WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
David Yurman IP LLC v. Guangsheng Zhang
Case No. D2014-1119
1. The Parties
The Complainant is David Yurman IP LLC of New York, New York, United States of America, represented by David Yurman IP, LLC, United States of America.
The Respondent is Guangsheng Zhang of Xiamen, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <davidyurmanoutlet.net> is registered with Bizcn.com, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 27, 2014. On June 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 2014, 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. In response to a notification by the Center regarding candidates for panelists, the Complainant provided three candidates names for panelists on July 10, 2014.
On July 7, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On July 10, 2014, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding 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 in both Chinese and English, and the proceeding commenced on July 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 6, 2014.
The Center appointed Douglas Clark, Lynda M. Braun and Dr. Hong Xue as panelists in this matter on August 25, 2014. The Panel finds that it was properly constituted. Each member of 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 registered proprietor of the trademark DAVID YURMAN registered and used for, inter alia, jewelry, in the United States of America.
The disputed domain name <davidyurmanoutlet.net> was registered on January 2, 2014. At the date of drafting this decision the website to which the disputed domain name resolved is not active. At the time the Complaint was filed the website to which the disputed domain name resolved stated it was the David Yurman online store. It featured prominently the trademark DAVID YURMAN and was offering for sale David Yurman jewellery. The Complainant made a purchase from the website and states that the product purchased was counterfeit. The "About Us" section of the website provides background to the establishment of the David Yurman brand by David Yurman.
5. Parties' Contentions
Identical or confusingly similar
The Complainant argues that the disputed domain name <davidyurmanoutlet.com> is made up of the registered trademark DAVID YURMAN to which the generic or descriptive term "outlet" has been added. It is therefore confusingly similar to the Complainant's registered trademarks DAVID YURMAN.
No rights or legitimate interests
The Complainant submits that the Respondent has not been known by the disputed domain name and the Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for DAVID YURMAN.
Further the Complainant submits that the use of the website under the disputed domain name to sell products that are counterfeit cannot establish any rights or legitimate interests.
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 DAVID YURMAN trademark. The unauthorized sale of products by the Respondent on the website at the disputed domain name gives the impression of being a genuine website is clearly use in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the Registration Agreement is in 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 proceeding be English on the grounds that (1) the Respondent corresponded with a customer in English; (2) that the website under the disputed domain name references to "www.davidyurmanoutlet.org" that was the subject of a prior UDRP complaint (David Yurman IP LLC v. PrivacyProtect.org/luo xiaojie, WIPO Case No. D2013-1621); (3) a purchase order receipt provided by the Respondent was in English; and (4) the website under the disputed domain name is written entirely in English.
In the circumstances of this case, the Panel determines that English shall be the language of the proceeding. The website under the disputed domain name was written entirely in English and designed to do business worldwide in English. The Respondent has communicated with customers in English. There can be no doubt that the Respondent is able to handle this proceeding in English.
6.2. Substantive Issues
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 <davidyurmanoutlet.net> is made up of the registered trademark DAVID YURMAN and descriptive term, "outlet". The disputed domain name is clearly confusingly similar to the registered trademark DAVID YURMAN. 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. Paragraph 2.1 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") provides:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP."
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. 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.
Further, the use made by the Respondent of the website under the disputed domain name <davidyurmanoutlet.net> where the Complainant's trademark features prominently and apparently counterfeit products are sold make it hard to imagine that the Respondent could ever establish any rights or legitimate interests in the disputed domain name.
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 <davidyurmanoutlet.net> was registered in bad faith and is being used in bad faith.
This case 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."
The Respondent was selling counterfeit products pretending that the website under the disputed domain name was the official online store of the Complainant. This is clear registration and use of the disputed domain name in bad faith.
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 <davidyurmanoutlet.net> be transferred to the Complainant.
Lynda M. Braun
Dr. Hong Xue
Date: August 28, 2014