WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LeSportsac, Inc. v. Zhao Zhao
Case No. D2012-2505
1. The Parties
The Complainant is LeSportsac, Inc. of Reno, Nevada, United States of America, represented by Kenyon & Kenyon LLP, United States of America.
The Respondent is Zhao Zhao of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <lesportsacbrasil.com> is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2012. On December 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 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. On December 21, 2012, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. The Complainant confirmed on the same day its request that English be the language of the proceeding. No comments were received from the Respondent on this matter 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 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2013.
The Center appointed Douglas Clark as the sole panelist in this matter on February 7, 2013. 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.
Language of Proceedings
The language of the Registration Agreement is Chinese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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 proceeding.”
The Complainant requested the language of the proceedings be in English on the grounds that the Complainant is not familiar with the Chinese language, that the international language of business is English, and that the website under the disputed domain name is written almost entirely in Portuguese with some English words.
The Respondent has not responded to the proceedings nor to the request that the language of the proceeding to be English.
As this Panel held in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, a default by a respondent in responding to a request that the language of proceedings be in a language other than the registration should be a strong factor in allowing the proceedings to proceed in another language.
Given, also, the strong case the Complainant has on the merits, the Panel, therefore, determines that English shall be the language of the proceedings.
4. Factual Background
The Complainant has since 1974 promoted the trademark LE SPORTSAC as its principal trademark for bags of various types. It has annual sales under the brand of over USD 300 million.
The Complainant has registered the trademark LE SPORTSAC in numerous countries around the world, including in China and Brazil in International Class 18.
The disputed domain name <lesportsacbrasil.com> was registered on September 4, 2012. The site to which the disputed domain name resolves sells bags bearing the LE SPORTSAC trademarks. It is also selling bags with no LE SPORTSAC trademarks on them by reference to the trademark LE SPORTSAC. The Respondent is not a licensee or in anyway authorized by the Complainant to use the LE SPORTSAC trademark.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant argues that the disputed domain name <lesportsacbrasil.com> is made up of the registered trademark LE SPORTSAC to which the geographic term “Brasil” has been added. It is therefore confusingly similar to the Complainant’s trademark.
Rights or legitimate interests
The Complainant submits that the Respondent has not been known by the name “Le Sportsac” and the Respondent has no connection with the Complainant or any of its affiliates.
In particular, the Complainant submits that the website to which the disputed domain name resolves to is used to sell products that claim to be Le Sportsac products. The Respondent also claims to be a “direct manufacture[r]” and a brand owner that “can closely monitor the quality of all our products” and is seeking to mislead consumers.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name, the Respondent knew of the Complainant’s rights in the trademark LE SPORTSAC. The Complainant argues that the unauthorized sale of products by the Respondent on the website “www.lesportsacbrasil.com” and giving Internet users the impression of the website selling genuine products of the Complainant is clearly use of the disputed domain name in bad faith by seeking to divert customers to the site.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In this Panel’s view, this is a very simple case of clear domain name hijacking for the purposes of commercial gain which the UDRP was designed to stop.
A. Identical or Confusingly Similar:
The disputed domain name <lesportsacbrasil.com> is made up of the registered trademark LE SPORTSAC and a geographical term. The disputed domain name is clearly confusingly similar to the registered trademark LE SPORTSAC.
The Panel finds the first part of the paragraph 4(a) of the Policy is therefore satisfied.
B. 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 <lesportsacbrasil.com> where the Complainant’s trademark features prominently makes it hard to imagine that the Respondent could ever establish any rights or legitimate interests.
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.
The Panel finds the second part of the paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith:
For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain name <lesportsacbrasil.com> was registered in bad faith and is being used in bad faith.
This case clearly falls within 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.”
The Panel finds that the third part of paragraph 4(a) of the Policy is satisfied.
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 <lesportsacbrasil.com> be transferred to the Complainant.
Date: February 25, 2013