WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yves Saint Laurent, SAS v. Ma Ping, Fujian Secret Biological Science and Technology Co., Ltd.
Case No. D2016-1997
1. The Parties
The Complainant is Yves Saint Laurent, SAS of Paris, France, represented by IP Twins S.A.S., France.
The Respondent is Ma Ping, Fujian Secret Biological Science and Technology Co., Ltd. of Fuzhou, Fujian, China.
2. The Domain Names and Registrar
The disputed domain names <yvessaint-laurent.club> and <yvessaintlaurent.club> are 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 October 3, 2016. On October 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 8, 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 October 10, 2016, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on the same day. 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 English and Chinese, and the proceedings commenced on October 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 8, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on November 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 states that it is one of the world's most prominent fashion houses. Established in 1961, it was the first haute-couture fashion house to launch, in 1966, the modern concept of luxury women's ready-to-wear collection. Over the years, Yves Saint Laurent gained reputation as one of the 20th century's foremost designers.
Fashion for men and women, leather goods, shoes and jewelry, all bearing the Complainant's YVES SAINT LAURENT trade mark, are distributed throughout the world, generating a revenue in 2013 of USD 1.21 billion.
The YVES SAINT LAURENT trade mark has been registered across many countries and classes of goods, including in China. According to the evidence provided by the Complainant, the first registration of YVES SAINT LAURENT trade mark is International Registration Number 314625 registered on June 7, 1966. The Complainant contends that its YVES SAINT LAURENT trade mark is well known worldwide, and referred to several earlier UDRP panel decisions in support (e.g.,Yves Saint Laurent, S.A.S. v. RoxannaDevlin and AlexandraSchutti, WIPO Case No. D2015-1681; Yves Saint Laurent, S.A.S. v. WhoisGuard / University of Paris, Jacky Lee, WIPO Case No. D2013-0571; Yves Saint Laurent v. Javier Garcia, WIPO Case No. D2001-0911).
The Complainant has numerous domain name registrations incorporating the YVES SAINT LAURENT trade mark, e.g., <yvessaintlaurent.com> registered on December 7, 1999, <yvessaintlaurent.paris> registered on December 2, 2014, and <yvessaintlaurenthandbags.net> registered on February 15, 2012.
The disputed domain names were registered on January 24, 2016, and resolve to inactive websites.
5. Parties' Contentions
1. The disputed domain names are identical or confusingly similar to the Complainant's YVES SAINT LAURENT trade mark. They incorporate the said trade mark. One of the disputed domain names differs from the Complainant's trade mark only by the presence of a hyphen. This does not eliminate the identity or confusing similarity to the Complainant's YVES SAINT LAURENT trade mark.
The addition of the generic Top-Level Domain ("gTLD") ".club" to the disputed domain names does not avoid the confusing similarity. In fact, the use of the trade mark YVES SAINT LAURENT with the ".club" gTLD would lead Internet users to believe that the Complainant means to create a club or an environment arounds its brand.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not commonly known by the disputed domain names; the Complainant is in no way related to the Respondent; the Respondent has acquired no trade mark or service mark rights related to the "Yves Saint Laurent" terms; the Respondent has not used the disputed domain names nor is there evidence of preparations to use the disputed domain names in connection with a bona fide offering of goods or services; and the Respondent has never been granted authorization, a licence or any right whatsoever to use the Complainant's YVES SAINT LAURENT trade mark in the disputed domain names or in any other way.
3. The Respondent has registered and used the disputed domain names in bad faith. The Complainant's YVES SAINT LAURENT trade mark is so widely known that it is inconceivable that the Respondent was not aware of the Complainant's earlier rights in the trade mark. The designer Yves Saint-Lauren was very fascinated by China, it having long been a source of inspiration. In 1985, he organised a famous exhibition which took place at the Palace of Fine Arts in Beijing, as a sign of friendship and gratitude to China. The Chinese upper-class people are known to be very interested in the Yves Saint Laurent brand of clothing. Numerous press articles have popularised the brand all over China. It is clear therefore that the Respondent had the Complainant's name and trade mark in mind when registering the disputed domain names. A simple search on an online search engine yields only results related to the Complainant.
Furthermore, the Respondent has engaged in a pattern of behaviour, preventing not only the Complainant from reflecting its trade marks in the corresponding domain names, but also the trade marks of third parties. A reverse WhoIs search shows that the Respondent has registered domain names reproducing some of the most famous trade marks in the world, e.g., <absolutvodka.cc>, <astonmartin.asia>, <elizabetharden.club>, <gianniversace.cc>, <johnniewalker.cc>, <loreal.cc>, <tiffanyco.club>, etc.
It cannot be seen how the Respondent would be able to use the disputed domain names in connection with a bona fide offering of goods and services. Although there is no active use of the disputed domain names, that does not prevent a finding of bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the Registration Agreement for the disputed domain names is Chinese. The Complaint was, however, filed in English and the Complainant requested that English be the language of the proceeding. The Complainant submitted, firstly, that it was evident that the Respondent is able to understand English. The reverse WhoIs search showed more than 80 domain names were associated with the Respondent's email address. Of these, several domain names are composed of or contain common English generic words, e.g., <asianinfrastructureinvestmentbank.cc> and <profonudmystery.cc>. Secondly, the Complainant is not able to communicate in Chinese. Being a French entity, the Complainant would have to incur additonal expense and delay if Chinese translations of the Complaint and documents had to be made. It would be fair to conduct the proceeding in English since English is not the native language of the Complainant or its representative.
The Rules, paragraph 11, states that in the absence of an agreement between the Parties, or specified otherwise in the Registration Agreement, 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 proceeding".
Paragraphs 10(c) of the Rules states that "[t]he Panel shall ensure that the administrative proceeding takes place with due expedition".
The Panel determines in the circumstances of this case that it would be appropriate for English to be the language of the proceeding. The Complainant has shown that the Respondent possesses a number of domain name registrations which consist of Latin characters and/or generic English terms rather than Chinese words. This supports a prima facie finding that the Respondent has a level of familiarity with the English language. The Respondent was given the opportunity to dispute this point and to respond on the issue of the language of the proceeding but did not do so. Communications from the Center to the Parties were sent in English and Chinese which means that the Respondent could have responded in Chinese. In the circumstances, the Panel believes that the Respondent is not prejudiced by a decision that English be adopted as the language of the proceeding. Requiring the Complainant to translate the Complaint and supporting documents into Chinese in this instance would run counter to the Policy aim of ensuring that the administrative proceeding take place with due expedition.
Accordingly, the Panel determines English to be the language of this proceeding and renders the decision in English.
6.2 Substantive issues
Paragraph 4(a) of the Policy mandates that the Complainant has to establish each of the following three elements in order to succeed in the administrative proceeding:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in 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 Complainant has in this case provided evidence of its rights in the YVES SAINT LAURENT trade mark. The next question to be addressed is whether the disputed domain names <yvessaint-laurent.club> and <yvessaintlaurent.club> are identical or confusingly similar to the Complainant's said trade mark.
The Panel determines, in accordance with well-established principles set by many earlier UDRP panel decisions, that the disputed domain names are effectively identical to the Complainant's YVES SAINT LAURENT trade mark. The reason is, the trade mark YVES SAINT LAURENT has been incorporated in its entirety within the disputed domain names and is clearly identifiable therein. It is a well-established principle that the addition of hyphens and gTLDs in a domain name may be disregarded when considering the issue of identity or confusing similarity with a complainant's trade mark under paragraph 4(a)(i) of the Policy. The gTLD is a technical requirement of domain name registrations and the hyphen does not serve to remove the similarity between the domain name <yvessaint-laurent.club> and the Complainant's trade mark.
The Panel therefore finds that the Complainant has satisified paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, which has not been disputed or rebutted by the Respondent. There is no evidence that the Respondent is commonly known by the disputed domain names or has acquired trade mark or service mark rights in the "Yves Saint Laurent" name. In the absence of any evidence which shows the Respondent's use of the disputed domain names or evidence of preparations to use the disputed domain names in connection with a bona fide offering of goods or services, the Panel is unable to find for the Respondent in connection with the second limb of paragraph 4(a) of the Policy.
The Panel therefore finds that the Complainant has satisified paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel agrees that the Complainant's YVES SAINT LAURENT trade mark is well known and it is not plausible that the choice of the disputed domain names was made by pure coincidence. The Respondent must have been aware of the Complainant and its trade mark when it registered the disputed domain names. The Panel is also persuaded that the combination of the trade mark YVES SAINT LAURENT with the ".club" gTLD would lead Internet users to believe that the disputed domain names are somehow associated with a "club" in connection with the Complainant's brand. The fact that the disputed domain names have 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 Panel draws adverse inferences from the fact that the trade mark concerned is famous, the Respondent's apparent pattern of behaviour in registering domain names incorporating the names of famous brands, and the Respondent's default in filing a response. Further, the absence of any rights or legitimate interests in the disputed domain names has been considered and all this leads to a finding that the Complainant has satisifed the burden under 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 <yvessaint-laurent.club> and <yvessaintlaurent.club> be transferred to the Complainant.
Date: November 13, 2016