WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caviar Petrossian v. 秦志超（qinzhichao)
Case No. D2019-2469
1. The Parties
The Complainant is Caviar Petrossian, France, represented by Areopage, France.
The Respondent is 秦志超（qinzhichao）, China.
2. The Domain Name and Registrar
The disputed domain name <petrossian.tel> is registered with Eranet International Limited (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2019. On October 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 11, 2019, 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 October 15, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On October 15, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 October 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2019.
The Center appointed Joseph Simone as the sole panelist in this matter on November 27, 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, Caviar Petrossian, is a French company belonging to the Petrossian Group. The Petrossian Group is engaged in the sales of caviar, smoked fish, seafood specialties, foie gras and other fine foods. The Petrossian Group was founded in 1920 when Melkoum and Mouchegh Petrossian, two Armenian brothers, began importing caviar to France. Mouchegh Petrossian’s son, Armen Petrossian, still runs the family business as CEO. The Complainant was awarded the “Entreprise du Patrimoine Vivant” which is awarded to French companies as a recognition of the excellence of their know how.
The Complainant operates several restaurants, boutiques and corner shops under the mark PETROSSIAN in different cities across the world, including Paris, Nice, Lyon, New York, West Hollywood, Las Vegas, Brussels and Dubai. It has received recognition as an industry leader in caviar and has been described as the premier buyer and importer of caviar worldwide.
The Complainant owns several trademark registrations for PETROSSIAN, including the following:
- French trademark registration No. 1358658 registered on June 11, 1986 in international classes 8, 14, 18, 21, 22, 29, 30, 31, 32, 33, 40, 42, 43, 44 and 45;
- European Union trademark registration No. 015876667, registered on February 1, 2017 in international classes 3, 8, 14, 18, 21, 29, 30, 31, 32, 33, 35, 39, 43 and 44;
- International trademark registration No. 425498 registered on October 22, 1976 in international classes 18, 22, 29, 30, 31, 32, 33 and 42, protected in jurisdictions including China, where the Respondent resides.
- Chinese trademark registration Nos. 7064063, 7064064, 7064065, 7064066, 7064067 and 8130548 in international classes 29, 30, 31, 33, 43 and 44, all registered during the years of 2010-2011.
The Complainant also operates websites advertising its products at “www.petrossian.fr” and “www.petrossian.com”.
The disputed domain name <petrossian.tel> was registered on September 5, 2019. The Complaint contains screenshots showing that the disputed domain name redirected Internet users to a gambling website. At the time of writing this decision, the disputed domain name does not resolve to an active website.
5. Parties’ Contentions
In accordance with paragraph 4(a) of the Policy, the Complainant contends that the conditions for transfer of the disputed domain name have been satisfied in this case.
The Complainant contends that the disputed domain name is identical or similar to its trademark PETROSSIAN, as it reproduces the mark entirely.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons. The Complainant does not know the Respondent qinzhichao, and has not authorized, licensed or otherwise permitted the Respondent to register the disputed domain name containing its mark. The Respondent was not commonly known by the disputed domain name prior to the adoption and use of the name by the Complainant as a business name and trademark. The Respondent could not have any rights in the trademark that would be prior to the Complainant’s rights.
Finally, the Complainant submits that the Respondent registered and is using the disputed domain name in bad faith for the following reasons. Due the well-known character and reputation of the mark PETROSSIAN, it is unlikely that the Respondent registered the disputed domain name <petrossian.tel> without knowing of the existence of this mark. The Respondent is exploiting the confusion with the well-known mark PETROSSIAN to divert Internet traffic to a website offering gambling services, for commercial gain. This tarnishes the distinctiveness and reputation of the trademark PETROSSIAN and is therefore in bad faith. It also interferes with the Complainant’s business by misleading Internet users trying to reach the Complainant’s official websites.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
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.”
Therefore, the default language of the proceeding shall be Chinese.
However, the Complainant filed the Complaint in English and requested that English be the language of the proceeding, as it would cause undue delay and expense if the Complainant were required to submit all documents in Chinese. Also, the Registration Agreement is available in both English and Chinese.
The key consideration in choosing the language of the proceeding is to ensure that each party has a fair opportunity to present its case. The Respondent was notified of each step of the proceedings in both Chinese and English, and did not respond regarding the choice of language, or submit a formal response. Therefore, the Panel believes there would be no prejudice caused to the Respondent by proceeding in English. On the other hand, requiring the Complainant to submit the Complaint in Chinese would be a waste of resources. Therefore, the Panel has decided that the language of the proceeding shall be in English and shall proceed with a decision in English.
6.2 Substantive Issues
A. Identical or Confusingly Similar
Under the first element of the Policy, a complainant must prove that a 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 provided evidence of several trademark registrations for PETROSSIAN, and has therefore satisfied its obligation to show its rights in this trademark.
The test for whether a domain name is identical or confusingly similar to the Complainant’s trademark is fairly straight forward and a domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (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). It is standard practice to disregard the Top-Level Domain (“TLD”) (see, e.g., F. Hoffmann-La Roche AG v. Domain Admin/xcite, WIPO Case No. DCC2007-0003).
In this case, the disputed domain name exactly reproduces the Complainant’s trademark with only the addition of the TLD “.tel”. After disregarding the TLD, it is identical to the Complainant’s trademark.
Therefore, the first requirement of the Policy is satisfied.
B. Rights or Legitimate Interests
Under the second element, a complainant must demonstrate that the respondent should be deemed as having no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii) of the Policy).
The Complainant states it has no affiliation with the Respondent and has never authorized the Respondent to register the disputed domain name. There is also no evidence that the Respondent is commonly known by the disputed domain name. Absent these circumstances, and because the disputed domain name is identical to the Complainant’s distinctive trademark, while there may be limited situations in which the Respondent could demonstrate rights or legitimate interests, in the absence of any explanation by the Respondent, the Respondent has not rebutted the Complainant’s prima facie case.
In accordance with paragraph 4(c) of the Policy, the Panel may consider whether the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent to mislead consumers, or, whether the Respondent can show it had demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
As the Complaint shows, the disputed domain name previously redirected Internet users to a gambling website, with no apparent purpose other than to mislead consumers for commercial gain. This cannot confer rights or legitimate interests on the Respondent.
Further, the Panel finds that the nature of the disputed domain name carries a high risk of implied affiliation with the Complainant. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
As the Respondent failed to submit a response presenting any evidence otherwise, the Panel concludes that the second requirement of the Policy is satisfied.
C. Registered and Used in Bad Faith
Under the final element, a complainant must prove that a disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
The Complainant has demonstrated a long history of using the mark PETROSSIAN, stemming from the establishment of the Petrossian caviar business in 1920. The Complainant registered its trademark as early as 1976 and has expanded globally so that the mark is now internationally recognized. It is highly unlikely that the Respondent thought of such a distinctive mark by itself, and even if the Respondent unintentionally came across the disputed domain name and decided to register it, brief Internet searches would have revealed the Complainant’s prior rights in the mark. In addition, being the disputed domain name identical to the Complainant’s trademark, in the absence of any explanation on the contrary, the Panel notes that on the balance of probabilities, the registration of the disputed domain name was done with Complainant’s trademark in mind and due to its identical nature.
The Respondent then proceeded to use the disputed domain name to redirect Internet users to a gambling website. Given the likelihood that Internet users may come across the website when searching for the Complainant’s official websites, this creates a real risk of what the Complainant fears will tarnish its reputation and goodwill in the trademark. There is no connection between the website’s content and the Complainant’s trademark, therefore, it appears the only reason for registering the disputed domain name was as a pretext for commercial gain, by riding on the reputation of the Complainant.
The fact that the disputed domain name no longer resolves or redirects to an active website, does not prevent a finding of bad faith, given the prior use of the disputed domain name, and the implausibility of any good faith use, where the disputed domain name exactly reproduces the Complainant’s distinctive mark.
In the absence of any evidence to the contrary, the Panel concludes that the disputed domain name was registered and is being used in bad faith. Therefore, the final requirement of the UDRP is 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 <petrossian.tel> be transferred to the Complainant.
Date: December 11, 2019