WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
France Maternité v. xiangyuan Luo aka Luo xiangyuan
Case No. D2020-0939
1. The Parties
The Complainant is France Maternité, France, represented by Inlex IP Expertise, France.
The Respondent is xiangyuan Luo aka Luo xiangyuan, China.
2. The Domain Name and Registrar
The disputed domain name <bebe9-shop.com> is registered with CyanDomains, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2020. On April 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30 and May 8, 2020, the Registrar transmitted by email to the Center its verification responses 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 May 8, 2020 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 May 11, 2020.
On May 8, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on May 11, 2020. 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 May 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2020. The Respondent did not submit any response. But an automatic reply regarding contact details for advertisement was received on May 22, 2020 from the email address listed on the website at the disputed domain name. The same automatic replies were received on June 12 and 24, 2020, respectively. The Center notified the Parties of the Commencement of Panel Appointment on June 12, 2020.
The Center appointed Douglas Clark as the sole panelist in this matter on June 24, 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, France Maternité, is a French cooperative that groups together stores specialized in the distribution of childcare products, children’s textiles and mother-to-be under the brand name BEBE 9. This brand was created in 1965, and it has more than 100 stores in France dedicated to equipping newborns and toddlers.
The Complainant is the owner of various BEBE 9 trademarks, including French trademark No. 1477359 registered on July 13, 1988, in classes 3, 5, 12, 20, 21, 24, 25 and 28; and International trademark No. 1001675 registered on October 6, 2008 which designates multiple jurisdictions in class 35.
The Complainant has an official website “www.bebe9.com”.
The Respondent is the registrant of the disputed domain name <bebe9-shop.com>.
The disputed domain name was registered on January 16, 2020 and resolves to a page that has
pay-per-click links to various pornography and online gambling platforms.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant contends that the disputed domain name <bebe9-shop.com> is confusing similar to the BEBE 9 trademark because the disputed domain name reproduces the earlier marks of the Complainant in their entirety. The additional term “shop” further increases the risk of confusion because it precisely refers to the Complainant’s commercial activity. The addition of the hyphen between “bebe9” and “shop” is irrelevant and cannot eliminate the risk of confusion between the disputed domain name and the earlier marks of the Complainant.
The Complainant contends that the generic Top-Level Domain (“gTLD”) is usually disregarded in evaluating confusing similarity, and therefore not likely to avoid the risk of confusion that may exist between the disputed domain name and the Complainant’s marks.
No rights or legitimate interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant claims that the disputed domain name was registered anonymously, which may be regarded as an indication that the Respondent is willing to hide his identity because he has no rights or
The Complainant asserts that the Respondent has not been authorized by the Complainant to use the mark “BEBE 9” or register the disputed domain name. There is no business relationship existing between the Complainant and the Respondent.
The Complainant contends that the disputed domain name is neither used in connection with a bona fide offering goods or/and services nor constitutes a legitimate noncommercial fair use. The disputed domain name redirects to a page in Chinese which is a pay-per-click website that promotes gambling and pornographic contents. Such use by the Respondent is very harmful for the business and image of the Complainant who is active in the field of child products.
The Complainant claims that Internet users can falsely believe that the website associated to the disputed domain name is operated by the Complainant and the Respondent may benefit from the confusion and diversion by receiving pay-per-click commissions.
The Complainant contends that the name of the Respondent is not composed of the term “bebe 9” and is not commonly known under the name “Bebe 9”.
Registered and used in bad faith
The Complainant contends that the Respondent has registered the disputed domain name and is using it in bad faith.
The Complainant asserts that the Respondent was aware of the existence of the Complainant’s trademark since a simple web search, including the Chinese search engine Baidu would have forwarded the Respondent to the website of the Complainant. The association of the name “Bebe 9” and the generic term “shop” cannot be purely coincidental.
The Complainant contends that the registration of the disputed domain name was fraudulent and was made with the intention to benefit from the attractive power of the Complainant’s well-established and widely-known name and trademarks. The Respondent’s concealment of his identity is also indicative of bad faith.
The Complainant claims that the disputed domain name is confusingly similar to the BEBE 9 trademark and resolves to a pay-per-click website that promotes gambling and pornographic contents.
Except for the automatic replies received from the email address listed on the website at the disputed domain name as described under the section 3. above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The Language of the Registration Agreement is Chinese.
The Complainant requested the language of the proceeding be in English on the grounds that (i) the Complainant being based in France and the Respondent being based in China, English is the fairest neutral language for the proceeding; (ii) English is the most widely used language in international relations; (iii) the Complainant is unable to communicate in Chinese and would incur considerable expenses in retaining the services of a translator in order to translate the Complaint and the Annexes in Chinese; and (iv) the Complainant noticed that the Respondent seems to be the owner of the domain name <repairmanualsoncd.com>, the IP address of which is located in California, United States of America. Therefore, English should be understood by the Respondent.
The Respondent did not respond to this request.
Paragraph 11(a) of the Rules provides that:
“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 Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The Respondent did not respond to the Center’s preliminary determination.
This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
As set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delays and expense. The Panel would have accepted a Response in Chinese, but none was filed. These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Panel finds the disputed domain name <bebe9-shop.com> is confusingly similar to the Complainant’s mark because the disputed domain name incorporates the Complainant’s BEBE 9 trademark in full. The gTLD “.com” should be disregarded under the first element confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
It is accepted by UDRP panels that the addition to the complainant’s trademarks of words or terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) in the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and the complainant’s trademark under the first element of the Policy. (WIPO Overview 3.0, section 1.8). Therefore, the inclusion of a term “shop” does not affect the confusing similarity of the disputed domain name from the Complainant’s BEBE 9 trademark.
The Panel further notes that the Complainant does not rely on any registered trademarks for BEBE 9 in China where the Respondent is located. The ownership of a trademark is generally considered to be a threshold standing issue. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. These factors may however bear on a panel’s further substantive determination under the second and third elements. (See section 1.1.2 of the WIPO Overview 3.0).
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has no business or any kind of relationships (i.e., licensor, distributor) with the Complainant. Further, the Respondent is not commonly known by the disputed domain name. Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
Based on the evidence, the Panel finds that the disputed domain name was registered in bad faith and is being used in bad faith.
The Complainant’s BEBE 9 trademark has been registered since 1988 and the disputed domain name was registered more than 30 years after the Complainant’s trademark has been registered. The Panel is satisfied that the Respondent must have known the Complainant’s widely-known BEBE 9 trademark when he registered the disputed domain name. It appears to the Panel that the Respondent has registered the disputed domain name in order to create an association with the Complainant as a means of attracting users to the resolved website.
The disputed domain name resolves to a website displaying pay-per-click links relating to pornography and online gambling services. The disputed domain name is clearly being used to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s BEBE 9 trademark as to the source, sponsorship, affiliation, or endorsement of the services of the website in accordance with paragraph 4(b)(iv) of the Policy.
Under all the circumstances of this case as described above, the Panel is satisfied that the Respondent registered the disputed domain name with the Complainant’s mark in mind and has used the disputed domain name in bad faith. For the above reasons, the third part of the paragraph 4(a) of the Policy is therefore 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 <bebe9-shop.com> be transferred to the Complainant.
Date: July 8, 2020