WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kering v. Jiafei Zhao
Case No. D2014-0872
1. The Parties
The Complainant is Kering of Paris, France, represented by Cabinet Santarelli, France.
The Respondent is Jiafei Zhao of Shuyang, Jiangsu, China.
2. The Domain Name and Registrar
The disputed domain name <keringgroup.info> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 23, 2014. On May 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 23, 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.
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 June 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 23, 2014.
The Center appointed Michelle Brownlee 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 owns, inter alia, French Registration Number 123920561 and Community Trademark Registration Number 10978741 for the mark KERING in connection with a wide variety of goods and services in classes 3, 14, 18, 25, 28, 35, 36, 38 and 41, since 2012.
The Respondent registered the Domain Name on April 26, 2013.
5. Parties' Contentions
The Complainant states that it is a world leader in apparel and accessories and develops an ensemble of powerful brands such as Gucci, Bottega Veneta, Saint Laurent, Alexander McQueen, Balenciaga, Brioni, Tomas Maier, Christopher Kane, Stella McCartney, Sergio Rossi, Boucheron, Dodo, Girard-Perregaux, JEANRICHARD, Pomellato and Qeelin in the luxury sector; and Puma, Volcom, Cobra, Electric and Tretorn in the sports and lifestyle sector.
The Complainant was formerly known under a different corporate name, namely PPR. The Complainant's change of name into "Kering" was announced in international press releases in March of 2013. Numerous articles appeared in the press around the world about the Complainant's change of name.
The Complainant operates a website at the "www.kering.com", and is also the registrant of numerous other domain names that include the KERING trademark, such as <kering.asia>, <kering.biz>, <kering.info>, <kering.org>, <keringgroup.com>, <keringgroup.net>, <keringgroup.org>, <keringgroup.cn>, <keringgroup.eu>, <kering-group.com>, and <kering-group.eu>.
The Complainant contends that the Domain Name is confusingly similar to the KERING trademark, that the Respondent has no rights to or legitimate interests in respect of the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant argues that the website is being used to generate click-through advertising revenue from Internet users who click on links on the site. The Complainant points to the fact that the Domain Name was registered shortly after the Complainant's change of company name was publicized in the press. Further, the Complainant sent a cease and desist letter to the Respondent and requested that the Domain Name be transferred. The Respondent replied that he was willing to sell the Domain Name to the Complainant for USD 1,590. The Complainant submits that this amount far exceeds the Respondent's out-of-pocket costs related to the Domain Name. Finally, the Complainant notes that the same Respondent has been ordered by other WIPO UDRP panels to transfer other domain names. See Somfy SAS v. Zhao Jiafei, WIPO Case No. D2013-1741 (<somfy.info>); The Gillette Company v. Zhao Jiafei, WIPO Case No. D2013-1954 (<duracell.info>); HID Global Corporation v. Jiafei Zhao, WIPO Case No. D2014-0343 (<hidglobal.info>); and NVIDIA Corporation v. Zhao Jiafei, WIPO Case No. D2013-1014 (<nvidia.biz>).
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns rights in the KERING trademark. The addition of the word "group" in the Domain Name does not serve to distinguish the Domain Name from the Complainant's trademark. When a distinctive mark is paired with less distinctive terms, the combination will typically be found to be confusingly similar to the distinctive mark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, WIPO Case No. D2007-1140.
Under these circumstances, the Panel finds that the Domain Name is confusingly similar to the Complainant's KERING mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) 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 trademark at issue.
The Respondent has not presented evidence that the Respondent used or made preparations to use the Domain Name in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name or that the Respondent is making a noncommercial or fair use of the Domain Name, or in any other way refuted the Complainant's prima facie case. The Complainant has alleged that the Respondent is using the Domain Name in connection with a web site that uses the Complainant's trademark to attract visitors in order to generate click-through advertising revenue. The Respondent has not refuted those allegations. In the Panel's view, under the circumstances in this case this cannot be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Complainant has established this element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant has established bad faith under paragraph 4(b)(i), 4(b)(ii) and 4(b)(iv) of the Policy. The Complainant has alleged that the Domain Name has been used in connection with a web site that attracts Internet users by creating a likelihood of confusion with the Complainant's trademark, and that the web site is being used to generate click-through advertising revenue. The Complainant also presented other WIPO UDRP decisions that found that the same Respondent registered and used other domain names incorporating trademarks in bad faith. Further, the Complainant presented evidence that the Respondent sought to sell the Domain Name to the Complainant for a fee that exceeded the Respondent's out-of-pocket costs related to the Domain Name. The Respondent did not reply to these contentions.
Under the circumstances, the Panel finds that the Respondent has registered and is using the 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 Domain Name <keringgroup.info> be transferred to the Complainant.
Date: July 9, 2014