including the wording “Etam” in France and abroad. These include international trade mark No. 744378 for ETAM registered on July 21, 2000 covering classes 3, 9, 18 and 25 which has been extended to China. Class 3 covers cosmetics.
The disputed domain name <etam-china.com> was registered on June 1, 2010. The website at the disputed domain name advertises cosmetic products under the name Etam together with the Chinese characters 艾格. These characters are the translation of the Complainant’s trademark in Chinese. The cursive script use to write “Etam” is identical to that used by the Complainant.
5. Parties’ Contentions
A.1 Identical or Confusingly Similar
The Complainant submits the disputed domain name is identical or confusingly similar to the Complainant’s ETAM mark as it consists of the entirety of the mark and adding the geographical wording “China”. The Complainant argues that the addition of the word “China” adds to confusion by suggesting that the site is for Etam in China.
A.2 No rights or legitimate interests
The Complainant submits the Respondent has no rights or legitimate interests in the disputed domain name.
First, the Respondent is not currently and has never been known as Etam. It attaches Chinese trademark searches that show not registrations by the Respondent for Etam. Second, the Complainant has had not contact with and has not done business with or licensed the Respondent.
A.3 Registered and used in bad faith
The Complainant alleges that given the fame of Etam in China, the Respondent must have known of the Complainant when registering the disputed domain name and its use to sell cosmetic products is clear evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
This is a case of clear domain name hijacking for the purposes of commercial gain which the UDRP is designed to stop.
A. Language of Proceedings
The domain name registration agreement is in Chinese. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceedings shall be the language of the registration agreement, i.e., Chinese.
The Complainant submitted arguments that the language of the proceedings should be in English. These were that the spirit of paragraph 11 of the Rules is indeed to ensure fairness in the language selection by giving full consideration to the parties‘ level of comfort with each language, the expense to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors and cited Hermès International v. Luke – Walton Luke, WIPO Case No. D2011-1323. The factors relied upon by the Complainant to request the language of proceedings be English are set out in full below:
“(a) The disputed domain name ETAM-CHINA.COM is registered in Latin characters;
(b) The wording “ETAM” refers to the Complainant’s company ETAM, which is a French company;
(c) The Registrar, HICHINA ZHICHENG TECHNOLOGY CO. LTD operates a website in English, located at http://en.hichina.com/ and translates in English the information provided on the registrant;
(d) The Respondent registered one other Latin characters’ domain name, <eetann.com>.
Considering the above the use of English would not prevent the Respondent from defending in these proceedings.
Furthermore, the Complainant is not able to communicate in Chinese.
Selecting Chinese language would consequently unduly delay the proceedings and would moreover compel the Complainant to incur substantial expenses for translation.
In order to respect the fairness of the procedure, the Complainant requests that the language of the proceedings be the English language.”
In the Panel’s view, factor (a) and (d) do not assist. Many domain names are registered in Latin characters but this does not indicate that the registrant is fluent in English. The Panel notes that Chinese can also be written in Latin characters (called “pinyin”).
In this Panel’s view, factor (c) is irrelevant because it relates to the language of the Registrar and not the Respondent.
The Complainant’s contention that it is not able to communicate in Chinese should not have been made. It was clear from the evidence filed that the Complainant has done business in China for many years and clearly has staff who can communicate in Chinese. The Complainant also put in evidence a domain name decision from the Chinese Council for the Promotion of International Trade (CCPIT) written in Chinese dealing with a domain name dispute on very similar facts and reciting very similar evidence to that set out in the Complaint. The complaint in that dispute would have been filed in Chinese.
Factor (b), in itself is also not a sufficient ground to decide that the language of the proceedings should be in English. It cannot be that the use in a domain name of a word or company name in English or another language should means that the Complainant is free to file a complaint in English.
However, from the evidence attached to the Complaint showing the Chinese language website of the Respondent, there is text which shows that the Respondent is claiming either to be the Complainant or closely related to the Complainant. As set out in more detail below, this is clear evidence of lack of legitimate interests and registration and use of the disputed domain name in bad faith by the Respondent.
Given that the Respondent has failed to file any response either to the Complaint or to a specific invitation (made in both English and Chinese) to object the Complainant's language request, that the Panel considers that the Respondent has clearly registered the disputed domain name in bad faith (see below), that much of the evidence is in English and Chinese, the Panel determines that the language of these proceeding shall be English and China. As the only pleading before the Panel is in English, the Panel will issue its decision in English.
B. Identical or Confusingly Similar
The disputed domain name <etam-china.com> is made up of the registered trademark ETAM and the plus a geographic indicator “China”. The addition of a geographic indicator does not in this case detract from the principal element of the disputed domain name being Etam and accordingly the Panel finds the disputed domain name to be confusingly similar to the Complainant’s registered mark ETAM. The first part of the Policy is therefore satisfied.
C. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. The use made by the Respondent of the website under the disputed domain name where goods bearing the Complainant’s trademark are offered for sale make it hard to imagine that the Respondent could ever establish any rights or legitimate interests.
On the website under the disputed domain name, the Respondent introduces its products (in Chinese) as follows: “Etam was the first European brand to enter the Chinese market”.
This is a clear reference to Complainant. The Complainant has disavowed having any relationship with the Respondent.
Clearly, none of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
D. Registered and Used in Bad Faith
For the same reasons as those above, and particularly as the Respondent on its website makes reference to the Complainant, the Panel has no hesitation in finding that the disputed domain name <etam-china.com> was registered in bad faith and is being used in bad faith.
This case clearly falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
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 <etam-china.com> be transferred to the Complainant.
Dated: March 5, 2012