WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dassault (Groupe Industriel Marcel Dassault) v. Ma Xiaojuan
Case No. D2015-1733
1. The Parties
The Complainant is Dassault (Groupe Industriel Marcel Dassault) of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Ma Xiaojuan of Xichang, Sichuan, China, self-represented.
2. The Domain Names and Registrar
The disputed domain names <dassault.cc> and <dassault.wang> are registered with Xin Net Technology Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2015. On September 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 8, 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.
On October 8, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On October 9, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 21, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2015. The Response was filed with the Center and copied to the Complainant’s legal representative on November 8, 2015.
The Center appointed Matthew Kennedy as the sole panelist in this matter on November 18, 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 is a French corporate group in the aeronautic industry. It manufactures sells and services combat aircraft and passenger jets and has a commercial presence in over 83 countries. In 2013, it announced the creation of a new subsidiary in China. It has expanded into other industries including publishing, property management and development, and viticulture.
The Complainant is the owner of multiple registered trademarks consisting of or including the word DASSAULT. These include registrations of the word DASSAULT (French trademark No. 3373264 registered from 2005, and Community Trademark Registration No. 4837886 registered from 2007, each specifying goods and services in ten different classes), the mark DASSAULT AVIATION (International Registration No. 788925, registered from 2002, designating more than 20 countries, including China from 2011, specifying goods and services in classes 12, 37 and 39) and the mark CHATEAU DASSAULT (International Registration No. 1201515, registered from 2014, designating eight countries, including China from 2015, specifying wine). The Complainant also operates the domain names <dassault.com> and <dassault.fr>.
According to the Registrar’s WhoIs database, the disputed domain names were registered on June 3, 2015. The Respondent is an individual in Sichuan Province, China. The contact address provided in his registration agreement is a city street section with no building number and the name of an intermediate People’s Court. The courier was unable to deliver the Written Notice because the address was incomplete.
5. Parties’ Contentions
The Complainant submits that the disputed domain names are identical or at least confusingly similar to the Complainant’s trademark DASSAULT. They are also virtually identical to the Complainant’s domain name <dassault.com>.
The Complainant submits that the Respondent is not affiliated with the Complainant in any way and has never been authorized by the Complainant to use or register its trademarks or to register the disputed domain names. The Complainant’s trademark registrations preceded registration of the disputed domain names by years. Given that the trademarks and the domain names are so identical, the Respondent cannot pretend that it intended to develop a legitimate activity through the disputed domain names. The Respondent offered to transfer the disputed domain names to the Complainant for commercial gain prior to the commencement of this proceeding.
The Complainant submits that the Respondent registered the disputed domain names in bad faith. It is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain names. The Complainant’s trademark registrations cover the Respondent’s home country, China. The Complainant has a worldwide reputation. The first internet search results for the term DASSAULT refer to the Complainant and its products. Under paragraph 2 of the Policy, the Respondent had to warrant when registering the domain name that it would not infringe on the trademark rights of any third party so that he was under a duty to verify this matter. Further, the Respondent failed to provide correct address contact details in breach of the registration agreement.
The Complainant also submits that the Respondent is using the disputed domain names in bad faith. The Respondent has no licence or permission to use such a well-known trademark. The disputed domain names are confusingly similar. When he received a cease-and-desist letter, the Respondent immediately offered to sell the disputed domain names for EUR 900, which exceeds his out-of-pocket expenses, without giving any reason why he had registered the disputed domain name and without contesting the Complainant’s trademark rights. The disputed domain names are inactive but this does not preclude a finding of bad faith.
The Respondent submits that a domain name holder possesses the following exclusive rights: a) the right to use the domain name himself; b) the right to prohibit third parties from using his domain name; nor may third parties obstruct the domain name holder’s legitimate use of the domain name; c) the right to authorize third parties to use his domain name; and d) the right to transfer the domain name for profit.
The disputed domain names have been legally registered. Given that the domain names and the Complainant’s trademarks are identical by chance, that the Respondent has not conducted business operations of the same type as the Complainant, nor publicized or promoted the domain name within the same area, nor conducted any kind of commercial activity for gain, the Respondent is willing, for compensation, to transfer the disputed domain names to the Complainant and present written proof. The Respondent’s transfer expenses are EUR 750 or RMB 5115. The Respondent also provided the details for a bank account in her name.
6. Discussion and Findings
6.1. Language of proceeding
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 Registrar confirmed that the Registration Agreements for the disputed domain names are in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the Complainant has no knowledge of Chinese and the cost of translation would impose a significant burden. Further, the disputed domain names are made up of Latin characters which strongly suggest that the Respondent understands languages besides Chinese.
The Panel observes that in this proceeding the Complaint was filed in English and the Response was filed in both Chinese and English.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. (See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).
Given that the Respondent has availed himself of the opportunity to file a Response to the Complaint already and that the Response includes an English version, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and unnecessary delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.
6.2. Analysis and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the registered trademarks DASSAULT, DASSAULT AVIATION and CHATEAU DASSAULT.
The disputed domain names incorporate the Complainant’s trademark DASSAULT in its entirety. The Complainant’s trademark DASSAULT comprises the whole of each disputed domain name besides the addition of a Top-Level Domain (“TLD”) suffix “.cc” or “wang”. A TLD suffix generally has no capacity to distinguish a domain name from a trademark (See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei， WIPO Case No. D2014-0080).
Therefore, the Panel finds that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate non-commercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant submits that it has never authorized the Respondent to use or register its trademarks or to register the disputed domain names. The Respondent does not contest this fact.
The Complainant asserts that the Respondent makes only passive use of the disputed domain names. The Respondent actually agrees that he has not made active use of the disputed domain names in a range of ways and he provides no evidence, nor even asserts, that he made any other actual or proposed use of the disputed domain names. Therefore, there is no evidence on the record of use of the disputed domain names falling within either the first or third circumstances of paragraph 4(c) of the Policy.
With respect to the second circumstance, the Respondent’s name is Ma Xiaojuan, not Dassault. There is no evidence that the Respondent has been commonly known by any other name. The Respondent asserts that he has legal rights flowing from the domain name registrations themselves, but neither party submits that the Respondent has trademark or service mark rights in the disputed domain names that would satisfy the second circumstance of paragraph 4(c) of the Policy.
Therefore, the Panel finds, also based on the Panel’s findings below, that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The first circumstance is as follows:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name.”
The Respondent registered domain names identical to the word DASSAULT in the Complainant’s DASSAULT and DASSAULT AVIATION trademarks. This is not a generic word but the name of the Complainant’s founder, assumed in homage to his brother’s Resistance pseudonym during the Second World War (see Annex 7 to the Complaint). The domain name registrations postdate the Complainant’s trademark registrations – including the registration of DASSAULT AVIATION in China – by several years at least. The Complainant has operations in China, where the Respondent is located. The Complainant submits that the Respondent intentionally registered its mark as domain names. The Respondent alleges that the identity between them is accidental but he offers no explanation at all as to the reasons that led him to choose these particular domain names, either in his communication before this proceeding nor in her Response. The Panel does not find it credible that the choice to register that exact, invented name as two domain names was accidental.
The Respondent makes only passive use of the disputed domain names. The Respondent vigorously asserts his right to use the disputed domain names but does not specify any active use that he has made of them or preparation to do so whatsoever.
The evidence on the record shows that the Respondent has twice offered to transfer the disputed domain names to the Complainant for valuable consideration. The Complainant’s legal representative sent a cease-and-desist letter dated June 10, 2015 requesting the transfer of the disputed domain names free of charge and a written undertaking not to use the trademark. In response, the Respondent sent an email dated June 18, 2015 (Annex 8 to the Complaint), asserting his rights to the disputed domain names and offering to discuss their transfer to the Complainant with compensation or low compensation, if the Complainant believed that these domain names might help or enhance its international image in its future development. In the Response dated November 8, 2015, which was copied to the Complainant’s legal representative, the Respondent again stated that he was willing, for compensation, to transfer the disputed domain names to the Complainant and provide a written document. She stated a price of EUR 750 or RMB 5115. The Respondent did not allude to, let alone document, any out-of-pocket costs.
The Panel considers that all these circumstances indicate that the Respondent has registered the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of his documented out-of-pocket costs directly related to the disputed domain names, as envisaged in paragraph 4(b)(i) of the Policy. Further, the contact address in the registration agreement appears to be incorrect and intended to prevent the Respondent from being located. This is further indication of bad faith.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 <dassault.cc> and <dassault.wang> be transferred to the Complainant.
Date: November 22, 2015