WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HAVAS SA v. 申中朝 (Shen Zhong Chao)
Case No. D2020-0611
1. The Parties
The Complainant is HAVAS SA, France, represented by Inlex IP Expertise, France.
The Respondent is 申中朝 (Shen Zhong Chao), China.
2. The Domain Name and Registrar
The disputed domain name <langoorhavas.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 March 11, 2020. On March 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 13, 2020, 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 March 16, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, 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 March 18, 2020. The Respondent did not comment on the language of the proceeding.
On March 13, the Respondent sent an email communication to the Center asking about the possibility of settlement. On March 16, 2020, the Center sent an email communication to the Parties regarding possible settlement. The Complainant requested suspension of the proceeding on March 19, 2020. Accordingly, the proceeding was suspended on March 24, 2020. On April 6, 2020, the Complainant requested that the proceeding resume and filed an amended Complaint in English. The proceeding was then reinstituted on April 8, 2020.
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 April 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2020. The Respondent did not submit a formal response. The Center notified the Parties of the Commencement of Panel Appointment Process on May 8, 2020.
The Center appointed Joseph Simone as the sole panelist in this matter on May 27, 2020. 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 HAVAS SA is based in France and is a company in the advertising and communications industries.
The Complainant owns various HAVAS registrations on a global level, notably the following:
- The European Union Trade Mark HAVAS no. 004416988 filed on May 6, 1998 and registered on November 19, 1999, in classes 9, 16, 35, 36, 38, 41 and 42;
- The International trademark designating China, among others, HAVAS no. 1127838 registered on August 13, 2012, in class 35.
Recently, the Complainant acquired an Indian company called “Langoor”.
The disputed domain name was registered on September 17, 2019 and currently resolves to the Registrar’s page stating that “the domain is for sale!” with contact details of the Respondent.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant contends that the disputed domain name is identical or confusingly similar to the mark HAVAS in which it has rights, and that given its recent acquisition of “Langoor”, these terms will be associated in the consumers’ minds. The terms “havas” and “langoor” have no meaning in French or English language and are highly distinctive.
As such, this creates sufficient similarity between the Complainant’s trademark and the disputed domain name to create a likelihood of confusion.
Rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the Respondent is not making legitimate noncommercial or fair use of the disputed domain name.
Registered and used in bad faith
The Complainant submits that the Respondent acquired and is using the disputed domain name in bad faith, especially after the Respondent proposed to settle, but instead in the email exchanges indicated that the Respondent intends to “file a lawsuit in your local judicial authority to freeze de domain name” and demanded that the Complainant pay USD 1,000 for transfer of the disputed domain name.
Such response therefore demonstrates that the registration of the disputed domain name was made in bad faith, with the sole purpose of taking advantage of the Complainant’s reputation, activities and trademark as well as to blackmail the Complainant in exchange for the transfer of the disputed domain name.
The Respondent did not submit a formal response.
6. Discussion and Findings
A. Language of the Proceedings
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.”
In this case, the Registration Agreement of the Registrar is in Chinese. Hence, the language of proceeding should be in Chinese.
However, the Complainant filed the Complaint in English and requested that English be the language of the proceeding, noting that the Registration Agreement is also available in English, and asserting that English is the fairest neutral language for the proceeding.
The Panel finds that the Respondent was notified of each step of the proceeding in both Chinese and English, but did not submit any formal responses, and that the Respondent has engaged in communication of potential settlement with the Complainant in English.
Given this, the Panel sees no reason to request the Complainant to resubmit the Complaint in Chinese.
Accordingly, the Panel decides that the language of the proceeding shall be in English, which in the circumstances will be fair and equitable to all parties, and shall proceed with a decision in English.
B. Identical or Confusingly Similar
The Complainant has established rights in the trademarks HAVAS.
The disputed domain name incorporates the HAVAS trademark in its entirety, and the addition of the element “langoor” – which is the name of a company recently acquired by the Complainant – does not prevent a finding of confusing similarity.
As such, the disputed domain name is confusingly similar to the Complainant’s HAVAS trademarks.
The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the HAVAS marks and in showing that the disputed domain name is confusingly similar to its marks.
C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of producing evidence in support of its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In this case, the Complainant has established its prima facie case with sufficient evidence. The Respondent failed to file a formal response and has therefore failed to assert factors or put forth evidence to establish that it enjoys rights or legitimate interests in the disputed domain name. The Panel concludes that the Respondent does not have rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
As already mentioned, the Respondent did not file any formal response to the Complaint. The Respondent has therefore failed to rebut any of the Complainant’s allegations concerning the Respondent’s bad faith registration and use of the disputed domain name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).
Here, not only does the disputed domain name resolve to a website with an offer to sale, but there is email correspondence between the Complainant and the Respondent which clearly indicates the Respondent is only interested in selling the disputed domain name. As such, the Respondent has explicitly shown its intent to abuse and target the Complainant’s trademark by attempting to freeze the disputed domain name in exchange for monetary compensation.
The conduct described above falls squarely within paragraph 4(b)(i) of the Policy and accordingly, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).
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 <langoorhavas.com> be transferred to the Complainant.
Date: June 18, 2020