WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Orlane S.A. v. Yu Zhou He / He Yu Zhou
Case No. D2016-1763
1. The Parties
The Complainant is Orlane S.A. of Paris, France, represented by ipSO société selàrl, France.
The Respondent is Yu Zhou He / He Yu Zhou of Ning Bo, Zhe Jiang, China.
2. The Domain Name and Registrar
The disputed domain name <orlane.vip> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on August 29, 2016. On August 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 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. On September 1, 2016, the Center transmitted by email in both English and Chinese to the Parties a request for comment on the language of the proceeding. The Complainant submitted a request for English to be the language of the proceeding on September 2, 2016. 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 in both English and Chinese, and the proceedings commenced on September 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 4, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on October 11, 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 the registered owner of the trade mark ORLANE. The trade mark has been registered in many territories including in China where the Respondent is located. The registrations of the Complainant's Chinese trade marks date from as early as October 15, 1982. The Complainant also has a number of International registrations for the mark ORLANE, the earliest of which dates from November 6, 1954.
The Complainant commenced the manufacture and marketing of cosmetics, perfumes and skin care products in France in October 1945, originally under the name "Orlane Jean D'Albret". The Complainant states that since then, the trade mark ORLANE has become recognized in France and elsewhere as the anti-aging specialist brand of cosmetics. The Complainant asserts it has a strong reputation in its innovation in skincare cosmetics and skincare treatments, and has emerged as a pioneer in modern cosmetology.
Goods under the ORLANE trade mark and other marks containing "Orlane" have been sold worldwide. The Complainant's goods are sold in over 10,000 stores in over 75 countries, including in China, and are also sold online from the Complainant's website at "www.orlane.com". Many beauty salons all over the world represent the ORLANE brand of cosmetics. The first Orlane institute was established in Paris in 1947. Since then, many other institutes, including in China, have been opened.
ORLANE-branded goods have been extensively promoted in high profile fashion magazines such as ELLE and COSMOPOLITAN.
The Complainant asserts that the ORLANE mark has become well known globally, in association with skincare products. The mark's well-known status in China was recognized in a decision of the Trade Mark Office of China on an opposition against a trade mark application for D'ORLAN.
The Complainant has many domain name registrations consisting of "Orlane", e.g., <orlane.com>, <orlane.fr>, <orlane.com.cn>, etc.
The disputed domain name was registered on May 17, 2016. The disputed domain name does not resolve to any accessible website.
5. Parties' Contentions
1. The disputed domain name is identical or confusingly similar to the Complainant's trade mark in which it has rights. The disputed domain name reproduces the exact mark, ORLANE. The addition of the generic Top-Level Domain ("gTLD") ".vip" does not remove the likelihood of confusion in the mind of the public.
2. The Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent is not known under this name and there is not demonstrable use of the disputed domain name.
3. The disputed domain name was registered and is being used in bad faith. The trade mark ORLANE is well known, even in China. The Respondent could not have been unaware of the Complainant's ORLANE trade mark when it registered the disputed domain name. The fact that there is no obvious use of the disputed domain name is evidence of the Respondent's bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Preliminary issue: Language of the Proceeding
The Registration Agreement in this case is in Chinese but the Complainant filed the Complaint in English and requested that English be the language of the proceeding, for the reasons that he Complainant does not have knowledge of Chinese whereas the Respondent can be presumed to have knowledge of English since the disputed domain name is registered in Latin script and not Chinese script. English would be a fair language of compromise to both Parties. To require the Complainant to translate the Complaint and all supporting documents into Chinese would cause an unnecessary burden to the Complainant and unnecessarily delay the proceeding.
The Respondent did not respond on this issue.
Paragraph 11(a) of the Rules stipulates that:
"[u]nless 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".
Paragraph 10(c) of the Rules provides that "[T]he Panel shall ensure that the administrative proceeding takes place with due expedition."
In view of the composition of the disputed domain name which comprises non-Chinese words and scripts, and the fact that the Respondent was notified in both English and Chinese by the Center of the nature and deadlines pertaining to the proceeding as well as the issue of the language of the proceeding, the Panel does not consider it prejudicial to the Respondent if English were adopted as the language of the proceeding. The proceeding would be unduly delayed if the Complaint and annexes thereto had to be translated into Chinese. In keeping with the Policy aim of facilitating a relatively time and cost-efficient procedure for the resolution of domain name disputes, the Panel accordingly determines that it would be appropriate for English to be the language of the proceeding.
A. Identical or Confusingly Similar
The Complainant has shown that it has rights in the trade mark ORLANE. The Panel agrees that the disputed domain name is identical to the Complainant's trade mark as the trade mark is incorporated in its entirety within the disputed domain name. The only difference lies in the addition of the gTLD ".vip" which is generally disregarded when assessing identity with the Complainant's trade mark ORLANE since gTLDs constitute a technical requirement in the domain name registration.
The Panel concludes that paragraph 4(a)(i) of the Policy has been satisfied by the Complainant.
B. Rights or Legitimate Interests
The Panel is of the view that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant did not authorize the Respondent to use its ORLANE trade mark or to register the disputed domain name; there is no evidence of the Respondent being commonly known by the disputed domain name; and there is no evidence of a bona fide offering of goods or services under the disputed domain name.
Having established a prima facie case, the burden shifts to the Respondent to establish, with evidence, that it has rights or legitimate interests in the disputed domain name. (See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.)
The Complainant's assertions and evidence in support have not been rebutted by the Respondent.
The Panel accordingly finds that the Complainant has established paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is of the view that the Complainant's ORLANE mark is well known in its industry. Taking into account the long and extensive use and reputation of the ORLANE mark across many countries including in China, and the fact that the Respondent did not file any response, the mere fact that the disputed domain name has not been put to any active use does not prevent a finding of bad faith registration and use. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.)
The disputed domain name was registered many years after the ORLANE mark was first used and registered. A significant level of reputation and goodwill has been established in the ORLANE mark by the Complainant (and its predecessors). The Panel has found that the Respondent lacks rights or legitimate interests in the disputed domain name, and has no difficulty concluding in the circumstances of this case that more likely than not, the Respondent chose to register the disputed domain name incorporating the Complainant's famous ORLANE trade mark with a view to seeking benefit from the notoriety of the Complainant's mark or otherwise to misrepresent itself to be associated with the Complainant, offering VIP service for the Complainant's ORLANE brand.
The Panel therefore finds that the Complainant has established 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 name <orlane.vip> be transferred to the Complainant.
Date: October 25, 2016