WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sonia Rykiel Creation Paris, Cambon Financière SARL, Victoire Investissement Holding SARL v. Whois privacy services provided by DomainProtect LLC / Rykiel PO (Private Partnership/Negl. tov) et al. incl. IT Consult Co.ltd. dba family-club.com, yourfamilyname.com, Votum and other partners

Case No. D2020-3351

1. The Parties

The Complainants are Sonia Rykiel Creation Paris, France (the “First Complainant”), Cambon Financière SARL, Luxembourg (the “Second Complainant”), and Victoire Investissement Holding SARL, Luxembourg (the “Third Complainant”), all represented by Marvell Avocats, France.

The Respondent is Rykiel PO (Private Partnership/Negl. tov) et al. incl. IT Consult Co.ltd. dba family‑club.com, yourfamilyname.com, Votum and other partners, Russian Federation, represented by Fides LLC, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <rykiel.com> is registered with DomReg Ltd. d/b/a LIBRIS.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2020. On December 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 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 Complainants on December 28, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. On the same date, the Center transmitted an email to the Parties in English and Russian regarding the language of the proceeding. On January 4, 2021, the Complainants filed an amended Complaint and reconfirmed their request that the language of the proceeding be English. On January 5, 7, 8, 12, and 14, 2021, the Respondent submitted a number of communications in English and in Russian, by which it requested the language of the proceeding to be Russian.

The Center verified that 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”).

On January 14, 2021, the Center informed the Parties that it would accept the Complaint as filed in English, to accept a Response in either English or Russian, and seek to appoint a Panel familiar with both languages. In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2021. On February 2, 2021, the Respondent requested the four-calendar day extension of the due date for the Response under paragraph 5(b) of the Rules. On February 2, 2021, the Center extended the due date for Response until February 7, 2021. On February 8, 2021, the Complainants submitted a request to suspend the proceeding, to which the Respondent agreed on the same date. On February 8, 2021, the Center suspended the administrative proceeding until March 9, 2021. On March 10, 2021, the Respondent submitted its Response in English. The Complainants submitted a supplemental filing on March 19, 2021. On April 2, 4, and 8, 2021, the Respondent submitted supplemental filings.

The Center appointed Assen Alexiev, Jane Seager, and Diane Cabell as panelists in this matter on April 1, 2021. The Panel finds that it was properly constituted. Each member of 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 Complainants acquired in 2020 the assets of the French companies Sonia Rykiel Création et Diffusion de Modèles SA and Sonia Rykiel Parfums Beaute SA, both established by the late Sonia Rykiel, a French fashion designer active and creator of luxury ready-to-wear articles.

The Second and the Third Complainants are the current owners of the European Union trademark RYKIEL with registration No. 001607126 registered on April 12, 2000, for goods in International Classes 3, 18, and 25 (the “RYKIEL trademark”).

The Second and the Third Complainants are also the current owners of the following trademark registrations of the sign “SONIA RYKIEL” (the “SONIA RYKIEL trademark”):

- the International trademark SONIA RYKIEL with registration No. 434218, registered on October 26, 1977, for goods in International Classes 9, 16, 24, and 26; and

- the International trademark SONIA RYKIEL with registration No. 434978, registered on January 6, 1978, for goods in International Class 3.

The Second and Third Complainants operate an online store at “www.soniarykiel.com” where SONIA RYKIEL brand fashion handbags, clothes and accessories are offered for sale.

The disputed domain name was registered on March 5, 2002. At the time of filing of the Complaint, it was inactive.

5. Parties’ Contentions

A. Complainant

The Complainants submit that Ms. Sonia RYKIEL, a designer and creator of luxury ready-to-wear articles, and the Sonia Rykiel companies established by her have enjoyed worldwide reputation for many years.

According to the Complainants, the disputed domain name is identical or confusingly similar to the RYKIEL and SONIA RYKIEL trademarks, because it incorporates their distinctive element “rykiel” entirely.

The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name, because it designates the well-known name of Ms. Sonia Rykiel, recognized in the fashion industry and by the public. According to the Complainants, the Respondent is not commonly known under the disputed domain name and has not used it in connection with a bona fide offering of goods or services since its registration. To the contrary, the Respondent has the intent for commercial gain to misleadingly divert consumers of SONIA RYKIEL branded products or to tarnish the RYKIEL and SONIA RYKIEL trademarks.

The Complainants submit that at the time of the registration of the disputed domain name, the Respondent was aware of the RYKIEL and SONIA RYKIEL trademarks, which are well known in France and in the world, and the choice of the name “soniarykiel” could not be a coincidence because it designates Ms. Sonia Rykiel as a person and a well-known fashion clothes designer. The Complainants note that the Respondent did not respond to their pre-Complaint notices, and maintain that by using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the RYKIEL and SONIA RYKIEL trademarks. According to the Complainants, the disputed domain name is obviously connected to the Complainants’ activity since it is identical or confusingly similar to the RYKIEL and SONIA RYKIEL trademarks, and Internet users searching for “soniarykiel” or “Rykiel” could believe that the disputed domain name refers to a website of the Complainants. The Complainants further state that the disputed domain name was registered primarily for the purpose of disrupting their business, as it was registered just few weeks after it was announced in the press that some new owners were going to acquire the business of the Sonia Rykiel company after its liquidation. In such circumstances, according to the Complainants, the Respondent must have had them and their rights in the SONIA RYKIEL brand in mind when acquiring the disputed domain name, and there was no legitimate or bona fide reason for its registration.

In their supplemental filing, the Complainants submit evidence that on December 9, 2020 (the date of submission of the Complaint), the website at the disputed domain name was not accessible, and on this basis maintain that there has never been an active website at the disputed domain name since its registration in 2002. The Complainants go on to state that on January 4, 2021, when they submitted their amended Complaint, they found out that some content was created on the website at the disputed domain name. According to the Complainants, the Respondent posted this content on the website when it realized that it was facing a UDRP action, and in an attempt to convince the Panel of the existence of an activity with the disputed domain name.

B. Respondent

According to the Respondent, the disputed domain name is not identical or confusingly similar to the trademarks or service marks to which the Complainants have rights. Although there are some similarities between them, this similarity is only formal and non-confusing, because the Complainants have used only the SONIA RYKIEL trademark in their business operations, and the RYKIEL trademark has not acquired distinctiveness or secondary meaning. The Respondent submits that the RYKIEL trademark is either de facto void due to its non-use in commercial circulation for three consecutive years, or has received refusals of protection by the competent authorities, or the trademark registers contain indications of the lack of distinctiveness of this trademark.

The Respondent maintains that it has rights and legitimate interests in the disputed domain name. It states that the word “rykiel” in the disputed domain name does not refer to Ms. Sonia Rykiel, but to the surname Rykiel, which is used by a number of people around the world. According to the Respondent, the right to a name is an absolute, natural right, and the bearers of the Rykiel surname have a fundamental inalienable moral right to it, including the right to use the surname in public and on the Internet. The Respondent submits that its non-profit project for the use of the disputed domain name involves the creation of a community of carriers of the Rykiel surname and their shared use of the disputed domain name. According to the Respondent, it has the right to count on the “first come - first served” principle, as the disputed domain name was freely available until 2001.

The Respondent submits that it is a public association that makes a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainants’ trademark. The disputed domain name hosts a website, developed to be shared by carriers of the Rykiel surname who reside mainly in the territory of the Russian Federation and neighboring states. The concept of the website involves the collection and placement of information about the carriers of the surname, the creation of a platform for them to study the history of their surname and their genealogical roots, to communicate with each other and to create email addresses at the disputed domain name. The target group of the Respondent’s project includes hundreds of persons bearing the Rykiel surname and dozens of Rykiel enterprises in Poland, the Russian Federation, and the United States of America.

The Respondent states that it learned about the Complainants no earlier than 2019, when information about the liquidation of the SONIA RYKIEL brand appeared in the media. At this point the Respondent posted a disclaimer on its website to distance itself from any references or associations with the legal predecessor of the Complainants.

The Respondent points out that the Complaint was filed many years after the registration of the disputed domain name, and the period of passive attitude on the part of the Complainants and their legal predecessor was almost 19 years.

The Respondent contends that the disputed domain name was registered and is being used in good faith, and when registering it, the Respondent did not have information about the Complainants or the RYKIEL trademarks and did not target them. According to the Respondent, the Complainants bear the onus to prove that the Respondent was aware of the Complainants and their RYKIEL trademarks at the time when the disputed domain name was registered, and the Complainants have not met this burden, because they have not submitted evidence of significant sales of SONIA RYKIEL branded products in the Russian Federation and about their advertising budgets targeted at Russian-speaking consumers and the Russian market, or data from opinion polls on brand awareness in the Russian Federation.

The Respondent further maintains that it did not intend to discredit the RYKIEL trademarks of the Complainants or to compete with them or divert their customers. When Internet users visit the Respondent’s website, the included disclaimer will make it obvious for them that the website is not associated with the Complainants or with the SONIA RYKIEL brand.

The Respondent maintains that the disputed domain name has been used in good faith without interruption since 2002, and has not been offered for sale to the Complainants or to their competitors.

In its supplemental filing, the Respondent states that the disputed domain name has always been active, apart from a short period in the beginning of December 2020, when it was not accessible due to server malfunctioning.

6. Discussion and Findings

6.1. Procedural issue – Language of the proceeding

According to the information provided by the Registrar, the language of the Registration Agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, 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 Complainants request that the language of the proceedings be English. They submit that conducting the proceedings in English would not be disadvantageous to the Respondent as the latter understands and can communicate in English, because part of the content of the website at the disputed domain name in its version of January 4, 2021 is in that language.

The Center has sent all its communications to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent objects to the Complainants’ request that the proceedings be held in English and insists the proceeding to be held in Russian. Following the Complainants’ request the proceeding to be held in English, the Center has informed the Respondent that it will accept a Response in either English or Russian, and the Respondent has submitted its Response in both languages.

The above satisfies the majority of the Panel that the Respondent would not be disadvantaged if the language of the proceeding is English, and that using the English language in this proceeding would be fair and efficient, since this is the language spoken by all members of the Panel.

Therefore, in exercise of its powers under paragraph 11 of the Rules, the majority of the Panel decides that the language of this administrative proceeding will be English, and that the Russian language evidence and arguments of the Respondent submitted with its Response are accepted and will be taken into account.

6.2. Procedural issue – Consolidation of Complainants

The Complaint in this proceeding was filed by the three Complainants against a single Respondent. The Complainants request to be allowed to jointly file the Complaint on the basis that they have a common grievance against the Respondent and a common legal interest in the rights that are affected by the Respondent’s conduct. The Respondent has made no comments on this issue.

The Panel is satisfied that a consolidation of the three Complainants in a single proceeding against the Respondent in respect of the disputed domain name is justified and would be appropriate in the circumstances.

As summarized in section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in assessing whether a complaint filed by multiple complainants may be brought against a single respondent, UDRP panels look at whether the complainants have a specific common grievance against the respondent or the respondent has engaged in a common conduct that has affected the complainants in a similar fashion, and whether it would be equitable and procedurally efficient to permit the consolidation. Prior UDRP panels have held that a “specific common grievance” is shown where the complainants have a common legal interest in the trademark rights on which the complaint is based or have been the target of common conduct by the respondent, which has clearly affected their individual legal interests in a similar fashion.

As shown with the evidence submitted with the Complaint, the three Complainants are the assignees of the assets of the companies Sonia Rykiel Création et Diffusion de Modèles SA and Sonia Rykiel Parfums Beaute SA, while the Second and the Third Complainants are the current registered owners of the RYKIEL and SONIA RYKIEL trademarks. The conduct they allege that the Respondent has engaged into may affect, if present, the rights and legitimate interests of each of them. Neither of the Parties has made the Panel aware of any reason why a consolidation of the proceeding would not be equitable or procedurally inefficient.

In view of the above, the Panel allows the consolidation of the three Complainants in a single proceeding against the Respondent in respect of the disputed domain name.

6.3. Procedural issue – Supplemental filings

The Parties have submitted unsolicited supplemental filings. As summarized in section 4.6 of the WIPO Overview 3.0, unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel. Panels have repeatedly affirmed that the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some “exceptional” circumstance).

The Complaint includes evidence that the disputed domain name was not accessible as of December 2, 2020, and the Complainants allege that it has always been inactive, while the Response contains a statement that the disputed domain name had been used without interruption since its registration. This statement may not have been expected by the Complainants and was not addressed in the Complaint. The Parties have not explained why they could not have addressed earlier any of the other issues discussed in their supplemental filings, and the Panel is not aware of any reasons why it should accept them in their other parts.

Therefore, the Panel accepts the supplemental filings of the Parties only in their parts that deal with the issue of whether there was an active use of the disputed domain name prior to date when the Respondent received notice of the present dispute. The other parts of the supplemental submissions of the Parties are not accepted. Having reviewed the Parties’ supplemental filings in their entirety, the Panel notes, for completeness, that the admission of the entirety of the Parties’ supplemental filings would not have materially affected the outcome of the present proceeding.

6.4. Substantive issues

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainants have provided evidence that the Second and the Third Complainants are the owners of the RYKIEL and SONIA RYKIEL trademarks and that the three Complainants have acquired the assets of the fashion business companies established by the late Ms. Sonia Rykiel. The Respondent questions the validity and scope of the Complainants’ trademark registrations. However, the evidence in the case file and the publicly available information about these trademark registrations shows that they are live, and the Respondent has not brought forward any evidence that any of them has been legally invalidated or is currently subject to invalidation proceedings. This satisfies the Panel that the Complainants have established their rights in a trademark for the purposes of the present proceeding.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The disputed domain name incorporates in its relevant section the RYKIEL trademark entirely and without the addition of any other elements. The disputed domain name also incorporates “rykiel” – a prominent element of the SONIA RYKIEL trademark. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of the WIPO Overview 3.0.

Therefore, the Panel finds that the disputed domain name is identical to the RYKIEL trademark in which the Complainants have rights, and is confusingly similar to the SONIA RYKIEL trademark in which the Complainants have rights.

B. Rights or Legitimate Interests

In view of the finding of the Panel under section 6.4.C below that the Complainants have failed to establish that the Respondent has registered the disputed domain name in bad faith, it is not necessary to make a finding of whether the Complainants have established that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered in 2002, 18 years prior to the submission of the Complaint to the Center. The Complainants’ predecessors did possess registered trademark rights at that time, and did enjoy a certain international reputation. However, the Complainants do not appear to have engaged in the type of due diligence required when pursuing the Complaint, and have failed to provide evidence supporting a conclusion that the Respondent was aware of the Complainants or that the Respondent has somehow targeted the Complainants through registration of the disputed domain name. It is disputed between the Parties whether there was an active website at the disputed domain name in the period before the Respondent received notice of the dispute. The Complainants have not submitted any evidence of historic use or inactivity of the disputed domain name that could allow a conclusion to be made on this issue or about the content of the Respondent’s website, if any.

Taking the above into account, the Panel’s conclusion is that the Complainants have failed to demonstrate, on the balance of probabilities, that the disputed domain name has been registered in bad faith. The Panel wishes to stress here that this finding should not be read as a positive finding on the part of the Panel that the Respondent registered the disputed domain name in good faith. Indeed, the Respondent's evidence in support of its assertions to why it registered the disputed domain name is of limited probative value. Rather, the Panel finds that the Complainant has failed to meet its evidentiary burden under this element.

As the Policy requires the Complainants to establish that the disputed domain name was both registered and has been used in bad faith, this necessarily means that the Complaint should fail, and it is not necessary for the Panel to examine the issue of whether the disputed domain name has been used in bad faith.

6.5. Reverse Domain Name Hijacking

The Respondent requests the Panel to make a finding of Reverse Domain Name Hijacking (“RDNH”) against the Complainants. Paragraph 15(e) of the UDRP Rules provides that, if after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

The majority of the Panel decides that the circumstances of this case do not warrant a finding of RDNH against the Complainants. As discussed in section 4.16 of the WIPO Overview 3.0, Panels acting under the Policy have consistently found that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH. Despite the apparent weaknesses of the Complainants’ case insofar as evidence proving bad faith registration is concerned, the Complaint appears to have been properly founded on rights that predate the registration of the disputed domain name. There is no evidence indicating that the Complainants have otherwise used the Policy in bad faith to attempt to deprive the Respondent of the disputed domain name, and the Respondent has not responded to the Complainants’ cease and desist letters sent to it prior to the filing of the Complaint.

7. Decision

For the foregoing reasons, the Complaint is denied.

Assen Alexiev
Presiding Panelist

Jane Seager
Panelist

Diane Cabell
Panelist
Date: April 20, 2021