World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Marc Orian, Société Anonyme v. I. Stewart Donald, Joseph J. Gatlin

Case No. D2012-0418

1. The Parties

The Complainant is Marc Orian Société Anonyme of Paris, France, represented by Fidal Direction Internationale, France.

The Respondents are I. Stewart Donald of New York, United States of America and Joseph J. Gatlin of Chicago, Illinois, United States of America.

2. The Domain Names and Registrar

The disputed domain names <tresorparisbijoux.com>, <bijouterietresorparis.com>, <tresorparisfr.com> and <bijouxtresor.com> (the “Domain Names”) are registered with Bizcn.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2012. On March 2, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 9, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which were different from the information in the Complaint. The Center sent an email communication to the Complainant on March 13, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint by March 18, 2012. The Complainant applied to the Center for extension to the due date to submit the amended Complaint and the Center granted the extension to March 21, 2012. The Center sent an email communication in both Chinese and English to both parties regarding the language of the administrative proceedings on March 19, 2012. The Complainant filed an amended Complaint on March 22, 2012 and confirmed its request for English to be the language of the administrative proceedings. The Respondents did not comment on the language of the proceedings by the specified due date.

The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceedings commenced on March 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on April 17, 2012.

The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on April 23, 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.

On May 4, 2012, the Panel noticed that the Complainant requested to add the additional domain name <bijouxtresor.com> to this proceeding when submitting the amended Complaint on March 22, 2012. Accordingly, The Panel issued the Administrative Panel Procedural Order No.1 on May 7, 2012, requesting the Center to obtain registrar verification for the additional domain name, notify the Respondents of the additional domain name and allow the Respondents to provide a Response in relation to the additional domain name. On May 8, 2012, the Registrar transmitted by email to the Center its verification response for the additional domain name, confirming that the Respondent Joseph J. Gatlin is listed as the registrant and providing the contact details. On May 9, 2012, The Center sent an email communication in both Chinese and English to both parties, notifying that the additional domain name had been added into this proceeding, and that in accordance with the Rules, paragraph 5(a), the due date for the Respondents to submit a Response in relation to the additional domain name was May 29, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on June 1, 2012.

4. Factual Background

The Complainant is a French company engaged in business of creating, manufacturing and marketing jewellery under the trademark TRÉSOR and TRÉSOR PARIS. The Complainant is the owner of French trademark Reg. No. 92436040 for TRÉSOR, and French trademark Reg. Nos.3858412 and 3858419 for TRÉSOR PARIS.

The Respondents registered the Domain Name <tresorparisbijoux.com> on December 11, 2011, <bijouterietresorparis.com> on December 11, 2011, <tresorparisfr.com> on February 24, 2012 and <bijouxtresor.com> on February 28, 2012.

5. Language of the Proceedings

Under paragraph 11 of the Rules, the language of the proceeding shall be the language of the registration agreement, unless both parties agree otherwise, or the registration agreement specifies otherwise, or the panel determines otherwise.

The Complainant filed initially its Complaint in English and requested for English to be the language of the proceeding for the following reasons:

(a) the Chinese language is prejudicial for the Complainant in its abilities to articulate the arguments for the case;

(b) the Respondents’ addresses are in the State of New York and Illinois (United States of America) and the websites under the Domain Names (the “Websites”) do not contain any words in the Chinese language. Indeed the Websites include various phrases in English;

(c) the Complainant is a French company and will therefore not understand Chinese language and English is widely used worldwide and is the first language of the Internet;

(d) language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.

As confirmed by the Registrar, the language of the Registration Agreement is Chinese. Based on the evidenced presented on the record, no agreement appears to have been reached between the Complainant and the Respondents that the language of the proceeding should be English.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding by taking into consideration of all relevant circumstances, and it is established practice to take paragraphs 10(b) and 10(c) of the Rules into consideration for the purpose of determining the language of the proceeding to ensure that the parties are treated with equality and that each of them is given a fair opportunity to present its case.

The Panel notes that the Complainant is a French company and the representative of the Complainant has submitted all documents in English, and additional expense and delay would likely be incurred if the Complaint as well as the evidence is requested to be translated into Chinese.

The Panel also notes that the Respondents are located in the United States of America according to the registrant information confirmed by the Registrar.

The Panel also has taken into consideration that the Websites are partly in English and the Respondents did not object to use English as the language of the proceeding.

The Respondents can apparently understand English, the language of the Complaint, and the Respondents have been given a fair opportunity to object to use English as the language of the proceeding but it did not do so. Using English as the language of the proceeding will not be prejudicial to the Respondents in their ability to articulate the arguments for the case (the Respondents were given the opportunity to file their Response in either English or Chinese), while if the proceeding is to be conducted in Chinese, the Complainant would be unfairly disadvantaged by being forced to translate the Complaint as well as the evidence into Chinese. See Zumba Fitness LLC v. Kensuke Kishi, Sun up Corp, WIPO Case No. D2008-1181.

Considering all these circumstances, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English.

6. Multiple Respondents

The Panel finds that the four Domain Names included in this proceeding seem to be related to two different registrants. The Complainant contends in the Complaint that the four Domain Names are controlled under one single person or two persons acting fraudulently under the same aim to counterfeit the Complainant’s trademarks, and requests accordingly to consolidate the proceedings into one. The reasons raised by the Complainant are as follows:

(a) the registrant contact information of the Domain Name <tresorparisbijoux.com> is identical to that of <bijouterietresorparis.com>, and the registrant contact information of <tresorparisfr.com> is identical to that of <bijouxtresor.com>;

(b) when typing the Domain Name <bijouterietresorparis.com>, it leads to website at “www.tresorparisfr.com”, the home page of which, as well as its content and different pages, is identical to those of the website at “www.bijouterietresorparis.com” that appears in the Bailiff’s report (Annex 8 in the Complaint);

(c) when typing the Domain Name <bijouxtresor.com>, the home page of its website, as well as its content and different pages, is identical to those of the website at “www.bijouterietresorparis.com” that appears in the Bailiff’s report (Annex 7 in the Complaint), and at the time of submitting the amended Complaint, when typing the Domain Name <bijouterietresorparis.com>, it leads to the website under the Domain Name <bijouxtresor.com>;

(d) the Domain Names <tresorparisfr.com> and <bijouxtresor.com> were registered by the Respondent Joseph J. Gatlin days after the Complainant sent a cease and desist letter to the Respondent I. Stewart Donald, the registrant of the Domain Names <tresorparisbijoux.com> and <bijouterietresorparis.com>, informing him the situation and requesting the cancellation of the Domain Names; and

(e) the Registrar of the four Domain Names is Bizcn.com and the dns server is identical too.

The Panel finds that according to the registrar verification, the registrant contact information of the Domain Name <tresorparisbijoux.com> is identical to that of <bijouterietresorparis.com>, and the registrant contact information of <tresorparisfr.com> is identical to that of <bijouxtresor.com>.

The Panel notes that the current status of Domain Names is different from that as indicated in the Complaint as well as the Domain Names status search conducted by the Center on March 27, 2012. The Panel notes that both Domain Names <tresorparisbijoux.com> and <bijouxtresor.com> resolve to the website “www.tresorparis-bijoux.com”. The Domain Names <bijouterietresorparis.com> and <tresorparisfr.com> are currently inaccessible. The Panel also notes that the Center conducted search of the Domain Names on March 27, 2012 and found that the Domain Name <tresorparisbijoux.com> was redirected to the website “www.tresorparis-bijoux.com”, the Domain Name <bijouterietresorparis.com> was inaccessible and the Domain Name <tresorparisfr.com> was redirected to the website “www.tresorfr.com”. Moreover, as indicated in the Bailiff’s report on February 9, 2012 in the Complaint, the Domain Name <bijouterietresorparis.com> led to the website “www.tresorparisfr.com” while it led to the website “www.bijouxtresor.com” on March 22, 2012 when the Complainant submitted the amended Complaint. The Panel therefore believes that the Respondents changed the availability and redirections of the Domain Names constantly.

The Panel also notes that the Respondents did not file opposition to consolidation of proceedings into one.

For all the above reasons, the Panel therefore finds that the four Domain Names are actually controlled by an individual or entity and accordingly consolidation of proceedings into one is granted hereby. See Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057 and Yahoo! Inc. and GeoCities v. Data Art Corp., et al, WIPO Case No.D2000-0587.

7. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names registered by the Respondents are confusingly similar to its TRÉSOR and TRÉSOR PARIS trademarks. The Complainant has rights to French trademark registration No. 92436040, No. 3858412 and No. 3858419, which predate the registrations of the Domain Names. The Domain Names reproduce the trademarks TRÉSOR and TRÉSOR PARIS and the addition of the words “bijoux” and “bijouterie” cannot avoid the risk of confusion. Furthermore, the products sold on the website under the Domain Names are similar to the products provided by the Complainant.

The Complainant further contends that the Respondents have no rights or legitimate interests in respect of the Domain Names. The searches conducted by the Complainant do not show any TRÉSOR or TRÉSOR PARIS trademarks with effect in France registered in the name of the Respondents under the Domain Names. In addition, the Complainant has not granted any license of its trademarks in favour of the Respondents. Furthermore, the Respondents never responded to the letter sent by the Complainant in February 2012 to inform the situation and request the cancellation of the Domain Names. The Complainant believes that prima facie documentary evidence will suffice to evidence the lack of the Respondents’ legitimate interests in the Domain Names.

The Complainant finally contends that the Respondents registered the Domain Names and are using them in bad faith. The Complainant states that the Respondents already knew the Complainant’s trademarks and their reputed characters in France at the time of registering the Domain Names. The registration of the Domain Names is likely to mislead or confuse the public as to their source of origin. By using the Domain Names, the Respondents are intentionally attempting to hinder the Complainant to obtain any kind of economic income / benefit. Furthermore, the Complainant sent a letter to the Respondents with the aim at settling the dispute in a friendly manner; however, the Respondents didn’t respond which reinforces the argument of the Respondents’ bad faith.

B. Respondents

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

8. Discussion and Findings

To succeed in a complaint, the Complainant must, in accordance with paragraph 4(a) of the Policy, satisfy the Panel of the following three elements:

(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondents have no rights or legitimate interests in respect of the Domain Names; and

(iii) the Domain Names have been registered and are being used in bad faith.

Based on the evidenced presented by the Complainant and the relevant provisions of the Policy, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has introduced evidence showing it has established rights in the marks TRÉSOR and TRÉSOR PARIS. The Complainant holds French trademark registrations for the marks TRÉSOR and TRÉSOR PARIS, including registration No. 92436040 in class 14 dated in 1992, registration No. 3858412 in class 14 dated in 2011 and registration No. 3858419 in class 14 dated in 2011. The above registrations of the marks TRÉSOR and TRÉSOR PARIS predate the registration of the Domain Names.

The first Domain Name <tresorparisbijoux.com> consists of three words “tresor”, “paris” and “bijoux”. The second Domain Name <bijouterietresorparis.com> consists of three words “bijouterie”, “tresor” and “paris”. The third Domain Name <tresorparisfr.com> consists of three words and terms “tresor”, “paris” and “fr”. The fourth Domain Name <bijouxtresor.com> consists of two words “bijoux” and “tresor”. The word “tresor” is entirely incorporated in the Domain Names, which is visually, phonetically and conceptually identical to the Complainant’s trademark TRÉSOR (with the exception of the accent on the letter “e”). The word “paris” together with the word “tresor” is entirely incorporated into the first, second and third Domain Names, which is also visually, phonetically and conceptually identical to the Complainant’s trademark TRÉSOR PARIS (with the exception of the accent on the letter “e”). Other words “bijoux” and “bijouterie”, meaning “jewellery” in English, are generic words. The term “fr” which is usually considered the abbreviation of the word “France” is also generic. The Panel finds that the addition of the generic words and terms “bijoux”, “bijouterie” and “fr” are insufficient to dispel the confusing similarity arising from the incorporation of the Complainant’s TRÉSOR and TRÉSOR PARIS marks in the Domain Names. See Wal-Mart Stores, Inc vs. Kuchora, Kal, WIPO Case No. D2006-0033 (“It is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion”). The same principle applies to the absence of accent within the Domain Name. See Dell, Inc. v. Nguyen The Cuong, WIPO Case No. D2011-1121.

Accordingly, the Panel concludes the Complaint has satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Names are confusingly similar to the Complainant’s trademarks TRÉSOR and TRÉSOR PARIS.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy set out a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:

(i) use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services;

(ii) the fact that respondent has been commonly known by the domain name; or

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

The Complainant enjoys rights regarding French trademark TRÉSOR and TRÉSOR PARIS. According to the Complainant, the Respondents have not been granted any license of its trademarks by the Complainant and are in no way distributors, resellers or clients of the Complainant.

The Panel is satisfied that the Complainant has established prima facie evidence that the Respondents have no rights or legitimate interests in respect of the Domain Names under paragraph 4(c) of the Policy. It is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent. See International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.

The Panel notes that the Respondents have failed to file a response to demonstrate their rights or legitimate interests in the Domain Names under paragraph 4(c) of the Policy.

For all of the above reasons, the Panel therefore finds that the Respondents have no rights or legitimate interests in respect of the Domain Names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out the following circumstance, which in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.

As evidenced by the documents submitted by the Complainant, the Respondents are using the Domain Names to divert Internet users to websites offering for sales of the Complainant’s TrésOr and Trésor Paris branded products. The Panel finds that the Domain Names <tresorparisbijoux.com> and <bijouxtresor.com> are diverted to another Domain Name <tresorparis-bijoux.com> while the Domain Names <bijouterietresorparis.com> and <tresorparisfr.com> are currently inaccessible. However, the Bailiff’s Reports in the Complaint witness that <bijouterietresorparis.com> was used to promote TrésOr and Trésor Paris branded products. The Domain Names status search conducted by the Center on March 27, 2012 showed that <tresorparisfr.com> was diverted to <tresorfr.com> and that both <tresorparis-bijoux.com> and <tresorfr.com> were used to promote TrésOr and Trésor Paris branded products.

The Panel finds that bad faith is established by the Respondents’ use of the Domain Names to attract Internet users to for-profit online stores selling TrésOr and Trésor Paris branded products. The Panel finds that by incorporating the Complainant’s trademarks in the Domain Names, the Respondents are intentionally creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Websites, and that the Internet users are likely to be confused into thinking that the Domain Names have a connection with the Complainant, which is contrary to the fact.

Moreover, the Respondents have chosen not to respond to contentions of the Complainant and such failure may in certain circumstances be further indicative of bad faith. See The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “The failure of the Respondent to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787)”.

In light of the above facts and reasons, the Panel therefore determines that the Domain Names were registered and are being used in bad faith pursuant to the Policy.

9. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <tresorparisbijoux.com>, <bijouterietresorparis.com>, <tresorparisfr.com> and <bijouxtresor.com> be transferred to the Complainant.

Jacob (Changjie) Chen
Sole Panelist
Dated: June 21, 2012

 

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