WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NG Brand v. Beijing Guohuan Culture Communication Co., Ltd.(北京国欢文化传播有限公司)
Case No. D2019-2377
1. The Parties
The Complainant is NG Brand, France, represented by Cabinet Bouchara, France.
The Respondent is Beijing Guohuan Culture Communication Co., Ltd. (北京国欢文化传播有限公司), China.
2. The Domain Name and Registrar
The disputed domain name <nicolasghesquiere.net> (the “Domain Name”) is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2019. On September 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 8, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 8, 2019 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 in English on October 11, 2019.
On October 8, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on October 10, 2019. The Respondent requested that Chinese be the language of the proceeding on October 10, 2019.
The Center verified that the Complaint together with 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 in English and Chinese, and the proceedings commenced on October 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2019. The Response was filed on October 30, 2019.
The Center appointed Karen Fong as the sole panelist in this matter on November 12, 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 operates in the field of design, manufacture and distribution of clothing and fashion accessories for women under the trade mark NICOLAS GHESQUIÈRE. Mr Ghesquiere is a fashion designer with a reputation in the industry after having been Creative Director of French fashion house Balenciaga from 1997 until 2012 and then Creative Director of Louis Vuitton since 2013. He is the Chairman of the board of the Complainant.
The NICOLAS GHESQUIÈRE trade mark is registered in many territories including France, China, Japan, Indonesia, Republic of Korea, Singapore, Thailand and the European Union. The earliest trade mark registration no. 4447083 submitted in evidence is registered on April 18, 2018 in France (the “Trade Mark”).
The Respondent who is based in Beijing, China registered the Domain Name on April 22, 2019. The Domain Name is connected to an inactive website. The Respondent has filed no less than 22 applications for the Trade Mark in China covering classes 5, 9, 10, 12 21, 25-27, 29, 30, 32-26, 38, 40-45. These marks are all pending and were filed between April 22 to May 5, 2019. The Respondent has also filed multiple applications in China for trade marks belonging to third parties including FENTY, RIHANNA BY FENTY and VIRGIL ABLOH. FENTY is the fashion brand created by Rihanna, the famous singer in association with the famous global fashion group LVMH. VIRGIL ABLOH is a fashion designer who has been the Louis Vuitton men’s wear collection creative director since March 2018 (the same fashion house for which Mr Ghesquiere has been creative director since 2013). All the trade marks filed by the Respondent in the fashion field are linked to LVMH.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name to the Complainant.
The Respondent submitted that NICOLAS GHESQUIÈRE is a registered trade mark belonging to its company and submitted the State Intellectual Property Office’s trademark acceptance certificates for it in class 30, 33, 42, 43 and 44. The Respondent claims that the Domain Name and other domain names which incorporate the Trade Mark were registered to facilitate the promotion of the services in these classes in the future.
The Respondent indicated that it is willing to negotiate to resolve the matter if the Domain Name harms the Complainant’s interests.
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.
B. Language of 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 proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Names is Chinese.
The Complainant submits that the language of the proceeding should be English for the following reasons:
- The Complainant and its representatives are French companies and should be spared the burden of dealing with Chinese as the language of the proceeding;
- The Domain Name is in Latin characters and is also registered in the generic Top-Level Domain (“gTLD”) space comprising Latin characters. The Respondent was able to file a response to the Complaint written in English, both of which indicates that the Respondent has knowledge of the English language;
- English is considered the primary language in which international commerce is conducted; and
- The Respondent would have an unfair advantage if the proceeding was conducted in Chinese.
The Respondent submits that the language of the proceeding should be Chinese because it is the language of the Registration Agreement.
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 notes that the Respondent did respond to the Complaint which provides sufficient evidence to suggest the likely possibility that the Respondent is familiar with the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost-effective manner.
In all the circumstances, the Panel therefore finds that the Respondent would not be prejudiced, should the decision be rendered in English. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(i) It will accept the filings on behalf of the Complainant in English;
(ii) It will accept the filings on behalf of the Respondent in Chinese; and
(iii) It will render this decision in English.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Domain Name contains the Complainant’s distinctive 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 gTLD which in this case is “.net”. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
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.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights 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 trade mark 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 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 evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that it has not authorised, licensed or otherwise permitted the Respondent to use the Trade Mark in the Domain Name or for any other purpose. Further as the Domain Name is passively held, the Respondent has not made any 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, and is not making any legitimate noncommercial or fair use of the Domain Name.
The Respondent claims that it has trade mark rights in China in respect of the Trade Mark. Trade mark applications do not necessarily show rights or legitimate interests. The Trade Mark is the personal name of a well-known designer. The Respondent has not explained the basis upon which it has decided to provide goods and services under this name. It is not a common name. The fact that the Respondent has applied to register the Trade Mark in such a wide variety of classes and yet not disclose this in this proceedings is indicative that such applications are not in good faith. Added to this is the applications of a large number of trade marks belonging to third parties demonstrate that the trade mark applications were obtained primarily to circumvent the application of the UDRP or otherwise to prevent the Complainant’s exercise of its rights (see section 2.12.2 of WIPO Overview 3.0).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been registered and used in bad faith.
The NICOLAS GHESQUIÈRE name is well known in the designer fashion field and the Complainant has submitted considerable press reports to that effect.
The Panel is satisfied that the Respondent must have been aware of the Complainant's well known NICOLAS GHESQUIÈRE trade mark when it registered the Domain Name. It is implausible that it was unaware of the Complainant when it registered the Domain Name. The primary significance of the meaning of the word is its reference to the Complainant's Trade Mark since it is an unusual personal name. Further the fact that the Respondent also applied to register the Trade Mark in different classes in China and other trade marks in the fashion space connected to the LVMH fashion group is evidence that it was aware of the Trade Mark.
“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.”
The fact that there is a clear absence of rights or legitimate interests coupled with 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.
The Domain Name is also used in bad faith. The Domain Name directs to an inactive page. WIPO Overview 3.0 states that: “from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine 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 (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.
In this case, the Trade Mark is well known, the Respondent has filed multiple applications to register the Trade Mark in a variety of classes in China, it has also filed multiple applications of trade marks belonging to third parties, there is an indication in the Response that the Respondent is interested in using the Domain Name and other domain names comprising the Trade Mark to offer goods and services which would have highly likely been to attract for commercial gain by misleading Internet users into believing that the websites are authorised by or somehow connected to the Complainant. It is implausible that there can be any good faith use to which the Domain Name may be put. Considering the circumstances, the Panel considers that the Domain Name is also being used in bad faith. Accordingly, the Complaint has satisfied the third element of the UDRP, i.e., the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) 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 Domain Name <nicolasghesquiere.net> be transferred to the Complainant.
Date: November 28, 2019