WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Paris Saint Germain Football v. Gao Bi / Bi Gao / Rui De
Case No. D2015-0126
1. The Parties
The Complainant is Paris Saint Germain Football of Paris, France, represented by Cabinet Plasseraud, France.
The Respondent is Gao Bi / Bi Gao / Rui De of Fujian, China.
2. The Domain Names and Registrar
The disputed domain names <maillotfootpsg.com>, <maillotfootpsgpascher.com> and <maillotpsgpascher.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2015. On January 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 27, 2015, 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 February 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2015.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on March 6, 2015. 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 in this proceeding is Paris Saint Germain Football, also known under the acronym “PSG”. The Complainant is a well-known French football club established in 1970. It recently won the 2013 and 2014 French Football Championship and it also participated in the 2011 and 2012 Europa Leagues.
The Complainant is present on the Internet, mainly through its official website “www.psg.fr”. This website is published in several languages, English and Chinese included.
The Complainant also operates an official online store accessible at “www.boutiquepsg.fr”.
The Complainant has proven that the trademark PSG enjoys protection in many registrations.
The Complainant is inter alia the owner of:
- French Trademark Registration PSG application No. 1564786, filed on February 14, 1989, notably in class 25: “All sporting goods”.
- French Trademark Registration PSG application No. 3647436, filed on April 29, 2009, notably in class 25: “clothing”.
- Community Trademark Registration PSG PARIS-SAINT-GERMAIN application No. 314336, filed on July 24, 1996, notably in class 25: “clothing”.
Additionally, the Complainant holds several domain names including the term “psg”, among which: <monmaillotpsg.fr> and <maillotpsg.fr>.
The Complainant’s trademark registrations long predate the registration of the disputed domain names.
The disputed domain names <maillotfootpsg.com>, <maillotfootpsgpascher.com> and <maillotpsgpascher.com> were registered on March 8, 2014, June 29, 2014 and June 23, 2014, respectively.
The disputed domain names are not reachable. It however appears that they were all used to redirect to online stores selling football jerseys (at least until January 26, 2015).
5. Parties’ Contentions
The Complainant claims that the disputed domain names are confusingly similar to the Complainant’s PSG registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain names; and that the Respondent registered and is using the disputed domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Consolidation of Respondents
Previous UDRP panels have articulated principles governing the question of whether a UDRP complaint may be brought against multiple respondents. These criteria encompass situations in which (i) the domain names or the websites to which the disputed domain names resolve are subject to common control; and (ii) the consolidation would be fair and equitable to all parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16. Common control has been found based on commonalities in registrant information, such as shared administrative or technical contacts and share postal or email addresses, as well as other circumstances in the record indicating that the respondents are related or that a sufficient unity of interests otherwise exists that they may be essentially treated as a single domain name holder for purposes of paragraph 3(c) of the Rules. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281.
The Panel notes that the Respondents “Bi Gao”, “Gao Bi” and “Rui De” share the same email address as well as the same postal address. In addition, the three disputed domain names are registered through the same Registrar and use the same DNS servers. Finally, the websites associated with the disputed domain names were all used in connection with the sale of alleged counterfeit football jerseys and displaying the same general layout.
In these circumstances, the Panel finds that the Complainant has established that the disputed domain names are subject to common control and that such common control is sufficient to justify consolidation of the Complainant’s claims against the Respondents (hereinafter “the Respondent”).
In addition, the Panel notes that the Respondent did not comment nor deny the assertions, made by the Complainant, that all the disputed domain names are subject to common control and that “Bi Gao”, “Gao Bi” and “Rui De” are aliases for the same entity.
The Panel therefore finds that consolidation would be equitable to all the parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.
B. Identical or Confusingly Similar
The disputed domain names all include the “psg” term combined together with generic and descriptive terms, namely: “maillot”, the French word for jersey; “foot” short for football; and “pas cher”, literally “not expensive” in French.
As correctly noted by the Complainant, all these elements are descriptive of the goods sold on the websites and have no distinctive character, they will merely be considered by the public as indicators of what can be found on the websites.
This Panel agrees with the Complainant’s opinion and previous panels’ findings that the mere addition of non-distinctive text to a complainant’s trademark does not prevent confusing similarity, as set out in paragraph 4(a)(i) of the Policy.
In this sense Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPOCase No. D2009-0434 disputed domain name <unlimitedwiidownloads.com>: “The addition of the non-distinctive terms “unlimited” and “downloads” does nothing to reduce the confusing similarity of the disputed domain name with the Complainants well-known trademark. The disputed domain name is likely to make assume Internet users that the website that is linked to the domain name offers downloads supplied by the Complainant. Therefore, the Panel considers the disputed domain name to be confusingly similar with the Complainants trademark WII”.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. The Respondent has no connection or affiliation with the Complainant and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain names incorporating the Complainant’s trademark. Searches performed by the Complainant on the database “Saegis” have shown no published and/or registered trademark including “maillot” and “psg” in the name of “Gao Bi” and/or “Bi Gao” and/or “Rui De”. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain names, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.D below. In addition, the Respondent does not appear to be commonly known by the names “psg”, “maillotfootpsg”, “maillotfootpsgpascher” and “maillotpsgpascher.com” or by similar names. Moreover, the Respondent has not replied to the Complainant’s contentions, alleging any rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Considering that the Complainant’s trademarks have been registered and used for many years and thus long predate the disputed domain names’ registrations, and in the absence of contrary evidence, the Panel finds that the Respondent must have had actual knowledge of the Complainant’s trademarks at the time of the registration of the disputed domain names and deliberately intended to create an association with the Complainant and its business.
In fact, this Panel finds appropriate and agrees with the Complainant’s assertion that: “the combination of the Complainant’s trademark PSG with words directly referring to Complainant’s activity in the 3 disputed domain names cannot be a coincidence”.
This Panel further notes that the above assertion is reinforced by the fact that the Respondent appears to be a Chinese entity located in China. Thus the choice to combine - in all the three disputed domain names -Complainant’s trademark PSG with French generic and descriptive terms referring to Complainant’s trademark and activity, and to operate the related websites in French, results quite inconceivable for any individual not knowing the Complainant’s trademark.
The Panel further finds that the above described use of the disputed domain names, i.e. to sell counterfeit football jerseys, falls within the example of bad faith set out in paragraph 4(b)(iv) of the Policy: “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 further notes that in addition to the sale of PSG football jerseys at a reduced price, the website at the disputed domain name also contained link to jerseys of other football clubs such as Barcelona, Chelsea and Real Madrid.
Indeed, it is the Panel’s opinion that the above represents evidence of registration and use of the disputed domain names in bad faith. The fact that the websites at the disputed domain names are currently inactive (not reachable) does not affect the Panel’s finding above.
The Panel finally notes that the Complainant has also made out a prima facie case that the Respondent tried to hide its true identity by providing the Registrar presumably false or at least incomplete and incorrect contact details.
Accordingly, the Panel finds on the basis of the evidence presented, that the Respondent registered and is using the disputed domains name in bad faith.
Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 names <maillotfootpsg.com>, <maillotfootpsgpascher.com> and <maillotpsgpascher.com> be transferred to the Complainant.
Date: March 15, 2015