WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Z&V v. 颜文君 (Wen Jun Yan)
Case No. D2021-0918
1. The Parties
The Complainant is Z&V, France, represented by Nameshield, France.
The Respondent is 颜文君 (Wen Jun Yan), China, pro se.
2. The Domain Names and Registrar
The Disputed Domain Names <zadig-et-voltaire.shop> and <zadig-et-voltaire.store> (the “Disputed Domain Names”) are registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 29, 2021, 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. The Center sent an email communication to the Complainant on March 29, 2021 providing the complete contact information of the registrant disclosed by the Registrar. The Complainant filed an amended Complaint in English on March 29, 2021.
On March 29, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On March 29, 2021, 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 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 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2021. The Response was filed with the Center on April 15, 2021.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on May 5, 2021. 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 is a French company that provides ready-to-wear fashion, accessories and perfumes.
The Complainant is the owner of ZADIG & VOLTAIRE trademarks including:
European Union trademark, ZADIG & VOLTAIRE, registration number 005014171, registered since June 8, 2007 for “Soaps; perfumery, cosmetics, hair lotions” products in class 3.
International trademark, ZADIG & VOLTAIRE, registration number 907298, designating multiple jurisdictions including United States, China and Japan, registered on September 15, 2006 for the following goods and services:
“Soaps; perfumery, cosmetics, hair lotions” in class 3; “Jewellery, timepieces and chronometric instruments; watches” in class 14; “Posters, scrapbooks, almanacs, catalogues, printed matter, newspapers, books, handbooks, printed publications, prospectuses, fountain pens; paper table linen” in class 16; “Trunks and suitcases; umbrellas, school bags, card cases (wallets), key cases (leatherware), unfitted vanity cases, briefcases, college satchels, suitcases, wallets, purses not of precious metal, rucksacks, handbags, shopping bags, roller bags, beach bags, travelling bags, garment bags (for travel), travelling sets (leatherware), travelling trunks” in class 18; “Furniture” in class 20; “Household linen, furniture coverings of textile, furniture fabrics, textile wall hangings, face towels (of textile material), table linen of textile, fabrics for textile use” in class 24; “Clothing, footwear, headgear” in class 25; “Retailing in connection with all the above goods” in class 35; and “Providing of food and drink, bar services, cafés, restaurants, cafeterias, catering services” in class 43.
The Complainant is also the owner of several domain names, in particular the domain name <zadig-et-voltaire.com> registered on May 16, 2002. The domain name is used for the Complainant’s official website.
The Disputed Domain Names <zadig-et-voltaire.shop> and <zadig-et-voltaire.store> were registered on March 20, 2021. The Disputed Domain Names do not resolve to any active webpages.
5. Parties’ Contentions
The Complainant’s submissions may be summarized as follows:
(i) The Disputed Domain Names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
The Complainant argues that the Disputed Domain Names are confusingly similar to its ZADIG & VOLTAIRE trademarks. Both of the Disputed Domain Names incorporate the Complainant’s trademarks, with the substitution of the “&” by its French equivalent “et” (“and”). And the addition of the generic Top Level Domains (gTLDs) “.shop” and “.store” does not change the overall impression of the designations as being connected to the Complainant’s trademarks and official domain name <zadig-et-voltaire.com>.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant has not licensed or authorized the Respondent to use its trademark and the Respondent is not related in any way to the Complainant.
The Complainant asserts that the Respondent is not known in the WhoIs database as the Disputed Domain Names, but as “Wen Jun Yan”.
The Disputed Domain Names resolve to inactive pages. And the lack of use of a domain name is considered as an important indicator of the absence of legitimate interests.
(iii) The Disputed Domain Names were registered and are being used in bad faith.
The Complainant is a global, well-known fashion company. It is inconceivable that the Respondent could have registered the Disputed Domain Names without actual knowledge of the Complainant's rights in the trademark.
The Disputed Domain Names resolve to inactive pages. The Respondent has not demonstrated any activity in respect of the Disputed Domain Names, and it is not possible to conceive of any plausible actual or contemplated active use of the Disputed Domain Names by the Respondent that would not be in bad faith.
The Respondent does not agree that “ZADIG & VOLTAIRE” is a well-known brand name in the Respondent’s country. The Respondent asserts that he saw this complex letter combination (“zadig-et-voltaire”) in many different public media, without knowing that letter combination was a brand name. The Respondent conducted searches through the legal domain registration website for “zadig-et-voltaire” simply because the Respondent considered the letter combination is interesting.
There are more than 30 different domain name suffixes which can be registered related to “zadig-et-voltaire”. The Respondent selected two domain name suffixes for registration legally. The Respondent asserts that he did not maliciously use the Disputed Domain Names or build any malicious website.
The Respondent has not contacted the Complainant for any purpose or used the Disputed Domain Names in bad faith. There is no evidence showing that the Respondent is using the Disputed Domain Names in bad faith.
If the Complainant feels that the Disputed Domain Names may cause damage to the Complainant’s development or brand image, the Complainant had plenty of time to register the Disputed Domain Names before the Respondent did so. The Complainant directly initiated this proceeding without consulting or contacting the Respondent. The Respondent believes that such behavior constitutes reverse domain name hijacking (RDNH) by the Complainant.
6. Preliminary Procedural Issues
A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that “[u]nless 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”.
Paragraph 10(b) of the Rules provides that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”; and paragraph 10(c) of the Rules provides that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”.
The language of the Registration Agreement for the two Disputed Domain Names is Chinese. However, the Complainant requested that the language of the proceeding be English. In order to proceed in Chinese, the Complainant would have had to retain specialized translation services at a cost very likely to be higher than the overall cost of these proceedings. The Respondent was given an opportunity to comment on the language of the proceeding and failed to do so. Furthermore, the Respondent submitted its response in English, showing that the Respondent has a fair opportunity to present his case if the language of proceeding in English. Given the above considerations, the Panel decides that the language of the proceeding be English.
B. Consolidation of Multiple Disputed Domain Names
Paragraph 10(e) of the Rules allows the possibility to consolidate multiple domain name disputes if the Complainant demonstrates that the Disputed Domain Names or the websites to which they resolve are subject to common control and if the consolidation would be procedurally efficient, fair and equitable to the parties. See BMW v. Mike Lee et al., WIPO Case No. D2016-2268.
According to the information provided by the Registrar, Wen Jun Yan is the registrant of both the Disputed Domain Names <zadig-et-voltaire.shop> and <zadig-et-voltaire.store>. The Panel finds that the consolidation of the two domain name disputes would be procedurally efficient, fair and equitable to the Parties.
7. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding and obtain the requested remedy (in this case, transfer of the Disputed Domain Names), the Complainant must prove that each of the three following elements are present:
(i) the Disputed Domain Names are 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 Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the two Disputed Domain Names’ distinctive portions only differ from the Complainant’s ZADIG & VOLTAIRE trademarks by switching the letter “&” to “-et-”. Furthermore, “et” used in the Disputed Domain Names means “and” in French and is equivalent to the “&” in the Complainant’s trademark. The Panel finds that the inclusion of hyphens (“-“) and French word “et” (“and”) in the Disputed Domain Names do not serve to distinguish the Disputed Domain Names from the Complainant’s trademarks.
The gTLDs generally are often disregarded when evaluating the identity or confusing similarity of the complainant’s mark. In the current case, the inclusion of the gTLDs “.shop” and “.store” does not prevent the confusing similarity between the Disputed Domain Names and the Complainant’s ZADIG & VOLTAIRE trademarks.
Accordingly, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s trademarks, and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a Disputed Domain Name, for the purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [Disputed Domain Names] or a name corresponding to the [Disputed Domain Names] in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [Disputed Domain Names], even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [Disputed Domain Names], without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Complainant states that it has neither licensed nor authorized the Respondent to make any use of the Complainant’s ZADIG & VOLTAIRE trademarks. According to the WhoIs database, the Respondent’s name does not appear to be related to the Disputed Domain Names. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names, and the burden of production shifts to the Respondent.
The Respondent has not submitted any evidence to refute the lack of authorization from the Complainant. The Respondent has not submitted any evidence to suggest that he is commonly known by the Disputed Domain Names.
The fact that the Respondent registered the Disputed Domain Names successfully does not grant the Respondent any additional rights or legitimate interests for using the Complainant’s trademark as its own domain name. Providing evidence showing that the Respondent successfully having the Disputed Domain Names registered does not establish that the Respondent has rights or legitimate interests in respect of the Disputed Domain Names for the purposes of the Policy.
Therefore, based on the above, the Panel concludes that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that “[a domain name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative dispute resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith”.
The Complainant states that ZADIG & VOLTAIRE is a global, well-known fashion company. The Complainant asserts that given the distinctiveness of its trademarks, and their global reputation it is inconceivable that the Respondent registered the Disputed Domain Names without bad faith. The Respondent argues that ZADIG & VOLTAIRE is not well-known in China. However, the Respondent also admits that he became aware of this complex letter combination (“zadig-et-voltaire”) through its use in public media in China.
The Panel finds that it is conceivable that the Respondent approach to the term “ZADIG & VOLTAIRE” through its use in public media in China. However, the Respondent did not provide any substantive explanation justifying its selection of including “zadig-et-voltaire” in the Disputed Domain Names.
“ZADIG & VOLTAIRE” is not a descriptive term for the fashion service it provides, instead it’s an arbitrary mark. Therefore, “ZADIG & VOLTAIRE” itself is highly distinctive as a trademark. Given the above, the Panel finds it is not persuasive that the Respondent uses the term without knowing that such term is a trademark owned by other. The Panel concludes that the Respondent has registered the Disputed Domain Names with knowledge of the Complainant’s trademarks and the Disputed Domain Names have been registered in bad faith.
Prior panels have held that the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Disputed Domain Names resolve to inactive websites. The Respondent did not provide any substantive explanation for lack of use of the Disputed Domain Names. The mere fact that the Respondent has not contacted the trademark owner yet will not prevent the Respondent from being recognized as using the Disputed Domain Names in bad faith. Since the inactive use of domain name itself constitutes use of bad faith, the Panel concludes that the Disputed Domain Names are being used by the Respondent in bad faith.
Having considered the above, the Panel finds that the Disputed Domain Names have been registered and are being used in bad faith, and the Complainant has fulfilled the condition provided in paragraph 4(a)(iii) of the Policy.
D. Reverse Domain Name Hijacking
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.16, reasons articulated by panels for finding RDNH include: “(i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence.”
The Respondent fails to prove that any of the above reasons apply to this case. The Panel finds that there is no reverse domain name hijacking in this case.
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 Names, <zadig-et-voltaire.shop> and <zadig-et-voltaire.store>, be transferred to the Complainant.
Peter J. Dernbach
Date: May 19, 2021