WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mansur Gavriel LLC v. Guan Mao Shuang, Man Su Li Er Bei Jing Mao Yi You Xian Gong Si
Case No. D2016-2102
1. The Parties
The Complainant is Mansur Gavriel LLC of New York, New York, United States of America ("United States" or "U.S." or "USA"), represented by Kelley Drye & Warren, LLP, United States.
The Respondent is Guan Mao Shuang, Man Su Li Er Bei Jing Mao Yi You Xian Gong Si of Beijing, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <mansurgavrielchina.com> (the "Domain Name") is registered with HiChina Zhicheng Technology Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 14, 2016. On October 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 18, 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. In response to an invitation to amend the Complaint by the Center, the Complainant filed an amended Complaint on October 21, 2016.
The Center verified that the Complaint together with the amended 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 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2016. The Response was filed with the Center on November 16, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on November 23, 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 fashion accessories company founded in 2012 by Rachel Mansur and Floriana Gavriel in New York. The Complainant sells handbags, wallets and shoes, in what is often referred to as the "affordable luxury" category of fashion accessories. Since 2013, the Complainant has used its MANSUR GAVRIEL mark in the United States and throughout the world in connection with the sale of handbags and online retail store services, including but not limited to its website "www.mansurgavriel.com" and through approximately 70 carefully curated retail outlets throughout the United States, Canada, Europe, Asia, the Middle East, Australia and New Zealand. The U.S. retail outlets include brick and mortar stores and the ecommerce platforms of Barneys New York and Bergdorf Goodman. The Complainant extensively promotes and advertises its MANSUR GAVRIEL products.
The Complainant registered the MANSUR GAVRIEL trade mark in the European Union in 2014. It has registrations in 13 countries including the USA. The Complainant's main website is connected to the domain name <mansurgavriel.com>. The website is used to promote and sell the Complainant's goods under the MANSUR GAVRIEL trade mark in the USA and worldwide.
The Complainant's most well-known and popular handbag is its distinctive bucket bag (the "MG Bucket Bag"). The MG Bucket Bag retails for about USD 600 on the Complainant's website. The Complainant releases new inventory several times a year, and the MG Bucket Bag along with the majority of the rest of the company's line often sell out at several retail outlets within hours of its release. It is becoming a well-known trade mark in the category of fashion accessories that it is part of.
The Domain Name was registered on July 21, 2016. It is connected to a website which appears to sell hand bags bearing the MANSUR GAVRIEL trade mark (the "Website"). The Website layout and colours look almost identical to the Complainant's website. The MG Bucket Bag retails for RMB 4700 on the Website which is equivalent to USD 675.
5. Parties' Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the MANSUR GAVRRIEL trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent contends that the MANSUR GAVRIEL trade mark in China is owned and registered by Dalian Happy Trade Science and Technology Limited Company ("Dalian") under trade mark registration no. 13413728 in class 18 for fur, suitcases, umbrellas, walking sticks and saddletrees. The Respondent has been granted a licence by the trade mark owner of the Chinese trade mark. It has been using the mark in China for more than five years beginning in 2011. The Complainant's right to the MANSUR GAVRIEL trade mark is restricted to the European Union as it has yet to obtain a trade mark registration even in the USA. The Respondent's right to the trade mark extends to the Domain Name. Unless a domain name is registered, a third party is free to register the domain name.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is 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 Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Preliminary Procedural Issue – 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 Agreement is Chinese.
The Complainant submits in paragraph 10 of the Complaint as well as in its response to the Center on October 21, 2016 that the language of the proceeding should be English. The Complainant contends that the Respondent is capable of communicating in the English language based on the following relevant facts:
- The Respondent appears to be familiar with the English language as the Website contains both English and Chinese content;
- The Complainant is not able to communicate in Chinese;
- Having to translate the documentation would incur substantial expense and delay in the proceeding.
The Respondent submits that Chinese should be language of the proceeding as there has been no agreement otherwise with the Complainant. The Domain Name was registered in China with a Chinese Registrar and the use of the Domain Name is also in China.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs.
The Panel finds that the Website has content in the English language including detailed English language terms and conditions which provides sufficient evidence to suggest the likely possibility that the Respondent is familiar with the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds that the Respondent would not be prejudiced, should the decision be rendered in English. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(i) It will accept the filings on behalf of the Complainant in English;
(ii) It will accept the filings on behalf of the Respondent in Chinese; and
(iii) It will render this decision in English.
C. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights to the name MANSUR GAVRIEL through use and registration that predates the Domain Name.
The threshold test for identity or confusing similarity under the Policy 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 Name comprises the Complainant's trade mark MANSUR GAVRIEL and the geographical name "China". 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 generic Top-Level Domain suffix. Further, the addition of the descriptive term "China" does not negate the confusing similarity encouraged by the Respondent's complete integration of the MANSUR GAVRIEL trade mark in the Domain Name. See, e.g., N.V. Organon Corp. V. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org, WIPO Case No. D2011-0260; Oakley, Inc. V. Wu bingjie aka bingjie we/ Whois Privacy Protection Service, WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207.
The Panel finds that the Domain Name is confusingly similar to the MANSUR GAVRIEL trade mark of the Complainant, and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled.
D. Rights or Legitimate Interests
In relation to the second element of the UDRP, whilst the overall burden of proof rests with the Complainant, it is recognized that this could result in the impossible task of proving a negative. Hence, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden of production shifts to the respondent. The standard of proof required under the UDRP is "on balance". An asserting party needs to establish that it is more likely than not that the claimed fact is true.
The Complainant contends that the Respondent has no rights or legitimate interest in the Domain Name. It is not the trade name or company name of the Respondent. The Respondent is not commonly known by that name, it is not a licensee of the Complainant and is not otherwise authorized to use the Complainant's MANSUR GAVRIEL trade mark. The Respondent has been the subject of another UDRP complaint by the Complainant in connection with the domain name <mansurgavriel.net> (Mansur Gavriel LLC v. Guan Maoshuang, WIPO Case No. D2016-1422). The complaint was filed on July 13, 2016. A week later the Respondent registered the Domain Name (on July 21, 2016). The Website is almost identical to the website connected to <mansurgavriel.net>. Both websites offer for sale handbags bearing the Complainant's MANSUR GAVRIEL trade mark. The Complainant alleges that these bags are counterfeit or otherwise unauthorized but has not provided any evidence to substantiate this claim other than the fact that the Respondent has not been authorized to use the trade mark as part of the Domain Name or in any other way. The panel in the proceedings relating to <mansurgavriel.net> ordered that it be transferred to the Complainant. The Complainant was alerted to the Domain Name on September 26, 2016 when it received an email from a consumer regarding the authenticity of the products sold on the Website.
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the name MANSUR GAVRIEL. In the Response, the Respondent contends otherwise. It says that it is a licensee of the owner of the MANSUR GAVRIEL trade mark in China. The Respondent did not file evidence of the trade mark registration certificate of Chinese trade mark number 13413728 in the name of Dalian filed on October 23, 2013 and registered on January 28, 2015. The Panel did an informal search and there appears to be such a trade mark registration on record in China.
The Respondent also did not produce any evidence of a licence agreement between Dalian and itself. It did produce a copy of what appears to be a purchase order dated September 8, 2011 where 50 MANSUR GAVRIEL handbags of different sizes and models were purchased. The price of each bag ranged from RMB 1000 – 2000 which is approximately USD 144 - 288. The MG Bucket Bag retails for over USD 600 on the Website. The wholesale price does seem remarkably low and would suggest that the goods are not genuine. The brand MANSUR GAVRIEL is made up of the combination of the surnames of the two designers. They are not common surnames. The combination is most unusual. It does seem highly unlikely that prior to the formation of the Complainant company in 2012, a Chinese company would have started of its own accord an identical brand selling identical goods. The Website is very similar in look and feel to the Complainant's website. There is no explanation from the Respondent as to why this may be the case.
It is also interesting that the Respondent did not make any of these contentions a few months before in the <mansurgavriel.net> case and did not challenge the Complainant's allegations that the goods sold on the Website are counterfeit. There can be no legitimate interest in the sale of counterfeits. See Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552 and Farouk Systems, Inc v. QYM, WIPO Case No. D2009-1572. On balance, the Panel finds that the evidence points to the goods on the Website being counterfeit goods.
In any event even if Dalian does in fact own the MANSUR GAVRIEL trade mark in China, the Respondent will only have rights or a legitimate interest in the Domain Name if it can show that Dalian has given it the right to register a domain name which includes the MANSUR GAVRIEL trade mark. In this Panel's opinion, the mere selling of goods online does not entitle the seller to register a domain name which includes the brand of the goods sold unless the trade mark owner authorizes the same. No evidence of this has been provided.
Having regard to the evidence above, the Complainant has satisfied its burden of proof of showing that the Respondent lacks rights or legitimate interests in the Domain Name. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
E. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Complainant's marks when it registered the Domain Name. Not only has the Complainant provided evidence that the Domain Name registration post dates the MANSUR GAVRIEL trade mark registration, the Domain Name was registered a week after the Complainant filed a UDRP complaint against the Respondent for <mansurgavriel.net>.
The very incorporation of the Complainant's trade mark in the Domain Name and the display of the Complainant's trade marks and counterfeit products on the Website confirm the Respondent's awareness of the trade marks. Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The Website mimics the Complainant's website. The products offered for sale on the Website are counterfeit MANSUR GAVRIEL products for reasons set out in paragraph 6.D so much so that a customer contacted the Complainant to inquire if the products on sale there are genuine. The use by a respondent of a domain name which includes a well-known trade mark to resolve to a website which offers and sells counterfeit products under that trade mark is evidence of bad faith registration and use. See Burberry Limited v Jonathan Schefren, WIPO Case No. D2008-1546 and Prada SA v Domains for Life, WIPO Case No. D2004-1019.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) 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 Domain Name, <mansurgavrielchina.com>, be transferred to the Complainant.
Date: December 20, 2016