WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yves Saint Laurent v. Khita Kongsansatien
Case No. D2016-0496
1. The Parties
The Complainant is Yves Saint Laurent of Paris, France, represented by Cabinet Santarelli, France.
The Respondent is Khita Kongsansatien of Bangkok, Thailand.
2. The Domain Names and Registrar
The disputed domain names <saintlaurent.club> and <ysl.club> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 11, 2016. On March 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 15, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on March 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 6, 2016.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on April 12, 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 a French luxury fashion house founded in 1961. The Complainant is the owner of inter alia French registered trademark no. 95567725 for the word mark YSL in international classes 18 and 25, registered on April 14, 1995 and European Union trademark no. 011445905 for the word mark SAINT LAURENT in international classes 9, 14, 16, 18, 24, 25, 34, 35, 37, 41, and 43, registered on April 29, 2013. These trademarks are well known due to the Complainant's advertising and marketing campaigns together with the luxury and high quality of the Complainant's products, including for example perfumes, clothing and handbags.
Little is known about the Respondent who appears to be an individual with an address in Bangkok, Thailand. The disputed domain name <ysl.club> was created on May 14, 2014. The disputed domain name <saintlaurent.club> was created on May 16, 2014.
The Complainant submitted a complaint in respect of the disputed domain names under the Uniform Rapid Suspension System ("URS") on June 20, 2014, to which the Respondent did not submit an answer. On July 22, 2014, the examiner appointed under the URS determined that the Complainant had demonstrated all three elements of the URS by a standard of clear and convincing evidence and ordered that each of the disputed domain names be suspended for the duration of their respective period of registration.
The disputed domain names presently resolve to suspended websites further to the determination under the URS. Previously, they were used to direct Internet users towards parking websites showing various sponsored links including links referring to perfumes competitive with those supplied by the Complainant.
5. Parties' Contentions
The Complainant contends that the disputed domain names are confusingly similar to trademarks in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain names; and that the disputed domain names have been registered and are being used in bad faith.
The Complainant notes that the disputed domain names reproduce the Complainant's marks in their entirety with the addition of the generic Top-Level Domain ("gTLD") ".club" and submits that, disregarding such gTLD, the disputed domain names and the Complainant's trademarks are identical.
The Complainant asserts that the Respondent has not been licensed, contracted or otherwise permitted by the Complainant to use the Complainant's marks in any manner including within domain names, that the Respondent is not engaged in any bona fide activity that could give rise to rights or legitimate interests in the disputed domain names and that the absence of rights and legitimate interests has also been considered within the determination regarding the disputed domain names under the URS. The Complainant adds that the Respondent is attempting to exploit the reputation of the Complainant's YSL and SAINT LAURENT trademarks for commercial gain, noting that such activity cannot confer such rights and legitimate interests upon the Respondent.
The Complainant asserts that the use of sponsored listings on the websites associated with the disputed domain names demonstrates registration and use in bad faith. The Complainant contends that the registration of a domain name containing or including a well-known trademark constitutes proof of bad faith on the part of a respondent and notes that its marks are not those which would be randomly adopted by a trader for a purpose other than to create an impression of an association with the Complainant. The Complainant adds that the determination of its complaint under the URS regarding the disputed domain names included a finding that such domain names had been registered and used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed in respect of each of the disputed domain names, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in its registered trademarks in respect of YSL and SAINT LAURENT as outlined in the factual background section. The Complainant gave details of a considerable number of other registered trademarks of which it is the owner but the Panel need look no further than the two cited above. The Panel notes that each of these trademarks is alphanumerically identical to the second level of the corresponding disputed domain name, bearing in mind that it is not possible to include white space in a domain name for technical reasons. There is no particular significance in the nature of the gTLD ".club" for the purposes of the comparison.
In these circumstances, the Panel finds that the Complainant has established the first element under the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in each disputed domain name:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial 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".
Given that much information pertaining to a respondent's rights and legitimate interests in a domain name is typically in the respondent's exclusive knowledge, it is generally accepted in cases under the Policy that in order to prevail on this element a complainant is required to establish a prima facie case, which is not rebutted by the respondent, that the respondent lacks such rights or legitimate interests. Once such prima facie case has been made, the burden of production shifts to the respondent to bring forward appropriate allegations or evidence demonstrating its rights or legitimate interests in the domain name concerned.
In the present case, the Panel is satisfied that the Complainant has established such a prima facie case in respect of both of the disputed domain names based on its submissions that the Respondent has no permission to use the Complainant's trademarks within the disputed domain names, that the Respondent is not engaged in any bona fide activity that could give rise to rights and legitimate interests and that the apparent use of the disputed domain names by the Respondent, namely the exploitation of the Complainant's reputation for the Respondent's commercial gain, suggests a lack of rights and legitimate interests.
In these circumstances, as noted above, the burden of production shifts to the Respondent to provide a demonstration of its rights or legitimate interests with regard to the disputed domain names. The Respondent has neither provided any formal Response in this case despite having been given an opportunity to do so nor otherwise taken any part in the administrative proceeding. Furthermore, there is nothing before the Panel on the present record which suggests that the Respondent might have been able to demonstrate rights or legitimate interests in either of the disputed domain names had it answered the Complaint.
Accordingly, the Panel finds that the Complainant has established the second element under the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trade mark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
In the present case, the Panel has been provided with evidence demonstrating that prior to the URS determination, and consequent suspension of the disputed domain names, both of the disputed domain names had been used in connection with the publication of sponsored listings which included links targeting the Complainant's products and in at least one case featuring the products of a competitor of the Complainant. In the Panel's opinion, this is a demonstration of circumstances corresponding to the terms of paragraph 4(b)(iv) of the Policy.
The Respondent has not availed itself of the opportunity to answer the Complainant's submissions or to address the evidence which is on the record in this case. The Panel can identify no possible good faith motivation on the Respondent's part with regard to the registration of the disputed domain names or the manner in which they were used prior to the URS determination. The Panel notes for completeness that it does not consider that the web pages associated with each of the disputed domain names in their suspended incarnation, each stating that the disputed domain name has been taken down pursuant to the URS, constitute any "use" by the Respondent which should have any effect upon the analysis of whether such domain name is being used in bad faith in terms of the UDRP. In the Panel's opinion, it is the Respondent's use prior to any such suspension that is the focus of this question, namely during the period when the Respondent was in a position to exercise control over the disputed domain names.
In these circumstances, the Panel finds that the disputed domain names have been registered and used in bad faith pursuant to paragraph 4(b)(iv) of the Policy and accordingly that the Complainant has established the third element under 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 <saintlaurent.club> and <ysl.club> be transferred to the Complainant.
Andrew D. S. Lothian
Date: April 18, 2016