WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yves Saint Laurent, SAS v. shenxingyu
Case No. D2018-2589
1. The Parties
The Complainant is Yves Saint Laurent, SAS of Paris, France, represented by IP Twins S.A.S., France.
The Respondent is shenxingyu of Qinhuangdao, Hebei, China.
2. The Domain Name and Registrar
The disputed domain name <boots-ysl.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 15, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on the same day.
On November 15, 2018, 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 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 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 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2018.
The Center appointed Joseph Simone as the sole panelist in this matter on December 21, 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, Yves Saint Laurent, is a prominent French luxury fashion house founded in 1961, commonly represented by its initials YSL. It designs and markets women’s and men’s ready-to-wear products, leather goods, shoes and jewelry. Its products are distributed throughout the world, generating a revenue of EUR 1.5 billion in 2017, a quarter of which originates from the Asia Pacific. 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.
Yves Saint Laurent owns hundreds of trademarks worldwide in the terms YSL and YVES SAINT LAURENT. These include many internationally registered trademarks and notably the following trademarks in China where the Respondent is located:
- Chinese trademark YSL No. 793623 designating products in international class 25, registered on November 21, 1995;
- Chinese trademark YSL No. 10187258 designating products in international class 18, registered on December 7, 2015;
- Chinese trademark YSL No. 10187256 designating products in international class 18, registered on December 7, 2015;
- Chinese trademark YVES SAINT LAURENT (stylized) No. 807225 designating products in international class 18, registered on January 14, 1996;
- Chinese trademark YVES SAINT LAURENT (stylized) No. 225226 designating products in international class 25; registered on April 30, 1985.
The disputed domain name, <boots-ysl.com>, was registered on October 16, 2018, by the Respondent shenxingyu of Qinghuangdao, China. At the time of the submission of this Complaint and writing this decision, it resolves to an error page.
5. Parties’ Contentions
With respect to the first element, the Complainant submits that the disputed domain name is identical or confusingly similar to the marks YSL and YVES SAINT LAURENT in which it has rights. After disregarding the generic Top-Level Domain (“gTLD”) “.com”, the Complainant submits that the disputed domain name consists of the trademark YSL and the generic term “boots” which is insufficient to prevent confusing similarity.
In terms of the second element, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds.
The Respondent does not use the disputed domain name for a bona fide offering of goods or services as it resolves to an error page and there are no MX records on the dispute domain name Zone.
Second, the Respondent has never been granted authorization, license or any right whatsoever to register and/or use the disputed domain name and is not commercially linked to the Complainant.
Third, the Complainant’s searches indicate the Respondent does not hold any relevant trademark rights or legitimate interests and is not known by or referred to as “YSL”.
Fourth, given the bad faith of the Respondent, the Complainant cannot conceive of any legitimate interests that the Respondent would have in the disputed domain name.
With respect to the third element, the Complainant submits that the disputed domain name was registered and is being used in bad faith. YSL and YVES SAINT LAURENT are well-known globally and notably in China, as evidenced by notoriety decisions. The brand’s founder Yves Saint-Laurent was fascinated by China, its art, customs, legends, history and folklore, which have long been sources of inspiration. He was proud to show his work to the Chinese people as indications of its friendship and gratitude, and organized a famous exhibition in Beijing in 1985 at the Palace of Fine Arts. The Chinese upper-class are very interested in YSL clothing which has been popularized by press reports. For this reason, the Complainant submits the Respondent must have had the Complainant’s name and trademark in mind when he registered the disputed domain name, which cannot have been accidental. The first pages of Google and Baidu search results for “ysl” and “boots ysl” on Google all relate to the Complainant. Therefore, the Respondent knew or at the very least, should have known of the Complainant’s earlier rights and intended to benefit from the Complainant’s well-known and highly distinctive trademarks. This is further reinforced by the Respondent’s pattern of conduct in registering several domain names containing famous third-party trademarks such as Louis Vuitton, Google, Windows and Vivienne Westwood. The Complainant further submits that bad faith use can be inferred where the Respondent is passively holding a domain name and is not limited to undertaking a positive action in bad faith, but encompasses positive inaction.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of Proceeding
The Complainant filed the Complaint in English and requested that English be the language of proceedings on the grounds that the Complainant is a French entity, therefore requiring translation of the Complaint would result in a great deal of additional expense and delay. Since English is not the native language of the Complainant, the Complainant contends that it would not give them an unfair advantage. Furthermore, the use of the term “boots” in the disputed domain name may suggest the Respondent has a working knowledge of English, which is reinforced by reverse-WhoIs checks showing the Respondent holds hundreds of domain names containing English words.
In accordance with paragraph 11 of the Rules:
“…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.”
Given the foregoing, prima facie, the language of the proceeding should be Chinese. However, noting the aim of conducting proceedings with due expedition while also ensuring that each party is given a fair opportunity to present its case, section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides for certain scenarios which may justify proceeding in a language other than that of the registration agreement. These include potential unfairness or unwarranted delay in ordering the complainant to translate the complaint.
The Respondent was notified in both English and Chinese regarding the nature of the proceeding and issue of language, and failed to express a language preference or submit a response. Therefore the Panel believes there will be no prejudice caused to the Respondent by proceeding in English. On the other hand, requiring the Complainant to translate the Complaint would cause undue cost and delay.
In keeping with the Policy’s aim of facilitating a time and cost-efficient procedure for the resolution of domain name disputes, the Panel has decided to proceed in English.
6.2 Substantive Matters
A. Identical or Confusingly Similar
Under the first element of the Policy, a complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainant has given evidence of its numerous trademark registrations for YSL and YVES SAINT LAURENT, including in China, where the Respondent is located. Per section 1.7 of WIPO Overview 3.0, the test for whether the domain name is identical or confusingly similar to the trademark is a relatively straightforward comparison. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold test (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962).
In this case, the disputed domain name <boots-ysl.com> has a distinctive portion containing the trademark YSL, which is an abbreviation for YVES SAINT LAURENT, also protected as a trademark. The remaining element is the term “boots” and it is well established that the addition of a generic term to a trademark does not prevent a finding of confusing similarity under the first element (section 1.8 of WIPO Overview 3.0; VKR Holding A/S v. Li Pinglong, WIPO Case No. D2016-2269; Pfizer inc. v. Blue Viagra, WIPO Case No. D2004-0732).
Therefore, the Panel is satisfied the disputed domain name is confusingly similar to the Complainant’s mark and the first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
A complainant must demonstrate that the respondent should be considered as having no rights or legitimate interests in respect of the domain name (paragraph 4(a)(ii) of the Policy).
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the panel, will demonstrate a respondent’s rights or legitimate interests in the disputed domain name. The Panel accepts that there is no relationship between the Complainant and the Respondent that would give rise to authorization to use the trademark nor is there anything to suggest the Respondent is commonly known by the disputed domain name. The fact that the disputed domain name resolves to an error page and there are no MX records associated with the disputed domain name suggests there is no bona fide or legitimate use by the Respondent within the meaning of paragraph 4(c) of the Policy. Finally, in assessing rights or legitimate interests, it is permissible to look at circumstances beyond the domain name itself, including whether the respondent has refrained from engaging in a pattern of registering domain names corresponding to marks held by the complainant or third parties (section 2.5.2 of WIPO Overview 3.0). On the contrary, the Respondent has actively engaged in registering several domain names containing famous third-party trademarks including Google, Louis Vuitton, Gucci, Abercrombie & Fitch, Vivienne Westwood and Christian Louboutin. This further supports the conclusion regarding a lack of rights or legitimate interests in the disputed domain name.
As the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests, the burden of production shifts to the Respondent (section 2.1 of WIPO Overview 3.0). As the Respondent did not submit a response, it has failed to present any evidence to establish rights or legitimate interests, and given the above analysis, the Panel believes it has none.
The second requirement of the UDRP is therefore satisfied.
C. Registered and Used in Bad Faith
Under the third element of the Policy, a complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy). A strong inference for bad faith arises where the Respondent knew or should have known of the Complainant’s trademark rights, particularly where the trademark is “so obviously connected with such a well-known name and products” (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
The Complainant has proved the notoriety of the YSL and YVES SAINT LAURENT trademarks through notoriety decisions in China indicating the trademarks’ “well-known” status and also through numerous magazine articles showcasing the brand’s fashions and influence in China. This is confirmed by Google and Baidu searches, for which first page results all relate to the brand and/or its designer, described as a “prominent fashion house” and “legendary fashion designer” respectively. Therefore, the Respondent knew or should have known of the Complainant’s rights. As the disputed domain name incorporates the word “boots”, which is a product sold by the Complainant, and given the Respondent’s pattern of registrations containing third-party trademarks, the Panel believes the Respondent had actual knowledge of the Complainant’s rights when it registered the disputed domain name and therefore acted in bad faith. This finding is not altered by the inactive status of the website, since passive holding of a domain name containing a well-known mark can still constitute bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Therefore, the Panel finds that the disputed domain name was registered and 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 name <boots-ysl.com> be transferred to the Complainant.
Date: January 3, 2019