WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Self-Portrait IP Limited v. Sun Yanqi
Case No. D2018-2777
1. The Parties
The Complainant is Self-Portrait IP Limited of Hong Kong, China, represented by Taylor Wessing, United Kingdom.
The Respondent is Sun Yanqi of Jiande, Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <self-portrait-sale.com> is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2018. On December 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 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 December 7, 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 December 9, 2018.
On December 7, 2018, the Center sent an email in English and Chinese regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on December 9, 2018. The Respondent did not comment on the language of the proceeding.
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 December 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2019.
The Center appointed C. K. Kwong as the sole panelist in this matter on January 21, 2019. 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 numerous trademark registrations consisting of or comprising the hyphenated word “self-portrait” in block capital letters or lower case. These registrations include:
(1) United Kingdom registrations (a) No. 3007606 registered on August 30, 2013 in respect of “beach clothes” in Class 25, (b) No. 3070626 registered on December 5, 2014 in respect of “clothing, footwear, headgear” in Class 25 and (c) No. 3197255 registered on February 3, 2017 in respect of certain goods and services under Classes 3, 9, 14, 18, 25, and 35.
(2) International Trademark Registrations designating, inter alia, China namely (a) No. 1226502 registered on October 2, 2014 in respect of “beach clothes; clothing, footwear, headgear” under Class 25 and (b) No. 1363382 registered on December 16, 2016 in respect of certain goods and services under Classes 3, 9, 14, 18, 25, and 35.
The uncontradicted evidence produced by the Complainant shows that the registration of its SELF-PORTRAIT word mark took place well before the registration of the disputed domain name <self-portrait-sale.com> which took place on July 16, 2018.
Other than the particulars shown in the printout of database searches conducted by the Complainant against the WhoIs database (as provided in Annex 1 to the amended Complaint) and the website to which the disputed domain name resolves (as provided in Annex 9 to the amended Complaint), there is no evidence in the case file concerning the background of the Respondent and its business.
5. Parties’ Contentions
The Complainant is a company headquartered in Hong Kong founded by Han Chong in 2013. Since the launch of the “Self-Portrait” women’s fashionwear, the brand received international recognition worldwide and the goods are sold internationally in over 40 countries across Europe, Asia, Australia, and the United States of America. Self-Portrait fashionwear has featured heavily in internationally respected fashion publications over the years including Vogue, Marie Claire, and Elle.
The Complainant operates its own global website at “www.self-portrait-studio.com”.
The Complainant owns over 165 trademark registrations and applications consisting of the word “self-portrait” which include those described in Section 4 above.
The disputed domain name is a combination of the word “self-portrait” with the descriptive suffix “sale”. It conveys the meaning that the disputed domain name relates to clothing and retail services offered by the Complainant or is otherwise connected with the Complainant. The disputed domain name is confusingly similar to the Complainant’s SELF-PORTRAIT trademark.
The Respondent does not have any rights or legitimate interests in the disputed domain name. The disputed domain name was registered after the registration and use of the Complainant’s SELF-PORTRAIT mark.
The Complainant was successful in WIPO Case No. D2018-1709 in relation to the domain name <selfportraitdresssale.com>.
The disputed domain name resolves to a website which represents to others as the official website of the Complainant by using the SELF-PORTRAIT mark in relation to the sale of clothing. The design of this website has copied the Complainant’s website including the branding, layout, and presentation of the clothing.
Multiple images featured are direct reproductions from those in the Complainant’s website which is unauthorized by the Complainant and the photographers of the images. This constitutes infringement of copyright.
There is no credible bona fide use by the Respondent and who has not been commonly known by the disputed domain name. The Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith by the Respondent. The Respondent is intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s reputed SELF-PORTRAIT mark and its business.
The Respondent’s registration and the use of the disputed domain name will disrupt the business and image of the Complainant by misleading members of the public into believing that the disputed domain name is connected with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Notice of Proceedings
Having considered the records in the case file, the Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a Response is not due to any apparent omission or inadequate communication by the Center.
B. Language of Proceedings
In response to the Center’s notification in English and Chinese of December 7, 2018 to both parties concerning the language of proceeding, the Complainant filed a request for English to be the language of this administrative proceeding on December 9, 2018.
Paragraph 11(a) of the Rules provides:
“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 language of the registration agreement for the disputed domain name is Chinese as confirmed by the Registrar.
In support of its request, the Complainant has argued, inter alia, that the content of the website to which the disputed domain name resolves is in English. It indicates that the Respondent is fluent or proficient in English. The Respondent will not be prejudiced by using English in the proceeding. On the other hand, it would be disproportionate to put the Complainant to the time and costs of translating and submitting its Complaint in Chinese.
The Panel has taken into consideration the fact that (a) the disputed domain name consists entirely of English letters (being a combination of (i) the English mark of the Complainant; and (ii) the English word “sale”); and (b) the entire contents of the website to which the disputed domain name resolves (as shown in Annex 9 to the Complaint) are in English.
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’ abilities to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; also Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Taking all circumstances into account, the Panel is satisfied that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.
C. The Three Elements
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 14(b) of the Rules further provides that, “if a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.” Paragraph 5(e) of the Rules further provides that, “if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. The said three elements are considered below.
1. Identical or Confusingly Similar
On the evidence available, the Panel has no hesitation in finding that the Complainant has rights in the mark SELF-PORTRAIT by reason of its trade mark registrations as recited in Section 4 above. As the disputed domain name is not identical to the registered mark, the Panel needs to further consider whether the disputed domain name <self-portrait-sale.com> is confusingly similar to the Complaint’s registered mark SELF-PORTRAIT.
It is noted that the disputed domain name <self-portrait-sale.com> has incorporated the Complainant’s trade mark SELF-PORTRAIT”entirely but only with the word “sale” added at the end which is then followed by the generic Top-Level-Domain (“gTLD”) “.com”. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark SELF-PORTRAIT. The addition of the dictionary English word “sale” as a suffix does not avoid the finding of confusing similarity between the disputed domain name and the Complainant’s trade mark SELF-PORTRAIT. To the contrary, the English word “sale” suggests the commercial nature of the website as an online sales outlet of the Complainant and may also indicate that the merchandise offered there is on sale. It is also a well-established practice to disregard the gTLD of a domain name like “.com”, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d’Evian and Société des Eaux de Volvic v. Beroca Holdings B.V.I. Limited,
WIPO Case No. D2008-0416.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established.
2. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, there is prima facie evidence of the Complainant’s asserted registration and use of the registered trade mark SELF-PORTRAIT well before the Respondent’s registration of the disputed domain name <self-portrait-sale.com> on July 16, 2018. Further, the Panel notes that the names of the registrant and the registrant organization do not correspond in any way with the disputed domain name. From the evidence available to the Panel, the Respondent does not appear to be commonly known as <self-portrait-sale.com>. There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondent.
There is no legitimate explanation on the record as to why it was necessary for the Respondent to adopt or include the word “self-portrait” in the disputed domain name.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name and the second element of paragraph 4(a) of the Policy is established.
3. Registered and Used in Bad Faith
The disputed domain name resolves to a website purporting to be the official website of the Complainant that is visually almost identical to the Complainant’s website. The printout of the website at the disputed domain name as shown in Annex 9 to the Complaint contained the following:
(a) the word “self-portrait” being used as a trade mark;
(b) references to the corresponding products and product line of the Complainant; and
(c) certain photos which are identical or closely resembling those of the Complaint’s corresponding fashionwear products and photos as shown in Annex 10 to the Complaint.
In view of the Complainant’s unequivocal assertion that the Respondent is not authorized to use the SELF-PORTRAIT trade mark, the presence of the said corresponding products, namely fashionwear and photos would be deceptive as to their origin.
Given the Complainant’s uncontradicted claim of registration of its trade mark SELF-PORTRAIT and apparent use of that mark well before the registration of the disputed domain name in 2018, there is a strong case for the Respondent to come forward to defend itself. Unfortunately, the Respondent chose not to come forward with any defense.
The public will be misled into believing that fashionwear being offered for sale on the website to which the disputed domain name resolves and the said website itself are associated or otherwise connected with the Complainant resulting in damage and injury to the Complainant. The Respondent has registered the disputed domain name and allowed the operators of the website to which the disputed domain name resolves, to use it primarily for selling goods in a way which disrupts the business of the Complainant. On the basis of the evidence adduced, the Panel finds that the presumption under paragraph 4(b)(iii) of the Policy has been invoked.
By using whether directly or indirectly, authorizing or permitting the use of the disputed domain name by the operators of the site in the manner described above, the Respondent intentionally attempted to attract, for commercial gain, Internet users to go to the said website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or products on the website. The Panel accordingly finds that paragraph 4(b)(iv) of the Policy has also been invoked.
From the materials presently presented to the Panel, it is also not possible to foresee any plausible genuine use of the disputed domain name by the Respondent or the operator of the website in question.
The Panel finds that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) 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 <self-portrait-sale.com> be transferred to the Complainant.
C. K. Kwong
Date: February 4, 2019