WIPO ARBITRATION AND MEDIATION CENTER
ADMINISTRATIVE PANEL DECISION
Société Générale SA and NAOS SAS v. 赵兴明, Zhao Xing Ming
Case No. D2017-2153
1. The Parties
The Complainants are Société Générale SA of Paris, France and NAOS SAS of Aix-En-Provence, France, represented by Nameshield, France.
The Respondent is 赵兴明, Zhao Xing Ming of Suzhou, Jiangsu, China.
2. The Domain Names and Registrar
The disputed domain names <bioderma.info> and <sgcib.info> are registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2017. On November 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 7, 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 November 13, 2017, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on November 14, 2017, and filed an amended Complaint in response to the Center’s request to provide grounds for consolidating the proceedings. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Chinese of the Complaint, and the proceedings commenced on November 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2017.
The Center appointed Douglas Clark as the sole panelist in this matter on December 19, 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 first Complainant Société Generale (“The first Complainant”), founded in 1864, is a French multinational banking and financial services company based in Paris. The first Complainant is one of the largest banks in France and has offices in 34 countries, serving up to 31 million customers worldwide.
The first Complainant owns numerous trademark registrations for SOCIETE GENERALE and SG-CIB in the world, including international registration SG-CIB no. 819196 (registered on September 30, 2003), Hong Kong registration SOCIETE GENERALE no. 300491940 (registered on September 8, 2005), International registrations SOCIETE GENERALE designating China nos. G882062 (registered on March 2, 2006) and G885005 (registered on February 24, 2006) and French registration SG-CIB no. 3223419 (registered on May 2, 2003).
The first Complainant is also the registered owner of <sgcib.com> since February 2000 and <societegenerale.com> since June 2000.
The second Complainant NAOS SAS (“The second Complainant”), founded in the 1970s, operates several internationally recognized beauty brands, namely Bioderma, Institut Esthederm, and Etat Pur. The second Complainant’s products are sold in department store with over 1,000 employees worldwide.
The second Complainant owns numerous trademark registrations for BIODERMA in the world, including international registration no. 678846 (registered on August 13, 1997), European Union Trade Mark registration no. 003136892 (registered on June 5, 2007), Hong Kong registration no. 2004B03582 (registered on October 3, 1997), and French registration no. 1371960 (registered on September 25, 1986).
The second Complainant is also the registered owner of <bioderma.com> since September 1997.
The Respondent is 赵兴明, Zhao Xing Ming of Suzhou, Jiangsu, China.
The disputed domain names <bioderma.info> and <sgcib.info> were registered on September 7, 2017 and August 23, 2017 respectively. Both websites do not resolve to an active page.
5. Parties’ Contentions
The Complainants contend as follows:
Identical or confusingly similar
The Complainants contend that the disputed domain names <bioderma.info> and <sgcib.info> are confusingly similar to the Complainants’ registered trademarks BIODERMA and SG-CIB as the disputed domain names incorporate the Complainants’ trademarks in their entirety. The addition of the generic Top-Level Domain (“gTLD”) “.info” does not reduce its similarity.
No rights or legitimate interests
The Complainants contend the Respondent has no connection with the Complainants or any of their affiliates and has never sought or obtained any trademark registrations for SG-CIB and BIODERMA. The disputed domain names do not resolve to any page and therefore the Respondent has not made any reasonable use of nor can it demonstrate preparations to use the disputed domain names. The Complainants contend the Respondent, therefore, has no rights or legitimate interests in the disputed domain names.
Registered and used in bad faith
The Complainants submit that there is no doubt that before registration of the disputed domain names, the Respondent knew of the Complainants’ rights in the SG-CIB and BIODERMA trademarks given their worldwide reputations. The Respondent is making no bona fide use of the disputed domain names, having acquired the disputed domain names only to disrupt the business of the Complainants and to prevent the Complainants from reflecting their marks in their corresponding domain names.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
6.1 Procedural Issues
A. Consolidation of proceedings
Pursuant to UDRP Rules, paragraph 3(c) “[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”
In general, to accept consolidation of proceedings, the Panel should be satisfied that the Complainants have (i) a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion; and (ii) it would be equitable and procedurally efficient to permit the consolidation. See Section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The common grievance in this case appears to be that the Respondent is the same for both disputed domain names and is a cybersquatter “using” the disputed domain names in an identical way. The Complainants do not appear to be related in any commercial way.
The Panel has considered whether the cases should be severed. In many cases, where there are likely to be different factual matrices to be considered, this would be the appropriate order. However, in this case where the Respondent has defaulted; the same Top Level Domain (“.info”) has been used; the “use” made of the disputed domain name is identical, i.e., “passive holding”; the Panel will allow the consolidation. Complainants should not, however, expect a panel to consider multiple factual scenarios e.g., different website uses relating to different complainants in a single case; a broader range of complainants and/or factual scenarios may well tip the balance away from procedural efficiency
B. Language of proceedings
The language of the Registration Agreements is Chinese. Paragraph 11(a) of the Rules provides that:
“Unless 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.”
The Complainants requested the language of the proceeding be English on the grounds that included that English was the main language of international relations and if it were to translate documents in Chinese, the Complainants would incur unnecessary expense and the proceedings may be delayed. The Complainants also relied on the fact that the Respondent responded to a cease-and-desist letter in relation to <bioderma.info> in English.
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.
On the facts of this case, the Panel does not consider it appropriate to require the Complainants to translate the Complaint as it will unnecessarily delay the proceeding. Both cases relate to clear cases of cybersquatting and translation will unnecessarily delay the proceedings. It does appear the Respondent can communicate in English.
Further, the Respondent did not respond to the Center’s preliminary determination regarding the language or proceeds. This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
The Panel will render its decision in English.
6.2 Substantive issues
A. Identical or Confusingly Similar
The disputed domain names <bioderma.info> and <sgcib.info>, other than the gTLD “.info”, are identical to the Complainants’ respective trademarks. The disputed domain names incorporate the Complainants’ SB-CIB and BIODERMA marks in full. The disputed domain names are therefore identical or confusingly similar to the Complainants’ respective registered trademarks.
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainants are relatively well-known companies. SG-CIB and BIODERMA have no apparent meaning in Chinese. The Respondent has no business or any kind of relationship (licensor, distributor) with the Complainants, and is not making any use of the disputed domain names.
The Complainants have made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads. None of the circumstances in paragraph 4(c) of the Policy are present in this case.
Considering the absence of a response by the Respondent to the Complainants’ contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainants’ respective trademarks, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain names.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain names were registered in bad faith and are being used in bad faith.
While the disputed domain names are not being used, this does not as such prevent a finding of bad faith (see section 3.3 of the WIPO Overview 3.0). The disputed domain names are made up of the Complainant’s respective marks in their entirety. The Complainants are relatively well-known in France and the names have no apparent meaning in Chinese. The Panel considers that it is very likely that the Respondent knew of the Complainants especially given the Complainants’ worldwide reputation, particularly given its history of registering other marks as domain names. The Panel finds that the Respondent’s registration and passive holding of the disputed domain names in the circumstances of the present proceeding accounts to registration and use of the disputed domain names in bad faith.
Additionally, a cease-and-desist letter was sent to the Respondent on October 26, 2017 by the Complainants’ representative in relation to the disputed domain name <bioderma.info>. In an email response, the Respondent asked the Complainants for USD 1,990 for the transfer of the disputed domain name. This is well in excess of normal registration costs for a domain name. The Panel considers this to be evidence of bad faith pursuant to paragraph 4(b)(i) of the Policy.
Having examined all the circumstances of the case, the Panel finds that the disputed domain names were registered and are being used in bad faith.
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, <bioderma.info> and <sgcib.info>, be transferred to the Complainants respectively.
Date: January 8, 2018