WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Maison Pierre Hardy (SAS) v. Xian Wei Fa / Li Wei Wei, Li Wei Wei / Da Wei Xie, dawei
Case No. D2017-1160
1. The Parties
The Complainant is Maison Pierre Hardy (SAS) of Paris, France, represented by Cabinet Beau de Lomenie, France.
The Respondent is Xian Wei Fa of Hezhou, Guangxi, China (or Hangzhou, Zhejiang, China) / Li Wei Wei, Li Wei Wei of Weinan, Shaanxi, China (or Hangzhou, Zhejiang, China) / Da Wei Xie, dawei of Guangzhou, Guangdong, China (or Hangzhou, Zhejiang, China).1
2. The Domain Names and Registrar
The disputed domain names <cheappierrehardy.online>, <pierrehardye.store>, <pierrehardyoutlet.online>, <pierrehardysale.online>, <pierre-hardy.store> and <pierrehardystore.online> are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2017. On June 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 14, 2017, 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 June 26, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On June 28, 2017, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
On June 28, 2017, the Complainant also requested to add two additional domain names into these proceedings. The Complainant filed the First Amended Complaint on July 17, 2017, including <pierre-hardy.store> and <pierrehardye.store> into these proceedings.
Upon Center’s request for registrar verification in connection with the additional disputed domain names, on July 19, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant contact information for the disputed domain names which differed from the named Respondent’s contact information in the Complaint. The Center sent an email communication to the Complainant on July 19, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to amend its arguments in relation to the consolidation of the Respondents. On July 28, 2017, the Complainant filed the Second Amended Complaint.
The Center verified that the Complaint together with the First Amended Complaint and the Second 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 August 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2017.
The Center appointed Francine Tan as the sole panelist in this matter on August 29, 2017. 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 was established in 2000 and is the company through which the French fashion designer, Mr. Pierre Hardy, known for its Pierre Hardy brand of jewellery, shoes and handbags, operates. Pierre Hardy products are sold in 79 stores across 18 countries including in China.
The Complainant owns trade mark registrations for PIERRE HARDY, including in China. The mark is registered, inter alia, under International Registration No. 992959 (registered on March 7, 2008) and European Trade Mark No. 003057081 (registered on April 2, 2004). It is also the owner of many domain names containing the mark PIERRE HARDY, e.g., <pierrehardy.com> (registered since 2000), <pierrehardy.fr>, <pierrehardy.info> and <pierrehardy.net>.
Through intensive, continuous and global commercial use of the Complainant’s PIERRE HARDY trade mark, the Complainant’s trade mark has earned a worldwide reputation in the field of fashion. The Pierre Hardy brand has been recognized in international fashion magazines as one of the most luxurious and reputable. Celebrities such as Nicole Kidman and Kylie Minogue have been known to wear Pierre Hardy products.
The disputed domain names <cheappierrehardy.online>, <pierrehardystore.online>, <pierrehardyoutlet.online> and <pierrehardysale.online> were registered on January 31, 2017. The disputed domain names <pierre-hardy.store> and <pierrehardye.store>, were registered on May 4, 2017 and April 13, 2017, respectively. The disputed domain names all resolve to websites in English offering for sale products bearing the PIERRE HARDY trade mark.
5. Parties’ Contentions
The Complainant asserts, firstly, that the disputed domain names are identical to the PIERRE HARDY mark in which the Complainant has rights as they all contain the mark PIERRE HARDY.
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names. The PIERRE HARDY mark has a strong reputation and is distinctive of the designated goods and services. The Respondent has no prior rights in the name “Pierre Hardy” and is using the disputed domain names in relation to the products bearing the PIERRE HARDY trade mark. The Respondent was never authorized by the Complainant to use the PIERRE HARDY trade mark or to register the disputed domain names.
Thirdly, the disputed domain names were registered and are being used in bad faith. The Respondent chose the disputed domain names intentionally to benefit from the Complainant’s reputation in the PIERRE HARDY trade mark. In China, authorized retailers of the Complainant’s products are located in Beijing, Shanghai and Tianjin. The Respondent knowingly attempted to attract Internet users to its websites for profit, by creating a likelihood of confusion with the PIERRE HARDY trade mark. The Respondent, in relation to the <pierrehardystore.online> disputed domain name even displayed a fake certificate of authenticity on its website. This demonstrates bad faith on the Respondent’s part.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Procedural Issue – Consolidation of Multiple Respondents and Domain Names
The Complainant requested a consolidation of the proceeding albeit there appears to be three different Respondents. The four “.online” disputed domain names are registered to Xian Wei Fa; the <pierre-hardy.store> disputed domain name is registered to Li Wei Wei; and the <pierrehardye.store> disputed domain name is registered to Da Wei Xie. The Complainant submitted that the latter two must be considered to be the same as or linked with Xian Wei Fa for these reasons:
(i) The Registrar for the disputed domain names is the same.
(ii) The Respondents share the same word “Wei” in their names.
(iii) The Administrative, Technical and Billing Contacts for the disputed domain names are the same.
(iv) The <pierre-hardy.store> and <pierrehardye.store> domain names also resolve to active websites selling apparently counterfeit products of the Complainant.
(v) The information given in relation to the contact address for the <pierre-hardy.store> and <pierrehardye.store> domain names is false.
(vi) The address in relation to the disputed domain names <pierre-hardy.store> and <pierrehardye.store> was initially the same as that of the owner of the first four disputed domain names. However, this was changed after the Complaint was amended to include <pierre-hardy.store> and <pierrehardye.store> to the list of disputed domain names.
The Panel obtains guidance on this procedural issue from the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 4.11.2, which states:
“Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).”
Applying these considerations to the instant case, the Panel determines that the Complainant has established that the disputed domain names are more likely than not subject to the common ownership or control of Xian Wei Fa. The Panel does not regard the common term “Wei” to be a relevant consideration or conclusive in any way, bearing in mind the nature of Chinese names. What is pertinent to the Panel’s conclusion is the fact that the the address in relation to the <pierre-hardy.store> and <pierrehardye.store> disputed domain names was initially the same as that of Xian Wei Fa, and the change only took place after the Complainant sought to add the domain names <pierre-hardy.store> and <pierrehardye.store> to the Complaint. The Panel notes that the administrative, billing and technical contacts are the same for all the disputed domain names. The content of the respective websites are essentially similar in that they all offer the sale of apparently counterfeit products of the Complainant. The targeting of the Complainant’s well-known mark and similarity of the content of the websites of Li Wei Wei and Da Wei Xie reflect a common conduct by the Respondent. The aforesaid are all factors which indicate that the disputed domain names are linked.
In view of the aforesaid considerations, the Panel finds that the consolidation of the multiple domain name disputes involving the three nominally distinct Respondents would be procedurally efficient and consistent with the aims of the Policy.
6.2.Preliminary Procedural Issue – Language of the Proceeding
The Registration Agreement is in Chinese. The Complainant, however, requested that English be adopted as the language of the proceeding for the reason that the disputed domain names all resolve to websites of which the content is in English. Further, the “contact us” address found on the Respondents’ websites indicate an address within the United States of America.
The Respondent did not respond on the issue of the language of the proceeding.
The Panel is of the view that it would be appropriate for English to apply, notwithstanding the fact that the Registration Agreement is in Chinese. 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 stipulates that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition.”
The Panel is persuaded that the Respondent has an adequate level of understanding of the English language, and this is reflected in its choice of the disputed domain names which contain English words (e.g., “cheap”, “sale” and “store”) and the language adopted on the Respondent’s websites.
The Respondent was advised in both Chinese and English of the nature of the proceeding but did not object to the Complainant’s request on the issue of the language of the proceeding. Requiring the Complainant to translate the Complaint and supporting evidence into Chinese would significantly delay the proceeding whereas on the face of the circumstances of this case, the Respondent appears to be very familiar with and understand English.
The Panel therefore determines it appropriate that English be applied as the language of the proceeding.
6.3. Substantive Issues
A. Identical or Confusingly Similar
The Panel finds that the first criterion of paragraph 4(a) of the Policy exist in this case. The Panel does not agree with the Complainant’s assertion that the disputed domain names are identical to the Complainant’s PIERRE HARDY trade mark but does find that they are confusingly similar thereto.
The Complainant has established that it has rights in the trade mark PIERRE HARDY. The disputed domain names all contain the PIERRE HARDY trade mark and the mark is identifiable therein. It is a well-established principle that the applicable Top-Level Domain may be disregarded when considering whether a domain name is identical or confusingly similar to the complainant’s trade mark in which it has rights for the purpose of comparison under the first element, being a technical requirement of registration. In this case, the Panel finds that the words “outlet”, “sale”, “store” and “cheap” in the respective disputed domain names are descriptive words which do nothing to remove the confusing similarity with the Complainant’s PIERRE HARDY trade mark. The additional letter “e” in the disputed domain name <pierrehardye.store> also does not remove the confusing similarity with the Complainant’s said trade mark; it could be considered a case of “typosquatting”.
The Panel therefore finds that the disputed domain names are confusingly similar to the mark PIERRE HARDY in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel concludes in this case that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent does not appear to be known by the names making up the disputed domain names and neither has it been authorized to use the PIERRE HARDY mark or to register the disputed domain names incorporating the said trade mark.
The Panel finds that the Respondent’s use of the disputed domain names created a misleading impression of association with the Complainant, when in fact there is no affiliation between the Parties, and its offering of allegedly counterfeit goods via the disputed domain names does not give rise to any rights or legitimate interests in the disputed domain names within the meaning of the Policy.
Having established a prima facie case, the burden of production shifts to the Respondents to come forward with evidence, that it has rights or legitimate interests in the disputed domain names. The Respondent, however, failed to file any response and made no effort to rebut the Complainant’s assertions.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the UDRP provides that the following circumstances, if found to be present, shall be evidence of the registration and the use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Panel finds that the Respondent’s choice of the disputed domain names, all of which incorporate wholly the well-known PIERRE HARDY trade mark and are used in relation to the offering of apparently counterfeit goods reflects bad faith and an intention on the Respondent’s part to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites or of a product of services on the websites. Looking at the Respondent’s websites, the Panel is persuaded that the Respondent no doubt knew of the Complainant and its PIERRE HARDY trade mark, and registered the disputed domain names for no other reason other than for the aforesaid purpose.
The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been satisfied.
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 <cheappierrehardy.online>, <pierrehardye.store>, <pierrehardyoutlet.online>, <pierrehardysale.online>, <pierre-hardy.store> and <pierrehardystore.online> be transferred to the Complainant.
Date: September 11, 2017
1 For the reasons set out in Section 6.1 of this decision, the above mentioned Respondents are collectively referred to as the “Respondent”.