WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

S.T. Dupont v. Whois Privacy Protection Service by onamae.com / yongkang wang, wangyongkang

Case No. D2021-4173

1. The Parties

The Complainant is S.T. Dupont, France, represented by IP Twins, France.

The Respondent is Whois Privacy Protection Service by onamae.com / yongkang wang, wangyongkang, China.

2. The Domain Name and Registrar

The disputed domain name <stduponthautecreation.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2021. On December 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 2021, 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 December 14, 2021 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 December 17, 2021.

On December 14, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On December 17, 2021, the Complainant submitted a 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 Japanese of the Complaint, and the proceedings commenced on December 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 15, 2022.

The Center appointed Keiji Kondo as the sole panelist in this matter on January 20, 2022. 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 manufacturing company based in Paris, which has been making luxury goods since its founding in 1872. Products commercialized by the Complainant include handbags, lighters, collectible pens, perfumes, cigarettes, etc. The Complainant is listed at the Euronext stock index.

The Complainant owns several trademark rights worldwide in the terms S.T. DUPONT. In particular, the Complainant is the owner of the following trademark registrations:

- International Trademark Registration No. 468832, registered on April 29, 1982, designating goods in International Classes 06, 09, 21, 25 and 26;

- Japanese Trademark Registration No. 963049, registered on May 17, 1972, designating goods in International Classes 14 and 34;

- Japanese Trademark Registration No. 4749509, registered on February 20, 2004, designating goods in International Classes 08, 09, 14, 16, 18, 21, 25, 26 and 34; and

- International Trademark Registration No. 815686, registered on October 23, 2003, designating goods in International Classes 08, 09, 14, 16, 18, 20, 21, 24, 25, 26, 28 and 34.

The disputed domain name was registered on July 3, 2021. The website associated with the disputed domain name displays pornographic pictures with a footnote reading:

“WARNING: This Site Contains Adult Contents, No Entry For Less Than 18-Years-Old !”

5. Parties’ Contentions

A. Complainant

The disputed domain name is similar to the point of confusion to the Complainant’s trademark S.T. DUPONT. The disputed domain reproduces the trademark S.T. DUPONT, in attack position, but for the dot and space characters of the trademark. The Complainant contends that dot characters are not allowed in domain names, but to separate the second-level domain names from the extension. These are technical resources. Equally the space character is not allowed in domain names. Therefore, the Complainant submits that the Complainant’s trademark is reproduced identically within the disputed domain name.

The inclusion of the terms “haute” and “creation” in the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark, noting also that these terms mean “high-end creation”. Being active in the field of luxury goods, the Complainant submits that these terms only increase the likelihood of confusion. Moreover, the Complainant recently launched a “Haute Création” line of products. It is clear that Internet users of average attention will likely believe that the disputed domain name originates from or is affiliated with or endorsed by the Complainant.

The use of lower-case letter format on the one hand and the addition of the generic Top-Level Domain (“gTLD”) “.com” on the other hand, are not significant in determining whether the disputed domain name is identical or confusingly similar to the trademarks of the Complainant.

Therefore, the Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark S.T. DUPONT. The first condition under the Policy should be deemed satisfied.

The Respondent in these administrative proceedings was Whois Privacy Protection Service by onamae.com, listed as registered owner of the disputed domain name. Further to the Center’s Notice of Registrant Information, the Respondent was identified as yongkang wang. For the following reasons, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Firstly, the Complainant performed searches and found no S.T. DUPONT trademark owned by the Respondent. Furthermore, the Complainant has found no evidence whatsoever that the Respondent is known by the disputed domain name. There is no evidence that the Respondent as an individual, business, or other organization has been commonly known by the disputed domain name before the time of original filing of the Complaint.

Secondly, the Respondent reproduces the Complainant’s trademark S.T. DUPONT in the disputed domain name without any license or authorization from the Complainant, which is strong evidence of the lack of legitimate interest. The Complainant submits that it has not authorized the use of the mark S.T. DUPONT in the disputed domain name in any manner or form.

Thirdly, the Complainant puts forth that the Respondent has not, before the original filing of the Complaint, used or made preparations to use the disputed domain name in relation to a bona fide offering of goods or services. On the contrary, the disputed domain name resolves to an active website containing advertisements as well as pornographic content.

Fourthly, since the adoption and extensive use by the Complainant of the trademark S.T. DUPONT predates by far the registration of the disputed domain name, the Complainant contends that the burden is on the Respondent to establish the rights or legitimate interests the Respondent may have or have had in the disputed domain name. None of the circumstances by which a respondent may prove his rights or legitimate interests in respect of the disputed domain name are present in this case.

In light of all the elements mentioned above, the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name.

The Complainant submits that it has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and that the burden shifts to the Respondent to establish the Respondent’s rights or legitimate interests in the disputed domain name.

The second condition under the Policy should be deemed satisfied.

For the following reasons, the Complainant further submits that the disputed domain name has been registered and is being used in bad faith.

Firstly, the Complainant submits that it is inconceivable that the Respondent was unaware of the Complainant or its earlier rights on the term S.T. DUPONT. Having been founded in 1872, the Complainant submits that its company and trademark enjoy a long-standing reputation. Moreover, a simple search on an online search engine yields results only related to the Complainant. Given the high similarity of the disputed domain name to the Complainant’s trademark, as well as the notoriety of the Complainant, it is clear that, at the very least, the Respondent knew or should have known that, when registering and using the disputed domain name, he would do so in violation of the Complainant’s earlier rights. This statement is reinforced by the use of the terms “haute creation” in the disputed domain name because these terms have been used by the Complainant to designate a high-end line of products.

Secondly, the Complainant submits that it is very likely that the Respondent chose the disputed domain name because of its identity with or similarity to a trademark in which the Complainant has rights and legitimate interests. This was most likely done in the hope and expectation that Internet users searching for the Complainant’s services would instead come across the Respondent’s site. Such a domain name does not provide a legitimate interest nor does it make for a use of the domain name in good faith under the Policy. Quite to the contrary, the Complainant claims that numerous UDRP panels deciding cases under the Policy have held that pornographic content on a respondent’s website is in itself sufficient to support a finding of bad faith, irrespective of the respondent’s motivation (see, e.g., CHRISTIAN DIOR COUTURE v. Paul Farley, WIPO Case No. D2008-0008, and further cases cited there). In addition, the linking of the disputed domain name with a pornographic website might result in the tarnishing of the Complainant’s well-known trademark. See VIVENDI v. Guseva Svetlana, WIPO Case No. D2018-2631.

Thirdly, the Complainant’s S.T. DUPONT trademark registrations significantly predate the registration date of the disputed domain name. In this regard, the Complainant claims that previous UDRP panels have established that knowledge of the Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name, proves bad faith registration (ALSTOM v. Domain Investments LLC, WIPO Case No. D2008-0287, and NBC Universal Inc. v. Szk.com / Michele Dinoia, WIPO Case No. D2007-0077). A quick S.T. DUPONT trademark search would have revealed to the Respondent the existence of the Complainant and its trademarks. The Respondent’s failure to do so is a contributory factor to its bad faith (Lancôme Parfums Et Beaute & Cie, L’Oreal v. 10 Selling, WIPO Case No. D2008-0226).

Fourthly, it is not necessary for the Respondent’s conduct to fall precisely within any of the examples of bad faith registration and use which are set out at paragraph 4(b) of the Policy. These are only examples, and do not limit the circumstances which might constitute bad faith registration and use. In this case, the confusing similarity between the disputed domain name and the Complainant’s trademark, and the pornographic nature of the website, with its tarnishing capacity, are in combination sufficient to conclude that the disputed domain name was registered, and is being used, in bad faith.

The third condition under paragraph 4(a) of the Policy is deemed satisfied.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Preliminary Issue: Language of the Proceeding

In its email transmitted to the Center on December 14, 2021, the Registrar confirmed that the language of the Registration Agreement is Japanese. Following the Registrar’s confirmation, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding on the same day. On December 17, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. Considering the following circumstances, the Panel, exercising its authority to determine the language of the proceeding under paragraph 11(a) of the Rules, has decided English as the language of the proceeding:

- the Complaint was filed in English;

- the Complainant is a French entity, and represented by a French law firm;

- the Respondent’s address is in China;

- English is used in a footnote on the website associated with the disputed domain name;

- the Respondent did not respond to the Center’s communication to the Parties, in English and Japanese, regarding the language of the proceeding;

- the Respondent did not respond to the Complainant’s contentions; and

- ordering the translation of the Complaint would only result in extra delay of the proceeding and additional cost for the Complainant.

6.2. Substantive Issues

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for S.T. DUPONT, which, among others, include Japanese Trademark Registration No. 963049 designating classes 14 and 34, covering smoking-related items made of precious metal, or other materials. The disputed domain name consists of “stdupont”, “haute”, “creation” and a generic Top-Level Domain (“gTLD”), “.com”. The disputed domain name entirely incorporates the Complainant’s trademark S.T. DUPONT and is clearly recognizable therein.

The addition of the terms “haute”, a French word meaning “high”, and “creation”, an English word, does not prevent a finding of confusing similarity with the Complainant’s trademark S.T. DUPONT.

It is well-established that the gTLD “.com” may be disregarded in finding of confusing similarity.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark within the meaning of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The disputed domain name resolves to a website that displays pornographic pictures. The Respondent uses a privacy protection service to conceal its identity. Such a use cannot be considered as a use of the disputed domain name in connection with a bona fide offering of goods and services under paragraph 4(c)(i) of the Policy, nor as a noncommercial or fair use under paragraph 4(c)(iii) of the Policy.

The Respondent’s name, “yongkang wang, wangyongkang” has no similarity to the disputed domain name or the Complainant’s trademark S.T. DUPONT. In addition, as mentioned above, the Respondent conceals its identity by using a privacy protection service. Therefore, the Panel finds that the Respondent has never been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.

In addition, the nature of the disputed domain name, incorporating the Complainant’s trademark in its entirety in addition to terms appearing to be related to a new product line of the Complainant, carries a risk of implied affiliation (section 2.5.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Complainant has put forward a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered almost fifty years after the Complainant’s trademark was registered in Japan on May 17, 1972. In the circumstances of this case, it is inconceivable that the Respondent was not aware of the Complainant’s interest and goodwill in the trademark S.T. DUPONT.

The Complainant has been making luxury goods since its founding in 1872. The products commercialized by the Complainant include handbags, lighters, collectible pens, perfumes, cigarettes, etc.

Du Pont is a French family name. With addition of “S.T.”, however, the Complainant’s trademark, S.T. DUPONT, is now specifically and widely associated with the luxury goods commercialized by the Complainant. In addition, the Complainant recently launched a “Haute Création” line of products, and “hautecreation” is added after “stdupont” in the disputed domain name. It is inconceivable that the addition was accidental. The Panel cannot avoid concluding that the Respondent intentionally added it with the knowledge of the Complainant’s new line of products. Therefore, the Panel concludes that the Respondent intentionally chose the disputed domain name to attract attention of Internet users, getting a free-ride on the goodwill of the Complainant’s trademark. The Panel finds that the disputed domain name was registered in bad faith.

The Respondent uses the disputed domain name to direct Internet users to its website displaying pornographic pictures. The Respondent’s use is obviously an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark S.T. DUPONT as to the source, sponsorship, affiliation, or endorsement of its website. Therefore, the Panel finds that the disputed domain name is being used in bad faith.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <stduponthautecreation.com> be transferred to the Complainant.

Keiji Kondo
Sole Panelist
Date: February 3, 2022