WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yves Saint Laurent v. Han Peng Fei
Case No. D2017-2457
1. The Parties
The Complainant is Yves Saint Laurent of Paris, France, represented by IP Twins S.A.S., France.
The Respondent is Han Peng Fei of Cangzhou, Hebei, China.
2. The Domain Name and Registrar
The disputed domain name <ysl.ink> (the "Domain Name") is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on December 13, 2017. On December 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 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. In response to a request for amendment by the Center, the Complainant filed an amended Complaint on December 21, 2017.
On December 20, 2017, the Center transmitted 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 December 21, 2017. The Respondent did not reply 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 both English and Chinese of the Complaint, and the proceedings commenced on January 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 24, 2018.
The Center appointed Karen Fong as the sole panelist in this matter on February 5, 2018. 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
Founded in 1961, the Complainant is one of the world's most prominent fashion houses. It was the first couture house to launch in 1966, the modern concept of luxury women's prêt-à-porter, in a collection called "Rive Gauche". Throughout the years, its distinctive styles have become iconic, cultural and artistic references and its founder, the couturier Yves Saint Laurent, established a reputation as one of the twentieth century's foremost designers.
YVES SAINT LAURENT, commonly represented by its initials YSL, is a global brand at the vanguard of fashion, designing and marketing a broad range of women's and men's ready-to-wear products, leather goods, shoes and jewellery. The Complainant's products are sold under the names YVES SAINT LAURENT and YSL. The products are distributed throughout the world, generating a revenue of EUR 1.22 billion in 2016. The Complainant's online store at "www.ysl.com", is available in French, English and Chinese and ships to more than 50 countries on all continents.
The Complainant owns hundreds of trade mark registrations worldwide for YSL and YVES SAINT LAURENT. This includes China where the Respondent appears to be based. The earliest trade mark registration for YSL in logo form submitted by the Complainant in evidence dates back to 1962 whilst registrations for YSL in a plain typeface date back to 1984. The YSL trade mark will hereafter be referred to as the Trade Mark.
Besides the Complainant's domain name <ysl.com> which is connected to its main website, it also has numerous domain names which incorporate the Trade Mark, all registered prior to the Domain Name. They include <ysl.fashion>, <ysl.asia>, <yslonline.com> and <ysl-bags.com>.
The Respondent who appears to be a Chinese national registered the Domain Name on January 9, 2016. The Domain Name is not connected to an active website.
5. Parties' Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the 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 did not reply to the Complainant's contentions.
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.
6.1. 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 proceeding. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should be English. The Complainant contends that the Respondent owns many domain names including terms in English at both the Second-Level and Top-Level Domain ("TLD"), which indicates that he has a working knowledge of the English language. The Complaint being a French entity is not able to communicate effectively in Chinese and as such unable to conduct the proceeding in Chinese without a great deal of additional expense and delay due to the need for translation.
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 accepts the Complainant's submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant's request. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.
6.2. Substantive Analysis
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to establish if the domain name is identical or confusingly similar to the Complainant's trade mark. The trade mark would generally have to be recognizable within the domain name. In this case the Domain Name integrates the Trade Mark in its entirety. 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 TLD irrespective of the particular TLD and the ordinary meaning ascribed to a particular TLD. It is viewed as a standard registration requirement.
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that the Respondent is not commonly known by the Domain Name or the Trade Mark. The Respondent does not own any trade marks for YSL or Yves Saint Laurent. The Complainant has no commercial link with the Respondent. It has not granted the Respondent any authorization, licence or any right whatsoever to use the Trade Mark or any mark similar to the Trade Mark as part of the Domain Name. Nor is the Respondent an authorised dealer, licensee or distributor of the Complainant. There is also no evidence of any demonstration of a bona fide offering of goods or services as the Domain Name redirects to an inactive page.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. 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 must have been aware of the Trade Mark when he registered the Domain Name. It is implausible that he was unaware of the Complainant when he registered the Domain Names given the fame of the Trade Mark. In the WIPO Overview 3.0, section 3.2.2 states as follows:
"Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant's mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant's mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent's claim not to have been aware of the complainant's mark."
It is inconceivable that the Domain Name was selected by the Respondent without the Complainant in mind. As outlined under the second element above, the clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent's choice of the Domain Name is also a significant factor to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith
Although the Domain Name is not connected to an active website, it does not prevent a finding of bad faith. From the inception of the UDRP, panelists have found that non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. As stated in section 3.3 of WIPO Overview 3.0, panelists look at the totality of the circumstances in each case. Factors considered relevant include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good faith use, (iii) the respondent's concealing its identity or use of false contact details, and (iv) the implausibility of any good faith use to which the domain name may be put.
In addition to the circumstances of registration referred to above, the following facts indicate that the Domain Name is being used in bad faith – (i) the YSL trade mark is a well-known trade mark. This has been the finding in many UDRP decisions; (ii) the Respondent has failed to file a response and there is no evidence of any actual or contemplated good faith use of the Trade Mark; (iii) the contact details of the Respondent provided in the WhoIs appear to be false. The street name is comprised of the joining together of a Chinese province "He Bei", a city/prefecture, "Cang Zhou" and the city "Xian". There is no street number. The Respondent has given his own name as the State and Province. The phone number and the fax number are the same Chinese mobile phone number so likely to be bogus. The above is good evidence of the Respondent attempting to hide his identity and/or contact details; (iv) the Panel cannot conceive how there could be any good faith use of the Domain Name; and finally (v) The Respondent owns various Domain Names which comprise trade marks belonging to third parties. These include <cikit.net>, registered in October 13, 2016 which is identical to the Japanese trade mark CIKIT, registered in November 18, 2011; <elihu.net>, registered in October 13, 2016 which is identical to the Korean trade mark ELIHU, registered in October 5, 2005; <anze.ren>, registered in November 4, 2016 is identical to three earlier trade marks, registered in Japan, European Union and Indonesia between 2003 and 2013 and <hispace.net>, registered in October 13, 2016 which is identical to several trade marks registered by the company Huawei in 2010.
Considering the circumstances, the Panel considers that this domain name was also 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 Domain Name <ysl.ink> be transferred to the Complainant.
Date: February 12, 2018