WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Redoute SAS v. Lu Cong Ping
Case No. D2016-0481
1. The Parties
The Complainant is La Redoute SAS of Roubaix, France, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Lu Cong Ping of Jingmen, Hebei, China.
2. The Domain Names and Registrars
The disputed domain name <laredoute.cc> is registered with Web Commerce Communications Limited dba WebNic.cc.
The disputed domain names <laredoute.top> and <laredoute.wang> are registered with Chengdu West Dimension Digital Technology Co., Ltd.
The disputed domain names will hereafter be referred to as the "Domain Names" and both registrars as the "Registrars".
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 9, 2016. On March 10, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On March 11, 2016, the both Registrars transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on March 11, 2016.
On March 11, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 14, 2016, the Complainant submitted again an amended Complaint which includes 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 but he filed on March 14, 2016 a brief response in Chinese in connection with one of the Domain Names.
The Center verified that the Complaint together with the two amended Complaints 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 in both Chinese and English the Respondent of the Complaint, and the proceedings commenced on March 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 7, 2016. The Respondent did not submit any response save for its email communications to the Center on March 14, 2016. Accordingly, the Center notified the Respondent's default on April 8, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on April 14, 2016. 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 one of the leading retail mail order companies in France offering men's, women's and children's clothing, accessories, bags, shoes, bedroom and bathroom linens, window coverings and furniture. It was founded in 1837 and produced its first mail order catalog in 1928. It currently offers delivery of its products to customers in more than 150 countries and has a physical presence in 26 countries worldwide through subsidiaries and partnerships.
The Complainant trades under the trade mark LA REDOUTE (the "Trade Mark"). The Trade Mark is registered in many countries including the European Union, China, Singapore, France and the United States of America. The earliest trade mark registration submitted in evidence dates back to 1997.
The Complainant owns and operates various websites including "www.laredoute.fr" in France and "www.laredoute.cn" in China. The website "www.laredoute.fr" is the top-ranked shopping site for clothing and home decor in France, with an average of 7 million unique visitors per month.
The Respondent registered the Domain Names on September 6, 2015. On the same day the Respondent emailed the Complainant informing it that it owned <laredoute.cc> and <laredoute.wang> and proposed to help the Complainant build websites in connection with the Domain Names. On September 22, 2015, the Complainant's representatives sent a cease and desist letter to the Respondent in connection with two of the Domain Names, <laredoute.cc> and <laredoute.wang> as well as another domain name, <laredoute.xyz>, requesting it to transfer these domain names. The correspondence between the parties, which was in English, failed to resolve the issues.
Initially the websites connected to the Domain Names (the "Websites") displayed the same content – they were websites with pay-per-click advertising. After the sending of the cease and desist letter and prior to the filing of the Complaint the Websites changed to blank pages with no content. It would appear that <laredoute.xyz> was not included in the Complaint because the registrant is not the Respondent.
5. Parties' Contentions
The Complainant contends that the Domain Names are confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Names and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names.
The Respondent said that he is the owner of <laredoute.cc> and did not understand why the Complaint has been filed against it as "laredoute" in Chinese is a combination of the words "拉热都特" (meaning "pull", "hot" "all" and "special"). He did not otherwise reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
B. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the registration agreements for the Domain Names is Chinese.
The Complainant submits in paragraph IV of the Complaint that the language of the proceeding should be English. The Complainant contends that the Respondent understands and is able to communicate in the English language as evidenced by the Respondent's correspondence with the Complainant as detailed in paragraph 4 above. The Respondent has never raised objections that the communications have been in English. Having to translate the Complaint to Chinese would be cumbersome and to the Complainant's disadvantage.
The Panel accepts the Complainant's submissions regarding the language of the proceeding and is satisfied that the Respondent understands the English language. The Respondent's brief response to the Complaint is in Chinese. The Panel accepts such response in Chinese. As such, the Respondent will not be disadvantaged by the proceeding being conducted in English. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding in this case.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights in the Trade Mark. The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Names comprise the trade mark LA REDOUTE in its entirety. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the country code Top-Level Domain or the generic Top-Level Domain suffixes (".cc", ".top" and ".wang").
The Panel finds that the Domain Names are identical or confusingly similar to the Trade Mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to 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, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non- commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of production always remaining on the complainant.
The Respondent is not sponsored or affiliated to the Complainant in any way nor has he been authorised by the Complainant to register and use the Domain Names. He has no independent right to the Domain Names. The Respondent is not commonly known by the Domain Name. From the evidence filed, it is clear that the Respondent registered the Domain Names for commercial gain. The Websites were initially pay- per-click sites with links to websites that compete with the Complainant's business. In addition, the Respondent approached the Complainant proposing that he would build websites for the Domain Names on the Complainant's behalf.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent's brief response was that he has selected the names because "laredoute" resembles the Chinese pinyin (la re dou te) which is phonetically translated into Chinese "拉热都特" meaning "pull", "hot", "all" and "special". This fabricated word does not make any sense in Chinese, let alone such explanation completely contradicts the Respondent's initial approach to the Complainant to produce websites for two of the Domain Names. It is clear that the Domain Names were selected and the approach made to the Complainant because the Respondent knew that the Domain Names comprise the Complainant's Trade Mark in its entirety.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
E. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant's Trade Mark especially since he contacted the Complainant about two of the Domain Names and another domain name that also features the Trade Mark in its entirety. This is clear evidence that the registration of the Domain Names was in bad faith.
In addition to the circumstances of registration, the Domain Names have also been used in bad faith. Initially, the Websites were pay-per-click sites with links to third party websites, some of which relate to businesses which compete with the Complainant. This shows a clear intention of capture of Internet traffic from Internet users who are looking for the Complainant's products. The Domain Names and the content of the Websites were calculated to confuse Internet users into believing that the Respondent is part of the Complainant, an authorized agent or somehow connected to the Complainant when this is not the case. The Respondent's approach to the Complainant was also in bad faith as it was for commercial gain in connection to Domain Names which he has no rights or legitimate interests. The fact that the Respondent appeared to have since ceased active use of the Domain Names upon notice of the Complainant's objection to its registration and use of the Domain Names does not matter.
The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent's registration and use of the Domain Names are in bad faith. Accordingly, the Complaint has satisfied the third element of the UDRP.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <laredoute.cc>, <laredoute.top> and <laredoute.wang> be transferred to the Complainant.
Date: May, 3, 2016