WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yves Saint Laurent v. Qunaitao
Case No. D2017-1246
1. The Parties
The Complainant is Yves Saint Laurent of Paris, France, represented by Brandstorming, France.
The Respondent is Qunaitao of Dalian, Liaoning, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <圣罗兰.世界> (<xn--95qt2lgy3b.xn--rhqv96g>) is registered with Jiangsu Bangning Science & technology Co. Ltd. (the "Registrar").
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 29, 2017 (the "Complaint Filing Date"). On June 29, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 30, 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 July 4, 2017, the Center sent an email to the Parties in both Chinese and English regarding the language of the proceeding. On July 7, 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 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 in both Chinese and English of the Complaint, and the proceedings commenced on July 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2017.
On July 27, 2017, the Center received an email from the Respondent requesting an extension to file a Response and Chinese be the language of the proceeding. On the same day, the Center confirmed that the Response due date was extended to August 4, 2017 in accordance with paragraph 5(b) of the Rules. On July 31, 2017, the Respondent requested a translation of the Complaint into Chinese as it could not understand the Complaint in English and therefore, it could not file a Response.
On August 3, 2017, the Respondent requested to extend the Response due date to August 31, 2017 as it had found a translation company to translate the Complaint. On the same day, the Center invited the Complainant to comment on the Respondent's extension request. The Complainant said that it did not agree to it. On August 4, 2017, the Center informed the Respondent that in accordance with paragraph 5(e) of the Rules it granted the extension of time until August 7, 2017. On the same day, the Respondent asserted that such extension would not be sufficient for translating the Complaint into Chinese and filing of a Response, and requested further extension. The Center confirmed that the Response due date was August 7, 2017, and indicated that the Panel would decide in its sole discretion whether to consider the Response (if submitted later) in deciding the case.
On August 8, 2017, the Center informed the Parties that it would proceed with panel appointment shortly. On the same day, the Respondent indicated that it would file a Response as soon as possible.
The Center appointed Douglas Clark as the sole panelist in this matter on August 10, 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.
On 17 August 2017, the Panel issued Procedural Order No. 1 granting an extension for the Respondent to file its response in English or Chinese by August 31, 2017. The Response was filed in Chinese on August 30, 2017
4. Factual Background
Founded in 1961, the Complainant YVES SAINT LAURENT is a prominent fashion house and is engaged in the business of designing and marketing a broad range of women's and men's ready-to-wear products, leather goods, shoes and jewelry. The Complainant's products are distributed throughout the world generating a revenue of USD 1.06 billion in 2015.
The Complainant is the owner of several trademarks for "圣罗兰" (which is a translation/transliteration of Saint Laurent) registered worldwide. In particular, the Complainant is the owner of the following trademarks:
- Chinese trademark No. 5975971, registered on September 21, 2012;
- Chinese trademark No. 5975972, registered on December 14, 2009;
- Chinese trademark No. 664789, registered on November 7, 1993;
- Chinese trademark No. 665678 registered on November 14, 1993;
- Chinese trademark No. 663957 registered on October 28, 1993;
- Hong Kong trademark No. 300844371 registered on April 2, 2007;
- Macau trademark No. 60770 registered on June 11, 2012;
- Macau trademark No. 60772 registered on June 11, 2012.
The Complainant is also the owner of the following SAINT LAURENT registered trademarks:
- Chinese trademark No. 11874420, registered on May 21, 2014, designating products in international class 34;
- Chinese trademark No. 11873693, registered on July 21, 2015, designating products in international class 37;
- International trademark No. 1161719, registered on December 7, 2012, designating products in international classes 9, 14, 18, 20, 24, 25, 35, 37 and 41;
- International trademark No. 1195681, registered on August 8, 2013, designating products in international classes 9, 14, 16, 18, 20, 24, 25, 34, 35, 37, 41 and 43.
The Complainant is the registrant of the domain names incorporating the trademark 圣罗兰, such as
<圣罗兰.公司> which was registered on August 20, 2014.
The Respondent is Qunaitao of Dalian, Liaoning, China.
The disputed domain name <圣罗兰.世界> was registered on April 20, 2017. The website under the disputed domain name does not resolve to any page.
5. Parties' Contentions
Identical or confusingly similar
The Complainant submits that the disputed domain name <圣罗兰.世界> is made entirely up of the registered trademark圣罗兰and the generic Top-Level Domain ("gTLD") ".世界". It is therefore identical or confusingly similar to the Complainant's registered trademark 圣罗兰.
No rights or legitimate interests
The Complainant submits that the Respondent is not commonly known by the disputed domain name; as of the Complaint Filing Date, the Respondent has acquired no trademark or service mark rights related to the 圣罗兰 mark; the Respondent has no connection with the Complainant or any of its affiliates and has not been authorized by the Complainant to use the Complainant's 圣罗兰 trademark in the disputed domain name.
The Complainant further submits that the Respondent has no intent to use the disputed domain name in connection with a bona fide offering of goods or services
Registered and used in bad faith
The Complainant submits that the Respondent had the 圣罗兰 trademarks in mind when registering the disputed domain name since the YSL trademarks are widely known and 圣罗兰 being the Chinese translation/transliteration of SAINT LAURENT.
The Complainant further submits that by only passively holding the disputed domain name the Respondent is not making any genuine or legitimate use of the disputed domain name.
In addition, the Complainant submits that the Respondent registered the disputed domain name for the purpose of preventing the Complainant from registering the same since the Respondent is associated with 119 other domain names which were registered between April 17, 2017 and April 22, 2017, a period corresponding to the registration of the disputed domain name <圣罗兰.世界>.
Therefore, the Complainant submits the Respondent's registration and use of the disputed domain name was in bad faith.
Identical or confusingly similar
The Respondent did not challenge that the disputed domain name and the Complainant's trademark 圣罗兰 are identical or confusingly similar other than to state that the Complainant has no exclusivity of its trademark in every single class of the Nice classification.
The Respondent submits that the Complainant is not the registered owner of other domain names incorporating the 圣罗兰 trademark with other gTLDs, such as <圣罗兰.com>, <圣罗兰.cn>, <圣罗兰.cc>, <圣罗兰.网址>, <圣罗兰.中国>, and therefore the Complainant does not have the exclusive use of the trademark 圣罗兰 in registering domain names.
The Respondent further submits that on July 10, 2017, it has authorized a third party, 大连智信知识产权代理有限责任公司, to use the disputed domain name, and this third party on July 20, 2017 has submitted a trademark application in class 45 for the mark 圣罗兰. This third party's business is mainly in intellectual property services, technology intermediate, and corporate management consulting which is different to the current goods and services offered by the Complainant under the Complainant's trademarks and therefore there is no confusion between the disputed domain name and the Complainant's trademark 圣罗兰.
No rights or legitimate interests
The Respondent submits that it acquired the disputed domain name legally through registration and therefore its rights should be protected.
The Respondent further submits that by authorizing a third party who has registered the 圣罗兰 trademark to use the disputed domain name, the Respondent has legitimate interests in the disputed domain name.
Registration and use in bad faith
The Respondent submits that neither the registration nor the use of the disputed domain name would negatively affect the Complainant's reputation and business.
The Respondent contends that, as the disputed domain name was registered for an authorized third party's use in intellectual property services, and it did not register the disputed domain name with the intention to sell or rent it to the Complaint at a high price, so there was no bad faith in the registration and use of the disputed domain name.
6. Discussion and Findings
6.1 Language of proceeding
The language of the Registration Agreement is in Chinese. However, paragraph 11(a) of the Rules provides that:
"unless otherwise agreed by the parties, or specified 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."
The Complainant requested the language of the proceeding be in English on the grounds that being a French entity, the Complainant is not able to communicate in Chinese. Further, since the English language is not the native language of the Complainant or its representative, it would not give it unfair advantage over the Respondent. The Respondent at the time did not respond to the language request.
On July 11, 2017, the Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The Respondent on July 27, 2017 requested the language of proceedings be Chinese. After arranging a translation of the Complaint, the Respondent filed its Response in Chinese.
The Panel will accept the pleadings in English and Chinese. It will render its decision in English.
6.2. Substantive Matters
The burden for the Complainant under paragraph 4(a) of the Policy is to prove that:
(i) The disputed domain name is 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 name; and
(iii) The disputed domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Complainant has trademark registrations for 圣罗兰 in China since 1993.
The Panel notes, the Respondent's argument that the Complainant does not have registrations for 圣罗兰 in China in all classes. However, the ownership of a trademark is generally considered to be a threshold standing issue. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. These factors may however bear on a panel's further substantive determination under the second and third elements. (See section 1.1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")).
The gTLD is generally ignored for the purpose of determining identity or similarity. Other than the gTLD ".世界", the disputed domain name <圣罗兰.世界> is identical to the Complainant's trademark 圣罗兰. (WIPO Overview 3.0, section 1.11).
The disputed domain name <圣罗兰.世界> is other than the gTLD identical to the Complainant's registered trademark圣罗兰.
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case. Paragraph 4(c) provides:
"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 trademark 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 trademark or service mark at issue".
The Panel notes that currently the disputed domain name does not resolve to any page. The Respondent claims that it has on July 10, 2017 licensed the disputed domain name to a company that applied for a trademark圣罗兰on July 20, 2017. Both dates are after this dispute was commenced and notified to the Respondent. No evidence has been filed to show any preparations by the business to use the trademark 圣罗兰.
The Panel does not consider these assertions to be sufficient to make out the Respondent has rights and legitimate interests in the disputed domain name. The fact that other third parties may have registered domain names incorporating 圣罗兰 does not confer any rights or legitmate interests on the Respondent.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name which the Respondent has not rebutted.
The second element of the paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name <圣罗兰.世界> has been registered and is being used in bad faith.
The fact that the disputed domain name does not resolve to an active webpage does not preclude a finding that it has been used in bad faith. It is well established that passive use or non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. (WIPO Overview 3.0, section 3.3).
The disputed domain name comprises of the whole of the Complainant's mark. The Respondent did not deny knowledge of the Complainant's mark especially given the Complainant's worldwide reputation. The Panel finds that the Respondent's registration and passive holding of the disputed domain name in the circumstances of the present proceeding accounts to registration and use of the disputed domain name in bad faith.
The third element of paragraph 4(a) of the Policy is, therefore, 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 name, <圣罗兰.世界>, be transferred to the Complainant.
Date: September 13, 2017