WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yves Saint Laurent, SAS v. 尹素兰 (Yin Sulan)
Case No. D2018-0873
1. The Parties
The Complainant is Yves Saint Laurent, SAS of Paris, France, represented by IP Twins S.A.S., France.
The Respondent is尹素兰 (Yin Sulan) of Hangzhou, Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <ysl.red> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2018. On April 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 2018, 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 April 24, 2018, 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 the same day. 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 English and Chinese of the Complaint, and the proceedings commenced on May 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2018.
The Center appointed Rachel Tan as the sole panelist in this matter on June 6, 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 a French luxury fashion house founded in 1961 after the eponymous designer, Yves Saint Laurent. It is considered one of the world’s most prominent fashion houses and is known for its modern and iconic pieces. The Complainant provides clothing, bags, shoes, perfumes, cosmetics and other fashion items branded with the YSL logo, YVES SAINT LAURENT or YSL YVES SAINT LAURENT logo. The Complainant operates around the world with monobrand boutiques, concessions and beauty counters in many major cities, including the Chinese cities of Beijing, Hangzhou and Shanghai. In 2016, the Complainant’s net sales were in excess of EUR 1.22 billion.
The Complainant holds registrations of the YVES SAINT LAURENT, YSL logo, YSL YVES SAINT LAURENT trade marks (“YSL trade marks) in several jurisdictions around the world, including:
YSL logo International Registration No. 254533, registered on April 10, 1962, in classes 14, 18, 24, 25 and 26;
YSL YVES SAINT LAURENT logo International Registration No. 387843, registered on May 8, 1972, in class 09;
YSL YVES SAINT LAURENT logo International Registration No. 432774, registered on September 26, 1977, in classes 16;
YSL Chinese Registration No. 793623, registered on November 21, 1995 in class 25; and
YSL Chinese Registration No. 10187258, registered on December 7, 2015 in class 18.
The Complainant is the registrant of numerous domain names such as <ysl.com>, <ysl.fashion> and <ysl.asia>.
The disputed domain name was registered by the Respondent on March 9, 2018. The disputed domain name currently does not resolve to any website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the trade mark, the Respondent has no rights or legitimate interests with respect to the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. The Complainant requests transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.
In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding.
The Respondent did not comment on the language of the proceeding. The Center proceeded to issue its case-related communications to the Parties in both English and Chinese. The Center decided to accept the Complaint as filed in English, accept a Response in either English or Chinese, and appoint a Panel familiar with both languages.
It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below:
(a) The Complainant is a company based in France. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses.
(b) English is not the native language of either Party.
(c) If the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese regarding the language of the proceeding, but the Respondent did not reply.
(d) The Respondent has failed to participate in the proceeding and has been notified of its default. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.
6.2. Analysis of the Complaint
On the basis of the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established rights to the YSL trade mark.
The Complainant states that the generic Top-Level Domain (gTLD), “.red”, is an English term designating a colour. The Complainant goes on to contend that when this gTLD is viewed in combination with “ysl”, the average Internet users would be led to believe that the disputed domain name would resolve to a website displaying a fashion collection created by the Complainant.
The Panel is of the view that while “red” is widely used in the fashion industry, the colour is also symbolic to many cultures. As the Complainant has not adduced any evidence to support its assertion, the Panel has chosen to disregard it. Nevertheless, on the basis that the disputed domain name is comprised of the YSL trade mark in its entirety, and the accepted case law permits TLDs to be ignored in proceedings, the Panel finds that the disputed domain name is identical to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent is not “commonly known” by the disputed domain name as it has not registered any trade mark or service mark incorporating “YSL” or “Yves Saint Laurent”. The disputed domain name currently redirects to an error page, and such use does not demonstrate a bona fide offering of goods or services. Further, the Respondent has never been granted authorization, a license or any right to use the Complainant’s YSL trade marks. The Complainant asserts that even though the Romanized transliteration of the Respondent’s name is “Yin Sulan”, this alone does not establish legitimate interests in the term “ysl”. Lastly, the Complainant searches did not locate any fair use of the term “ysl” by the Respondent on the Baidu and Google search engines.
In circumstances where the Complainant possesses exclusive rights to the YSL trade mark whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683 (<thecharminghotel.com>).
The Complainant has itself noted that the Romanized initials of the Respondent’s name are “ysl”. The Respondent has been given ample opportunity to show that it is “commonly known” by these initials, is making fair use of the disputed domain name, or provide evidence of circumstances of the type specified in paragraph 4(c) of the Policy. However, as no response was filed by the Respondent, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant believes that the YSL trade marks are so well-known that it is inconceivable the Respondent was unware of these earlier rights. Further, the use by the Respondent of a generic email address ([…]@163.com) and privacy service indicates the registration of the disputed domain name was made in bad faith. Finally, the non-use of a domain name should not prevent a finding of bad faith.
The Complainant’s YSL trade marks are widely and extensively registered and used around the world, including in China. The disputed domain name was registered well after the first registration of the Complainant’s trade marks and years after its first store opened in China. Fast forward to 2018, the Complainant has grown to become a substantial commercial operation in China and has acquired a high degree of fame in the country.
The disputed domain name currently resolves to an inactive website. The “passive holding” of a domain name does not prevent a finding of bad faith. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (<telstra.org>).
It is accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. See, paragraphs 10 and 12 of the Rules. The top results of a search on the Baidu search engine using “YSL” and “[…]@163.com” (the Respondent’s email address) are all references to the Complainant and the YSL trade marks.
The applicable standard of proof in UDRP cases is the “balance of probabilities” where a party should demonstrate to a panel’s satisfaction that it is more likely than not that a claimed fact is true. While conclusory statements unsupported by evidence will normally be insufficient to prove a party’s case, panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case e.g., where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.
In the present case, the Respondent has failed to respond to the Complainant. If the Respondent had commented on the derivation of the disputed domain name, the result of this proceeding could have been different. However, based on the above facts and circumstances, the Panel is prepared to accept the Complainant’s assertion that the disputed domain name was registered and is being used in bad faith.
Therefore, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) of the Policy.
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 <ysl.red> be transferred to the Complainant.
Date: June 20, 2018