WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PEI Licensing, Inc. v. Shen ZhenPaiRuiAiLeiShiFuZhuang CO.LTD.
Case No. D2014-0786
1. The Parties
The Complainant is PEI Licensing, Inc. of Miami, Florida, United States of America, represented by Davis Wright Tremaine LLP, United States of America.
The Respondent is Shen ZhenPaiRuiAiLeiShiFuZhuang CO.LTD. of Shenzhen, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <perychina.com> is registered with Todaynic.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2014. On May 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 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. On May 15, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On May 21, 2014, 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 in both Chinese and English, and the proceedings commenced on May 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2014.
The Center appointed Douglas Clark as the sole panelist in this matter on June 26, 2014. 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 an American fashion house, which has been operating for at least 27 years. The website of the Complainant is “www.perryellis.com”.
The Complainant has registered the trademark PERRY ELLIS in the United States of America in a wide variety of classes. It has also registered the trademark PERRY in Class 3 in the United States of America. The Panel through its own research has found that the Complainant has registered PERRY ELLIS in China in a number of classes. It appears to have no registration for PERRY by itself in China.
The disputed domain name resolves to a page where the words “Perry Ellis” appear prominently on the page.
The Respondent is a Chinese company. It was previously the respondent in UDRP proceedings filed in 2011 in relation to the domain name <perrychina.com> (PEl Licensing, Inc. v. Shen PaiRuiAiLeiShiFuZhuang CO.LTD., WIPO Case No. D2011-0745). The panel in that case ordered that <perrychina.com> be transferred to the Complainant. The domain name <perrychina.com> now automatically forwards to the Complainant’s website “www.perryellis.com”. The decision was rendered on June 14, 2011.
The disputed domain name was registered on June 28, 2011, two weeks after the decision in WIPO Case No. D2011-0745.
5. Parties’ Contentions
The Complainant’s contentions are set out below.
The Complainant submits that the disputed domain name <perychina.com> consists of the word “pery” and the geographic indicator “China”. The first word, “pery”, is a misspelling of “perry”. The disputed domain name is therefore made up of a geographical indicator and word that is confusingly similar to the Complainant’s trademark. It is thereby confusingly similar to the Complainant’s trademark.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. It is not known by the name “PeryChina”. It has received no consent or license from the Complainant to use the Complainant’s trademark in the disputed domain name.
The Complainant submits that the disputed domain name was registered and used in bad faith with the intention of attracting Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark.
The Respondent did not reply to the Complainant’s contentions.
6.1 Preliminary Issue - Language of Proceedings
The language of the registration agreement for the disputed domain name 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 that English be the language of the proceedings on the basis that the website at the disputed domain name was primarily in English and that their intellectual property counsel used English. The Complainant said if necessary the Complaint would be translated into Chinese.
The Respondent did not comment on the language of the proceedings.
The Panel is of the opinion that the translation of the Complaint into Chinese would unduly delay the proceedings, and the Complainant would have to incur expenses for translation. In the circumstances, and in the interest and fairness to both parties, pursuant to paragraph 11(a) of the Rules, the Panel finds that the language requirement has been satisfied through the use of Chinese in the Notification of Complaint and Commencement of Administration Proceeding.
On this basis, and the fact that this is the second case brought by the Complainant against the Respondent in relation to a very similar domain name, the Panel determines the language of proceedings to be English.
6.2 Substantive Elements of the Policy
A. Identical or Confusingly Similar
The disputed domain name <perychina.com> is made up of the word “pery” and the geographical indicator “China”.
Paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), provides (in part):
“The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP.”
For the purposes of determining confusing similarity the Panel can ignore the word “China”.
The panel notes that in the proceedings in relation to <perrychina.com>, the very experienced panelist in that case held that “perry” was identical to the Complainant’s trademark PERRY and confusingly similar to the Complainant’s trademark PERRY ELLIS. In this case, however, the comparison is between “pery”, PERRY and PERRY ELLIS.
Paragraph 1.2 of the WIPO Overview 2.0, sets out the test for determining confusing similarity. Paragraph 1.2 provides (in part):
“The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms [regarding the latter see further paragraph 1.3 below] typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. While each case must be judged on its own merits, circumstances in which a trademark may not be recognizable as such within a domain name may include where the relied-upon mark corresponds to a common term or phrase, itself contained or subsumed within another common term or phrase in the domain name (e.g. trademark HEAT within domain name theatre.com).”
On this test, the Panel has no difficulty in finding “pery” to be confusingly similar to PERRY.
The Panel, however, finds it much more difficult to determine that “pery” is confusingly similar to PERRY ELLIS. The first word differs by the removal of the letter “r”. “Ellis” is not present at all. On the application of a straightforward visual analysis it is difficult to say that they are confusingly similar. There is no doubt, however, when looking at the website at the disputed domain name that the use of the “Perychina” is intended to create confusion with PERRY ELLIS. Some panels have considered it appropriate to consider the content of the website at the domain name when determining confusing similarity. However, for the purposes of this decision it is not necessary to consider this complex issue.
The Panel will proceed on the basis that “pery” is confusingly similar to the Complainant’s registered trademark PERRY. This raises the issue that the only registration that the Complainant has for PERRY appears to be in the United States of America and only for cosmetics.
The ownership of a trademark is generally considered a standing issue only. Paragraph 1.1 of the WIPO Overview 2.0 provides:
“If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use) [see also paragraph 1.4 below], and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. However, such factors may bear on a panel's determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP.”
The first element of the Policy is, therefore, made out.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not responded to the Complaint to assert any rights or legitimate interests in the disputed domain name. Clearly, in the Panel’s opinion, 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 that the second element of the Policy is made out.
C. Registered and Used in Bad Faith
The Panel has no hesitation in finding that the disputed domain name was registered in bad faith and is being used in bad faith.
First, the registration of a very similar domain name <perychina.com> just after the Respondent had lost a previous case in relation to <perrychina.com> is as clear evidence of bad faith as can be found.
Second, 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.”
In the Panel’s assessment, the use of the website at the disputed domain name to promote products under the trademark PERRY ELLIS is clearly designed for commercial gain.
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 <perychina.com> be transferred to the Complainant.
Date: July 11, 2014