WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Patyka Cosmetics v. WuGang

Case No. D2011-0277

1. The Parties

The Complainant is Patyka Cosmetics of Paris, France, represented by Aklea Law Firm, France.

The Respondent is WuGang of Anqing, Anhui, the People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <patykachina.com> is registered with Bizcn.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2011. On February 11, 2011, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the disputed domain name. On February 14, 2011, Bizcn.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 14, 2011, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On February 15, 2011, the Complainant confirmed its request 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, and the proceedings commenced on February 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2011.

The Center appointed Jonathan Agmon as the sole panelist in this matter on March 17, 2011. 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, Patyka Cosmetics, is a French company, which specializes in organic cosmetics and organic perfumes.

The Complainant's products are sold in many retail stores worldwide, notably in the United States of America, Morocco, Japan and several countries in Europe.

The Complainant is the owner of multiple trademark registrations, which consist the mark PATYKA all around the world. For example: French trademark registration No. 3123365 – PATYKA 1922 (logo), with the registration date of September 28, 2001; Community trademark registration No.2617017 – PATYKA 1922 (logo), with the registration date of August 12, 2004; United States trademark registration No. 3126282 – PATYKA (logo), with the registration date of August 8, 2006;

The Complainant also developed its presence on the Internet, and is the owner of domain names, which contain the mark PATYKA. For example: <patyka.com>, <patyka.net>,<patyka.fr>, <patyka.org>, <patyka.biz> and more.

The disputed domain name was registered on November 20, 2007.

The disputed domain name resolves to website which offers for sale, various cosmetic products bearing the PATYKA mark.

The Complainant sent several cease and desist letters to the Respondent on August 30, 2010 and January 10, 2011, in both English and Chinese. In these letters the Complainant informed the Respondent of its intellectual property rights in the mark PATYKA and demanded that the Respondent cease from using the disputed domain name and transfer it to the Complainant. The Respondent did not respond to the Complainant's cease and desist letters.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant's trademarks, as it wholly incorporates, as a dominant element, the Complainant's registered trademark PATYKA, which is a word that has no dictionary meaning in English or Chinese.

The Complainant further argues that the addition of the geographical location "China" to the disputed domain name is not sufficient to avoid the confusing similarity between the disputed domain name and the Complainant's mark.

The Complainant further argues that the products displayed on the website under the disputed domain name are the Complainant's former products, which are now sold in new packaging.

The Complainant further argues that the Respondent reproduces on the website, under the disputed domain name, the Complainant's former logo, and the former appearance of the Complainant's website.

The Complainant further argues that the addition of the gTLD ".com" to the disputed domain name does not result in avoiding confusing similarity between the disputed domain name and the Complainant's mark.

The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain name, since the Respondent does not own relevant trademark registrations, and is not commonly known by the word "Patyka".

The Complainant further argues that the Complainant has not licensed or authorized the Respondent to use the disputed domain name or the Complainant's trademarks.

The Complainant further argues that the Respondent was aware of the Complainant when registering the disputed domain name, and that the disputed domain name was registered to divert Internet traffic from the Complainant's website for commercial gain.

The Complainant further argues that the Respondent is not making any legitimate use of the disputed domain name, since it is using the disputed domain name to sell the Complainant's own products, and by misleading the public to think that the website under the disputed domain name is an official website of the Complainant.

The Complainant further argues that the Respondent’s actions of misleading the public and copying an older version of the Complainant's website, demonstrates the Respondent's bad faith in registering and using the disputed domain name.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Procedural Issue – Language of the Proceedings

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 language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of proceedings should be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not 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).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceedings:

a) The disputed domain name consists of the English word and geographical location “China”, and the word “Patyka”, which lacks dictionary meaning in both English and Chinese;

b) The website, to which the disputed domain name resolves, contains text in English;

c) The Respondent did not object to the Complainant's request that English be the language of proceedings.

Upon considering the above, the Panel decides to render the Complainant's request and rules that English be the language of proceedings.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant owns multiple trademark registrations consisting the mark PATYKA. For example: French trademark registration No. 3123365 – PATYKA 1922 (logo), with the registration date of September 28, 2001; Community trademark registration No.2617017 – PATYKA 1922 (logo), with the registration date of August 12, 2004; United States trademark registration No. 3126282 – PATYKA (logo), with the registration date of August 8, 2006.

The disputed domain name <patykachina.com> differs from the registered PATYKA trademark by the additional word “China” and the additional gTLD suffix “.com”.

The addition of the geographical indicator “China” is insufficient to avoid confusing similarity as it is a non-distinctive element that is potentially connected with the Complainant's market for its products.

The most prominent element in the domain name is clearly the term “Patyka”, which lacks dictionary meaning in both English and Chinese, and may cause the public to view it as connected to the PATYKA trademark.

Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). See also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909).

The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.

The result is that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark, in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the responsibility of coming forward with evidence shifts to the Respondent to show that he has rights or legitimate interests in respect to the disputed domain name.

In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia due to the fact that Complainant has not licensed or otherwise permitted the Respondent to use the PATYKA trademark, or a variation thereof.

The Respondent has not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.

Having stated the above, it should be noted that the Respondent's actions, offering for sale the Complainant's products, bearing the Complainant's trademarks, could constitute a legitimate interest in certain circumstances. However, those circumstances relevantly include that the Respondent uses its website to sell only the goods bearing the Complainant’s trademarks and the site accurately discloses the registrant’s relationship with the trademark owner (See GoDaddy.com, Inc. v. Swsnet, WIPO Case No. D2007-1352). These circumstances are not present in this case, as the disputed domain name includes the Complainant's trademark and the Respondent’s website does not disclose any relationship with the Complainant.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that shall be evidence of bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant submitted evidence that shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned registrations for the PATYKA trademark at least since the year 2001. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

Paragraph 4(b)(iv) of the Policy provides that shall be evidence of considered bad faith registration and use by the respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.

The Respondent is using the Complainant’s trademark to promote goods that are regularly sold by the Complainant. This is clear indication that the Respondent must have registered the disputed domain name with knowledge of the Complainant’s PATYKA trademark and its commercial use of it, and intended to trade off the value of these. The Respondent’s actions therefore constitute bad faith under the Policy. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. Indeed, the Respondent's use of the disputed domain name without rights or legitimate interests for promoting identical goods to the ones that are sold by the Complainant constitutes bad faith on behalf of the Respondent (See Schur International A/S v. Jorge Massa, WIPO Case No. D2009-0450).

The Panel also notes that the disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic for commercial purposes by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

In addition, the Panel notes that the Respondent failed to reply to the Complainant's cease and desist letter. In the present circumstances, this constitutes additional evidence of the Respondent's bad faith (ALSTOM v. STOCKMARKET DOMAINS, WIPO Case No. D2008-1542).

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the confusing similarity between the disputed domain name and the Complainant's mark and the Respondent's default in responding to the cease and desist letter, the Panel draws the inference that the disputed domain name was registered and used in bad faith.

Accordingly, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 domain name <patykachina.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Dated: March 28, 2011