WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Christian Lacroix, SNC v. Cao Cong Gang
Case No. D2017-2467
1. The Parties
The Complainant is Christian Lacroix, SNC of Paris, France, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Cao Cong Gang of Suzhou, Jiangsu, China.
2. The Domain Name and Registrar
The disputed domain name <christianlacroixparis.com> is registered with eName 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 14, 2017. On December 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 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 December 22, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On December 26, 2017, the Complainant filed an Amended Complaint in English, requesting that English be the language of the proceeding. 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 of the Complaint, and the proceedings commenced on January 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 25, 2018.
The Center appointed Francine Tan as the sole panelist in this matter on February 11, 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
The Complainant is the owner of trade mark registrations across various jurisdictions for the trade mark CHRISTIAN LACROI X. Its trade mark registrations include French Registration No. 95589413 dating from September 22, 1995, International Registration No. 782814 dating from April 23, 2002 and United States Registration No. 4211120 dating from September 18, 2012. The Complainant also owns a European Union Registration No. 11824992 for the mark CHRISTIAN LACROIX PARIS dating from October 24, 2013.
The Complainant is a well-known haute couture and lifestyle house, known especially for its colourful and baroque style in the fields of ready-to-wear, jewellery, handbags, shoes, glasses, etc. It was established in 1987 in Paris, France. It has over 60 points of sale within France. Globally, the Complainant sells to over 5,000 points of sale including in France, the United Kingdom of Great Britain and Northern Ireland, Russian Federation, the United States of America, India and China. In China, the Complainant's products are sold in Beijing, Shanghai, Chengdu and Dalian.
The Complainant owns the domain name <christian-lacroix.com> (registered on November 5, 2001) from which it runs its primary website. The Complainant also has a strong social media presence, e.g. on Facebook, Instagram and Twitter.
The disputed domain name was registered on March 30, 2014. It resolves to an inactive page. The disputed domain name is offered for sale on the Internet in the amount of USD 999.
A cease and desist letter was sent by the Complainant to the Respondent on July 28, 2017 in English. A reminder was sent on August 7, 2017, in response to which the Respondent wrote "1999 USD". The Complainant responded to the Respondent's email on August 23, 2017 to state it would only be prepared to offer to pay for the Respondent's out-of-pockets expenses and not the disproportionate sum of USD 1,999. The Respondent did not respond further to the Complainant's email communications.
5. Parties' Contentions
The disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights. The disputed domain name incorporates the Complainant's CHRISTIAN LACROIX PARIS trade mark, which renders it identical thereto. Moreover, the Respondent's use of the word "paris" in conjunction with the CHRISTIAN LACROIX trade mark serves to underscore and increase the confusing similarity between the disputed domain name and the CHRISTIAN LACROIX trade mark. The term "paris" is closely linked to and associated with the Complainant.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not authorized or permitted by the Complainant to use its CHRISTIAN LACROIX/ CHRISTIAN LACROIX PARIS trade marks in any way. The Respondent is not sponsored by nor affiliated to the Complainant. Neither is there any evidence that the Respondent is commonly known by the disputed domain name.
The Respondent has failed to make use of the disputed domain name and not demonstrated any attempt to make legitimate use of the disputed domain name. The Respondent's offer to sell the disputed domain name to the Complainant for USD 1,999, an amount which far exceeds the Respondent's out-of-pocket expenses in registering the disputed domain name, is further evidence of the Respondent's lack of rights and legitimate interests therein. The disputed domain name was registered long after the registration of the Complainant's <christian-lacroix.com> domain name and the registration of the trade mark registrations for CHRISTIAN LACROIX/CHRISTIAN LACROIX PARIS.
The disputed domain name was registered and is being used in bad faith by the Respondent. The Complainant has marketed and sold its goods and services under its CHRISTIAN LACROIX/CHRISTIAN LACROIX PARIS trade marks since 1987, which is well before the registration date of the disputed domain name. The Respondent's registration of the disputed domain name which is confusingly similar to the Complainant's said trade marks as well as to its <christian-lacroix.com> domain name shows a knowledge of and familiarity with the Complainant's brand and business. It is not possible to conceive a plausible situation in which the Respondent would have been unaware of the Complainant's CHRISTIAN LACROIX/ CHRISTIAN LACROIX PARIS trade marks when the disputed domain name was registered. The only feasible explanation for the Respondent's registration of the disputed domain name is that the Respondent intended to cause confusion, mistake and deception thereby.
Furthermore, the Respondent holds registrations for several other domain names that misappropriate
well-known trade marks, which shows a pattern of cybersquatting. The domain names include <bijouxagatha.com>, <kindersurprise.com>, <panasonicusa.com> and <versaceclassic.com>. These domain names ("the other domain names") are being offered for sale by the Respondent.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding
The Complainant requested that English apply as the language of the proceeding although Chinese is the language of the Registration Agreement. The reasons are:
(i) The Complainant is unable to communicate in Chinese. The translation of the Complaint would cause an undue burden on the Complainant and delay the proceeding.
(ii) The disputed domain name comprises Latin characters.
(iii) The term "christianlacroix", which is the dominant portion of the disputed domain name, does not carry any meaning in the Chinese language.
(iv)The Complainant's cease and desist letters were sent to the Respondent in English and the Respondent replied with a sale price of "1999 USD". This shows that the Respondent can understand and correspond in English.
Paragraph 11(a) of the Rules stipulates that 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 "The Panel shall ensure that the administrative proceeding takes place with due expedition".
The Respondent did not respond on the issue.
Bearing in mind the mandate for panels to ensure that the administrative proceedings take place with due expedition, the Panel is of the view that it would appropriate in this case for English to adopted as the language of the proceeding. Apart from the fact that the disputed domain name comprises Latin characters and the English words "Christian" and "Paris", it is rather evident that the Respondent understands English. It responded to the Complainant's cease and desist letters which were in English, with a sale price. Moreover, the Respondent could have, if it so desired, indicated to the Center that it would like for the proceeding to be in Chinese or for the Panel to accept its response in Chinese. The Respondent did neither. To require the Complainant and annexes to be translated into Chinese would result in a delay in the proceeding, which does not appear to be merited in this case.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Complainant has established it has rights in the trade marks CHRISTIAN LACROIX and CHRISTIAN LACROIX PARIS. The disputed domain name incorporates the latter in its entirety. It is a well-recognized principle that generic Top-Level Domains (such as ".com" in this case) should be disregarded when considering the issue of identity or confusing similarity under paragraph 4(a)(i) of the Policy as it is a technical requirement of domain names.
The disputed domain name is therefore identical to the CHRISTIAN LACROIX PARIS trade mark in which the Complainant has rights. The disputed domain name is, at the same time, confusingly similar to the CHRISTIAN LACROIX in which the Complainant has rights. The addition of the generic term "paris" does not remove the confusion with the Complainant's CHRISTIAN LACROIX trade mark but in fact adds to it since the Complainant was established in Paris and the goods it sells are haute couture French fashion products.
The Complainant has therefore satisfied the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The Respondent was clearly not authorized to use the Complainant's trade marks. Neither was there any evidence that the Respondent was known by the disputed domain name. The Respondent did not, in its email response to the Complainant's cease and desist letters refute the Complainant's claims and assert that it has rights or legitimate interests in the disputed domain name.
The Complainant's CHRISTIAN LACROIX mark is well known, and it is not at all plausible that the Respondent registered the disputed domain name without any knowledge of the Complainant and its trade mark. The offer of the disputed domain name for sale on the Internet and the offer to sell the disputed domain name to the Respondent for the sum of USD 1,999 reflects a lack of rights or legitimate interests, and the interest in registering the disputed domain name and the other domain names are clearly for the plain goal of selling them to the rightful brand owner or others for a profit. The Respondent did not file any Response, from which the Panel draws a further negative inference.
The Complainant has therefore satisfied the second element of paragraph 4(a) of the Policy.
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 Respondent registered a domain name which incorporates the well-known CHRISTIAN LACROIX and CHRISTIAN LACROIX PARIS trade marks. The Respondent's choice of the disputed domain name reflects bad faith and an intention on the Respondent's part to prevent the Complainant, the owner of the CHRISTIAN LACROIX and CHRISTIAN LACROIX PARIS trade marks, from reflecting the marks in a corresponding domain name. The pattern of conduct is demonstrated by the evidence of the Respondent's registration of the other domain names, all of which contain well-known brands.
The circumstances of this case also show that the Respondent registered the disputed domain name primarily for the purpose of selling or otherwise transferring the disputed domain name registration to the Complainant or a competitor for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name. The Panel therefore finds that the circumstances described in paragraph 4(b)(i) and (ii) of the Policy are present in this case.
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 name <christianlacroixparis.com> be transferred to the Complainant.
Date: February 12, 2018