WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nodaleto v. 张丞

Case No. DCN2021-0007

1. The Parties

The Complainant is Nodaleto, France, represented by Cabinet Bouchara, France.

The Respondent is 张丞, China.

2. The Domain Name and Registrar

The disputed domain name <nodaleto.com.cn> is registered with厦门易名科技股份有限公司 (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the following day, 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 verified that the Complaint satisfied the formal requirements of the China ccTLD Dispute Resolution Policy (the “Policy”), the China ccTLD Dispute Resolution Policy Rules (the “Rules”), and the WIPO Supplemental Rules for China ccTLD Dispute Resolution Policy and China ccTLD Dispute Resolution Policy Rules (the “WIPO Supplemental Rules”).

In accordance with the Rules, Articles 5 and 6, and Articles 14 to 16, and the WIPO Supplemental Rules, Paragraph 4(d), the Center formally notified the Respondent in Chinese and English of the Complaint, and the proceedings commenced on April 28, 2021. In accordance with the Rules, Articles 17 and 49, the due date for Response was May 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2021.

The Center appointed Matthew Kennedy as the sole panelist in this matter on June 7, 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, Article 29.

4. Factual Background

The Complainant designs, manufactures and distributes women’s shoes under the brand name “Nodaleto”. The brand name is an anagram of the surname of the Complainant’s CEO and designer, Julia Toledano. The Complainant unveiled its début collection of shoes at Paris Fashion Week on March 1, 2019. The Complainant holds the following trademark registrations for NODALETO and device (the “NODALETO mark”):

- French trademark registration number 4515506, filed and registered on January 15, 2019, specifying footwear and other goods in classes 14 and 25; and

- International trademark registration number 1486516, registered on July 11, 2019, designating multiple jurisdictions, including China, specifying footwear and other goods in classes 14 and 25.

Those trademark registrations remain current. The Complainant registered the domain name <nodaleto.com> on January 16, 2016 and the domain name <nodaleto.shop> on June 29, 2020, both of which it uses in connection with its main website where it offers its shoes for sale. The Complainant’s shoes are also sold at stores in Europe, North America and Asia, including China, and they have been publicized in fashion media around the world.

The Respondent is an individual resident in China.

The disputed domain name was registered on March 8, 2019. It does not resolve to any active website; rather, it is passively held.

5. Parties’ Contentions

A. Complainant

The disputed domain name is strictly identical to the Complainant’s NODALETO mark and domain names.

The Respondent has no rights or legitimate interests in respect of the disputed domain name or a major part of the disputed domain name. The Respondent is not related in any way to the Complainant. The Respondent is not commonly known by the disputed domain name. The disputed domain name is not currently exploited.

The disputed domain name was registered and is being used in bad faith. The NODALETO trademark was already known throughout the world in 2019. A cursory Internet search at the time would have revealed that the Complainant had registered and was using the NODALETO trademark. “Nodaleto” is a contrived word that could not have been chosen randomly. The Respondent has no reasonable explanation for using the NODALETO trademark as part of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

According to Article 6 of the Policy and Article 8 of the Rules, the language of the proceeding shall be Chinese, unless otherwise agreed by the Parties or determined by the Panel in exceptional circumstances. The Complainant has requested that the language of the proceeding be English. Its main arguments are that the Complainant would incur additional cost and delay if it had to translate the Complaint into Chinese, English is not the mother tongue of the Complainant, which does not give an unfair advantage to the Complainant over the Respondent, and that the disputed domain name is registered in Latin characters. The Respondent did not address the language of the proceeding.

In accordance with Article 31 of the Rules, the Panel shall ensure that each Party be treated with equality and given a fair opportunity to present its case. The Panel shall also ensure that the proceedings take place with due expedition. Therefore, when considering the Complainant’s request, the Panel should take into account whether the Respondent is able to understand the language of the Complaint, and whether the Complainant would be disadvantaged by having to translate the Complaint into Chinese. See Laure de Sagazan v. 刘岩, WIPO Case No. DCN2019-0010; Forest Tosara Limited v. 王晓文 (Wang Xiao Wen), WIPO Case No. DCN2019-0008; and NODALETO v. 孟祥东, WIPO Case No. DCN2020-0049.

The Panel observes that the Complaint was filed in English. Despite having received the Notification of the Complaint (including information on the language of the proceeding) and the Written Notice in both Chinese and English, the Respondent has not commented on the language of the proceeding nor expressed any interest in participating otherwise in this proceeding. In these circumstances, the Panel considers that translation of the Complaint into Chinese would create an undue delay, whereas accepting the Complaint in its original language will not cause unfairness to either Party.

Having considered all the circumstances, this Panel determines under Article 6 of the Policy and Article 8 of the Rules that the language of the proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed.

6.2 Substantive Issues

Article 8 of the Policy provides that a complaint against a registered domain name shall be supported if the following conditions are fulfilled:

(a) the disputed domain name is identical with or confusingly similar to the Complainant’s name or mark in which the Complainant has civil rights or interests;

(b) the disputed domain name holder has no rights or legitimate interests in respect of the disputed domain name or major part of the disputed domain name;

Article 7 of the Policy states that the Complainant and the Respondent shall bear the burden of proof for their own claims.

A. Identical or Confusingly Similar to the Complainant’s Name or Mark in which the Complainant has Civil Rights or Interests

Based on the evidence submitted, the Panel finds that the Complainant has civil rights in the NODALETO mark.

The disputed domain name wholly incorporates the non-figurative element of the NODALETO mark. Given that the figurative element of the mark cannot be reflected in a domain name for technical reasons, the Panel will disregard it in the comparison between the disputed domain name and the mark for the purposes of the first element of Article 8 of the Policy.

The only additional element in the disputed domain name is a Second-Level Domain (“SLD”) extension (“.com.cn”). This element is also generally disregarded in the comparison between a domain name and a trademark. See Facebook Technologies, LLC v. 曹丛刚 (Cao Cong Gang), WIPO Case No. DCN2019-0015.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has civil rights. The Complainant has satisfied the first element in Article 8 of the Policy.

B. Rights or Legitimate Interests

Article 10 of the Policy sets out the following circumstances which, without limitation, if found by the panel, may be evidence of the respondent’s rights to, or legitimate interests in, a disputed domain name, for the purposes of Article 8 of the Policy:

(a) the Respondent uses of the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services;

(b) the Respondent has been commonly known by the [disputed] domain name, even if he has acquired no trademark or service mark rights;

(c) the Respondent is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent of or commercial gain to misleadingly divert consumers.

In the present case, the Complainant submits that there is no relationship between the Parties. The Respondent passively holds the disputed domain name. This is not a use of the disputed domain name in connection with a bona fide offering of goods or services within the terms of Article 10(a) of the Policy. Nor is it a legitimate noncommercial or fair use of the disputed domain name within the terms of Article10(c) of the Policy.

The Respondent’s name is listed in the Registrar’s WhoIs database as “张丞”, which may be transcribed as “Zhang Cheng”, not “Nodaleto”. There is no evidence that the Respondent has been commonly known by the disputed domain name within the terms of Article 10(b) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he or she did not respond to the Complainant’s contentions.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in Article 8 of the Policy.

C. Registered or Used in Bad Faith

Article 9 of the Policy provides that certain circumstances may be evidence of the registration or use of a domain name in bad faith. The fourth circumstance is “[o]ther circumstances which may prove the bad faith”.

The disputed domain name was registered on March 8, 2019 during the opposition period subsequent to the date of filing and registration of the Complainant’s French trademark on January 15, 2019. The disputed domain name was registered one week after the Complainant unveiled its début shoe collection at Paris Fashion Week. The disputed domain name incorporates the non-figurative element of the NODALETO mark, adding only an SLD suffix. “Nodaleto” is a coined word, not a dictionary word, being an anagram of the surname of the Complainant’s CEO and designer. The Panel does not believe that all these circumstances were a coincidence. Rather, the Panel finds that the Respondent was aware of the Complainant at the time of registration of the disputed domain name and registered it in anticipation of the Complainant’s nascent rights in the Nodaleto mark.

The Respondent has not made any active use of the disputed domain name in the two years since its registration. The disputed domain name is identical to the Complainant’s prior registered domain name <nodaleto.com>, that it uses in connection with an online store, except for the addition of China’s country code Top-Level Domain extension “.cn”. Despite the Respondent having accepted delivery of the Written Notice in Chinese and English, he or she has not chosen to provide an explanation of any potential good faith use of the disputed domain name or to respond to the Complainant’s contentions.

Given all the circumstances of this case, the Panel is persuaded that the Respondent registered the disputed domain name in bad faith. The Complainant has satisfied the third element in Article 8 of the Policy.

7. Decision

For the foregoing reasons, in accordance with Articles 14 of the Policy and 40 of the Rules, the Panel orders that the disputed domain name <nodaleto.com.cn> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: June 21, 2021