WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Repetto v. LinMaoJian

Case No. D2012-1639

1. The Parties

Complainant is Repetto of Paris, France, represented by Nameshield, France.

Respondent is LinMaoJian of Fujian, China.

2. The Domain Name and Registrar

The disputed domain name <repettoflats.com> is registered with HooYoo Information Technology Co. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2012. On August 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On August 20, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, Complainant confirmed its request that English be the language of proceeding. 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 Respondent of the Complaint, and the proceedings commenced on August 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 18, 2012.

The Center appointed Yijun Tian as the sole panelist in this matter on October 2, 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

A. Complainant

Complainant, Repetto, is a company incorporated in Paris, France. It is a well-known manufacturer and distributor of ballet shoes and other footwear, established in 1947.¹ It is the owner of international registrations for the word and logo trademark REPETTO (the “Trade Mark”), the earliest dating from 1977 (Annex 4 to the Complaint).

Complainant also owns the domain name registrations <repetto.com> (since April 20, 1997), <repetto.fr> (since June 22, 1999) and <repetto.cn> (since March 20, 2007) and multiple other domain names incorporating the REPETTO Mark (see Annex 5 to the Complaint).

B. Respondent

Respondent is LinMaoJian of Fujian, China. The disputed domain name <repettoflats.com> was registered on March 25, 2012, long after the REPETTO Marks became internationally famous (Annexes 1-2 to the Complaint).

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

- The disputed domain name is confusingly similar to its well-known and distinctive trademark REPETTO registered and used since 1977.

- The disputed domain name incorporates the entirety of Complainant's trademark which is associated to English term “flats” in relation with Complainant’s business.

- The addition of a gTLD “.com” and terms as “flats” is not sufficient to escape the finding that the disputed domain name is confusingly similar to its trademark.

- A Google search of term “Repetto” displays several results, only related to Complainant.

(b) Respondent has no rights or legitimate interests in respect of the disputed domain name;

- Respondent is not affiliated with nor authorized by Complainant in any way.

- Respondent has no rights or legitimate interests in respect of the disputed domain name and it is not related in any way to Complainant’s business. Respondent is not commonly known as “Repetto”.

- The domain name <repettochaussures.com> displays content in relation with the Complainant’s activities (See Annex 6 to Complaint). [Note: The Panel assumes that Complainant is referring to <repettoflats.com> rather than <repettochaussures.com> since Annex 6 is an e-copy of < repettoflats.com> webpage].

- The content of the website under the dispute is identical to another domain name <repettochaussures.com> in Repetto v. ChenXiuQiang, XueYanLing, ChenXiaoLing, JiangGuiDuan and GaoChao, WIPO Case No. D2012-0690. (See Annex 7 to the Complaint).

- Complainant contends that Respondent uses the disputed domain name and displays Complainant's logo to divert Complainant's customers to its counterfeit products.

- Complainant contends that Respondent has no rights because the term “Repetto” and the trademark REPETTO are well-known and distinctive, and it appears that Respondent intended to cash in on the goodwill and reputation of Complainant’s trademark. It does not give rise to any rights or legitimate interests in the disputed domain name.

(c) The disputed domain name was registered and is being used in bad faith.

- Complainant contends that its trademark REPETTO is well-known in the world, especially in China which its products are marketed through the website “www.repetto.cn”, and a Google or Baidu searches with the term “Repetto” displays results in relation with Complainant. Respondent couldn’t ignore Complainant and its trademark.

- The disputed domain name <repettoflats.com> displays content in French and English languages in relation with Complainant and Respondent has reproduced Complainant's logo and lettering of the trademark REPETTO.

- By this use, Respondent creates a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of Respondent's services.

- The purpose of this registration is to divert Complainant’s customers to Respondent’s counterfeit products without the consent of Complainant, owner of the trademark REPETTO. Using domain names to facilitate the sale of counterfeit goods is strong evidence of bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceedings for the following reasons:

(a) Respondent is familiar with the English language;

(b) The website in connection with the disputed domain name displays information in English (see Annex 6 to the Complaint);

Respondent did not make any submissions with respect to the language of the proceedings and did not object to the use of English as the language of the proceedings.

Paragraph 11(a) allows the Panel to determine the language of the proceedings having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceedings. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceedings should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:

“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from France, and Complainant will be spared the burden of working in Chinese as the language of the proceedings. The Panel has also taken into consideration the facts that the disputed domain name includes Latin characters “Repetto” and English word “flats” and the websites at the disputed domain name is displayed partially in English (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <repettoflats.com> is registered in Latin characters and particularly in English language, rather than Chinese script; (b) the website at the disputed domain name is in English and French and Respondent is apparently doing business in English and French through this website (Annex 6 to the Complaint); (c) the Website appears to have been directed to users worldwide (particularly English speakers) rather than Chinese speakers; (d) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceedings; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceedings, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the REPETTO mark acquired through registration. The REPETTO mark has been registered internationally (Annex 4 to the Compliant), and Complainant has a widespread reputation in producing and distributing REPETTO branded ballet shoes and other footwear.

The disputed domain name <repettoflats.com> comprises the REPETTO mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the addition of the final word “flats” to the mark REPETTO. This does not seem to eliminate the confusing similarity between Complainant’s registered trademark and the disputed domain name.

Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark 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).

Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).

The mere addition of the descriptive term “flats” as a suffix to Complainant’s mark fails to distinguish to this Panel the disputed domain name from Complainant’s trademark. Internet users who visit <repettoflats.com> are likely to be confused and may falsely believe that <repettoflats.com> is operated by Complainant for selling REPETTO branded products.

Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the REPETTO mark.

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

B. Rights or Legitimate Interests

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

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

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

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel 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 to rebut the complainant’s contentions. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has rights in the REPETTO mark globally (international registration since 1977- see Annex 4 to the Complaint), and owns many domain names, including domain name registrations <repetto.com> (since April 20, 1997) and <repetto.cn> (since March 20, 2007), which long precedes Respondent’s registration of the disputed domain name (March 2012).

According to Complainant, REPETTO is a brand of ballet shoes. Founded in 1947 by Rose Repetto at the request of his son, Roland Petit, REPETTO is a well-known brand. REPETTO brand is now positioned as a reference not only in the dance world but also in the manufacture of shoes. It mainly produces ballerinas but also boots, moccasins, babies, and pumps, drawing inspiration from different kinds of dances. The brand is now distributed worldwide through many outlets. (See Annex 3 to the Complaint).

Moreover, Respondent is not an authorized dealer of REPETTO branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; 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).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “repetto” in its business operation or the use of the REPETTO mark and design on its website (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the REPETTO mark or to apply for or use any domain name incorporating the REPETTO mark;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. The disputed domain name <repettoflats.com> was registered on March 2012. The disputed domain name is identical or confusingly similar to Complainant’s REPETTO mark.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was actually advertising, offering and selling purported REPETTO products at <repettoflats.com> (Annex 6 to the Complaint).

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

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

(ii) 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 Respondent has engaged in a pattern of such conduct; or

(iii) 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, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the REPETTO mark with regard to its products. Complainant has registered its REPETTO mark internationally (since 1977). Moreover, the website at the disputed domain name advertises for sale various purported REPETTO products. Respondent would likely not have advertised products purporting to be REPETTO products on the Website if it was unaware of Repetto’s reputation. In the other words, it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the REPETTO mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s REPETTO trademark.

b) Used in Bad Faith

Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” purportedly offering Complainant’s REPETTO branded products and services without authorization.

To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the REPETTO mark (as well as the content on Respondent’s website –mentioned above – Annex 6 to the Complaint), the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved (see Annex 6 to the Complaint). In other words, Respondent has through the use of a confusingly similar disputed domain name and webpage contents created a likelihood of confusion with the REPETTO mark. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential Internet users are led to believe that the website at <repettoflats.com> is either Complainant’s sites or the sites of official authorized agents of Complainant, which it is not. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain name was used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use the disputed domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the Website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

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

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 name <repettoflats.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: October 19, 2012

¹ It mainly produces ballerinas but also boots, moccasins, babies, and pumps, drawing their inspiration from different kinds of dances