WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
C.C.V. Beaumanoir v. Zhihao Zheng
Case No. D2012-2117
1. The Parties
The Complainant is C.C.V. Beaumanoir of Paris, France, represented by Inlex IP Expertise, France.
The Respondent is Zhihao Zheng of wenzhoushi, China.
2. The Domain Name and Registrar
The disputed domain name <morgandetoi.mobi> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2012. On October 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 28, 2012, 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.
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 November 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2012. An informal email communication was received by the Respondent on November 12, 2012.
The Center appointed Karen Fong as the sole panelist in this matter on December 19, 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 is the owner of the French fashion brand MORGAN DE TOI and MORGAN. Products under the brand name MORGAN DE TOI and/or MORGAN were distributed since 1947. The brand has grown over this period to become an international brand. MORGAN DE TOI products are sold in department stores as well as its own stand alone clothing stores. There are now over 200 MORGAN DE TOI stores in over 20 countries including China where the Respondent is located. The MORGAN DE TOI products were first marketed in China more than 10 years ago and there are now more than 30 shops in the country.
The Complainant owns registered trade marks for MORGAN DE TOI and MORGAN in many countries all over the work including China. The print out of the international trade mark registration that was annexed to the Complaint dates back to 2001 and comprise the words MORGAN, MORGAN DE TOI and a heart device. The Complainant also owns a variety of domain names which has the MORGAN DE TOI trade mark as the second level domain including <morgandetoi.com>, <morgandetoi.ch>, <morgandetoi.cn>, <morgandetoi.de>, <morgandetoi.es>, <morgandetoi.eu>, <morgandetoi.fr>, <morgandetoi.lu>, <morgandetoi.net>, <morgandetoi.co.uk> and <morgandetoi.us>.
The Domain Name was registered on April 4, 2010. The Domain Name is connected to a website that is a parking page with links to pay per click websites of third parties including fashion websites.
Prior to the filing of the Complaint, the Complainant sent a cease and desist letter as well as several reminders to the Respondent but the matter was not resolved.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the MORGAN DE TOI trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions save for an email sent on November 12, 2012 in Chinese to the Center asking what the matter was about and requesting that the communications be in Chinese as the writer could not understand what was being said.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Preliminary Point
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement is English.
The Panel finds that the Respondent’s request for the communications to be in Chinese is not a legitimate request as the language of the proceeding is English and this decision is made on the basis that the Respondent failed to file a substantive response to the Complainant’s contentions.
C. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights to the name MORGAN DE TOI through use and registration that pre dates the Domain Name.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case one of Complainant’s registered trade mark is a composite mark which includes the name MORGAN DE TOI. MORGAN DE TOI is the dominant portion of the Domain Name.
The fact that the Complainant’s own websites are connected to domain names in which the second level domain is <morgandetoi> creates an overall impression that the Domain Name is part of the same stable as the Complainant’s domain names and that there is therefore a risk that Internet users may actually believe there to be a real connection between the domain name and the Complainant and/or its goods and services. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the “.mobi” generic domain suffix.
The Panel finds that the Domain Name is confusingly similar to the MORGAN DE TOI trade mark of the Complainant, and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled.
D. Rights or Legitimate Interests
The Complainant contends that the Respondent has not been licensed or authorized by the Complainant to use the MORGAN DE TOI name. There is no commercial relationship between them. The Respondent does not appear to own any trade mark rights or any other rights to the name MORGAN DE TOI. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the marks at issue.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names. Further, paragraph 14 of the Rules provides that the Panel may draw such inferences from such a default as it considers appropriate.
Accordingly, the Panel infers from the Respondent’s silence that the Complainant’s allegations are, in fact, correct. And the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
E. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Complainant’s famous trade mark when it registered the Domain Name. The Complainant has provided sufficient evidence that the Domain Name registration post dates the MORGAN DE TOI trade mark registrations and use.
The very incorporation of the Complainant’s trade mark, a slogan with no meaning in French, in the Domain Name confirms the Respondent’s awareness of the trade marks. Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Respondent was using the Domain Name to direct Internet users to a parking page which has links to pay per click websites offering a variety of goods and services including fashion sites. Such use employ the Complainant's well-known trade mark in the Domain Name for commercial gain by creating Internet user confusion through suggesting source, sponsorship, affiliation or endorsement by Complainant of Respondent’s website. This constitutes bad faith use of the Domain Name.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <morgandetoi.mobi> be transferred to the Complainant.
Date: January 3, 2013