WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Paul's Boutique Limited v. Fulongyang, longyang fu, Fundacion Private Whois, fu longyang, Zhang Qianqian, Cheng Mingsheng

Case No. D2013-0029

1. The Parties

The Complainant is Paul's Boutique Limited of Croydon, Surrey, United Kingdom of Great Britain and Northern Ireland, represented by Rouse Legal, United Kingdom of Great Britain and Northern Ireland.

The Respondents are Fulongyang, longyang fu, fu longyang, Zhang Qianqian, Cheng Mingsheng of China, and Fundacion Private Whois of Panama.

2. The Domain Names and Registrars

The Disputed Domain Name <paulsboutique-bag.com> is registered with Shanghai Yovole Networks, Inc.

The Disputed Domain Name <paulsboutique-bag.net> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.

The Disputed Domain Name <paulsboutiquebag.net> is registered with GoDaddy.com, LLC.

The Disputed Domain Names <paulsboutique-bags.com> and <paulsboutique-bags.net> are registered with Internet.bs Corp.

The Disputed Domain Dame <paulsboutiquestore.com> is registered with Bizcn.com, Inc.

The Disputed Domain Name <paulsboutique-uk.com> is registered with HiChina Zhicheng Technology Ltd. (all the registrars are herein referred to as the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2013. On January 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On January 8, 9, 10, 2013, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for some of the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 11, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On January 11, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. The Complainant filed an amendment to the Complaint incorporating the disclosed registrant information and a request that English be the language of proceedings on January 14, 2013. The Respondent did not comment on the language of proceedings by the specified due date.

The Center verified that the Complaint together with the amendment to the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2013.

The Center appointed Kar Liang Soh as the sole panelist in this matter on March 13, 2013. 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 was incorporated in 2002 and is in the business of manufacturing and sale of women’s fashion products, including clothing, bags, accessories, jewellery and fragrances. All its products are sold under the trademark PAUL’S BOUTIQUE. The popularity of the Complainant’s products has been growing. The products have also become popular with celebrities. The Complainant’s products are sold in the United Kingdom, Europe, the Middle East and Asia and distributed exclusively to authorized distributors. The Complainant’s handbags are not available for general purchase outside this distribution route.

The Complainant has registered the trademark PAUL’S BOUTIQUE in multiple jurisdictions, including the following:

Jurisdiction Trademark Number Registration Date

United Kingdom 2512849 July 17, 2009

United Kingdom 2348477 April 2, 2004

European Union 8877921 August 2, 2010

European Union 8719189 August 31, 2011

WIPO International Registration 1023028 September 15, 2009 (China designation)

WIPO International Registration 1072780 February 7, 2011 (China designation)

The Complainant has also registered various domain names including <pauls-boutique.com>, <pauls-boutique.de>, <pauls-boutique.it>, <paults-boutique.es>, <pauls-boutique.fr>, <paulsboutiqueuk.co.uk>, <pauls-boutique.com.au>, <pauls-boutique.ae> and <pauls-boutique.qa>. The Complainant operates a website resolved from <pauls-boutique.com>. The Device and the word PAUL’S BOUTIQUE feature prominently on the Complainant’s website.

The Disputed Domain Names were all registered between February 20, 2012 and September 10, 2012. The Disputed Domain Names each took turns to host an identical website when take-down action was pursued by the Complainant. The website prominently featured the words “Paul’s Boutique” and the Logo with each letter depicted in different colours. Handbags associated with the trademark PAUL’S BOUTIQUE and the Logo were offered for sale online and the Complainant’s attempt to secure a trap purchase from the website led to a successful transaction but delivery of a differently branded handbag. The Complainant came to know of the Disputed Domain Names following a report by a customer who was in communication with someone via contact details provided on the website resolved from <paulsboutique-bag.com>.

The registrant associated with each of the Disputed Domain Names had details (other than for the WhoIs details of <paulsboutique-bags.com> and <paulsboutique-bags.net>) which were not identical. Beyond the WhoIs details, little is known about the registrants. In view of the consolidation of all the Disputed Domain Names under this proceeding (see Section 6.1 below), for ease of reference, the Panel shall refer to the registrants collectively as the “Respondent”, unless the context indicates otherwise.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

1) The Disputed Domain Names are confusingly similar to the trademark PAUL’S BOUTIQUE. Each of the Disputed Domain Names contains the trademark PAUL’S BOUTIQUE in its entirety. The addition of components “bag” and “store” are devoid of any distinctive character and are entirely generic with respect to the online sale of handbags. These are not sufficient to dispel the confusing similarity;

2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Respondent is not commonly known by the Disputed Domain Names and have no connection to the name PAUL’S BOUTIQUE. The Complainant has not at any time authorized, licensed, or given its consent to the Respondent to use the trademark PAUL’S BOUTIQUE as part of the Disputed Domain Names. The Disputed Domain Names are not being used in connection with a bona fide offering of goods or services. The products offered for sale on the websites resolved from the Disputed Domain Names are counterfeits; and

3) The Disputed Domain Names were registered and are being used in bad faith. The Respondent knew or should have known about the existence of the trademark PAUL’S BOUTIQUE, particularly since the Disputed Domain Names were registered to sell counterfeit products. The registration and use of the Disputed Domain Names is to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the trademark PAUL’S BOUTIQUE as to the source, affiliation and/or endorsement of the websites and of the products for sale on the website.

B. Respondent

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

6. Discussion and Findings

6.1. Consolidation of Proceeding

The Panel is empowered by paragraph 3(c) of the Rules to consolidate multiple domain names in a single complaint on the basis that the domain names are registered by the same domain name holder. Past UDRP panels have clarified that paragraph 3(c) extends to consolidation of domain names registered by the same person using different fictitious names or aliases (e.g., Yahoo!, Inc v Somsak Sooksripanich and Others, WIPO Case No. D2000-1461; Amazon.com, Inc. v. Lorna Kang a/k/a Yong Li a/k/a Mahmoud Nadim a/k/a The Data in Bulkregister.com’s WHOIS Database is p a/k/a Amjad Kausar, WIPO Case No. D2005-0635).

The Complainant alleged that the Disputed Domain Names are controlled by a single unknown owner/registrant. Having reviewed the evidence, the Panel is of the view that the Complainant has established a prima facie case that the Disputed Domain Names are held by the same person. The Panel has noted, in particular that:

1) The Disputed Domain Names <paulsboutique-bag.com>, <paulsboutiquebag.net>, <paulsboutique-bags.com> and <paulsboutique-uk.com> are associated with the registrant name “fulongyang” or variations thereof (e.g., “longyang fu”, “fu longyang”);

2) The Disputed Domain Names <paulsboutiquebag.net>, <paulsboutique-bags.com> and <paulsboutiquestore.com> are associated with the same 8-digit telephone number;

3) The Disputed Domain Names <paulsboutique-bags.com> and <paulsboutique-bags.net> were associated with the same WhoIs registrant details;

4) The identical web-content was, in correspondence with the Complainant’s take-down action, methodically moved from the Disputed Domain Name <paulsboutique-bag.com> to the Disputed Domain Name <paulsboutiquebag.net> to <paulsboutique-bags.co.uk> (not part of this proceeding) to Disputed Domain Name <paulsboutique-bags.com> to Disputed Domain Name <paulsboutique-bags.net> to Disputed Domain Name <paulsboutiquestore.com> to Disputed Domain Name <paulsboutique-bag.net>;

5) Registrant contact details associated with of the Disputed Domain Name <paulsboutique-bag.com> were obviously fictitious; and

6) The lack of any response from or denial by the Respondent to the clearly serious allegation that the Disputed Domain Names are registered by the same person using fictitious names and details.

In view of the above, the Panel determines that the Disputed Domain Names <paulsboutique-bag.com>, <paulsboutiquebag.net>, <paulsboutique-bags.com>, <paulsboutique-bags.net>, <paulsboutique-uk.com>, <paulsboutiquestore.com> and <paulsboutique-bag.net> shall be consolidated under this proceeding in accordance with paragraph 3(c).

6.2. Language of Proceeding

The Complainant has requested that English be adopted as the language of the proceeding.

The language of the registration agreements for <paulsboutique-bag.com>, <paulsboutique-uk.com>, <paulsboutiquestore.com> and <paulsboutique-bag.net> is Chinese. On the other hand, the language of the registration agreements for <paulsboutiquebag.net>, <paulsboutique-bags.com> and <paulsboutique-bags.net> is English. Although the default language of proceeding for some of the Disputed Domain Names would have been Chinese, the Panel having considered the circumstances hereby determines that English shall be the language of this proceeding. The Panel was led to this conclusion by reason of the following factors:

1) The Complainant is unable to communicate in Chinese. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;

2) The evidence demonstrates the Respondent’s ability to communicate in English. The websites resolved from the Disputed Domain Names were entirely in English. The Respondent and/or the Respondent’s representative communicated with a customer of the Complainant in intelligible English via email;

3) The Respondent did not object to the Complainant’s request for English to be the language of the proceeding; and

4) The Complainant has already been submitted in English without a Response having been filed. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.

6.3. Discussion

To succeed in this proceeding, the Complainant must establish all three limbs of paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The first limb of paragraph 4(a) requires the Complainant to show that each Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.

The Complainant has registered the trademark PAUL’S BOUTIQUE and there can be no doubt that the Complainant has rights in the same. Each of the Disputed Domain Names incorporates the words “Paul’s Boutique” entirely. The only difference between the Disputed Domain Names and the trademark PAUL’S BOUTIQUE are descriptive suffixes like “bag”, “bags”, “store” and “uk”. The Panel is of the view that none of these suffixes are distinctive in any manner which assists to distinguish any of the Disputed Domain Names from the trademark PAUL’S BOUTIQUE. As such, the Panel holds that each of the Disputed Domain Names is confusingly similar to the trademark PAUL’S BOUTIQUE in accordance with the first limb of paragraph 4(a).

B. Rights or Legitimate Interests

The Panel accepts the Complainant’s submission that the Complainant has not at any time authorized, licensed, or given its consent to the Respondent to use the trademark PAUL’S BOUTIQUE as part of the Disputed Domain Names. There is also no evidence to suggest that the Respondent is commonly known by any of the Disputed Domain Names. The offering of handbags for sale on the websites resolved from the Disputed Domain Names counters any suggestion that the Disputed Domain Names were being put to bona fide noncommercial use. In the circumstances, the Panel is of the view that the Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in any of the Disputed Domain Names. Since no Response was filed, the prima facie case stands.

C. Registered and Used in Bad Faith

The Panel has no doubt that the Respondent was aware of the trademark PAUL’S BOUTIQUE. The prominent use of the Logo and the words “Paul’s Boutique” on the websites resolved from the Disputed Domain Names leaves little doubt of this. Any other explanation is inconceivable. Of importance is the methodic shifting target that the Respondent has made of the website first resolved from one then each of the Disputed Domain Names in turn. Such behavior is inconsistent with a bona fide registration and/or use.

Paragraph 4(b)(iv) of the Policy highlights a common example of bad faith registration and use whereby a registrant intentionally attempts to attract, for commercial gain, Internet users to the registrant’s website by creating a likelihood of confusion with a trademark as to the source, affiliation and/or endorsement of the websites and of the products for sale on the website. The current circumstances fall squarely within the situation outlined in paragraph 4(b)(iv). The online sale of products on the websites resolved from the Disputed Domain Names can only have commercial gain as an objective. The blatant use of the trademark PAUL’S BOUTIQUE and the Logo on the websites speaks loudly of the intention to attract Internet users to the websites by creating a likelihood of confusion as to source, affiliation and endorsement of the website and the products offered for sale thereon.

Based on the above, the Panel holds that the evidence supports a finding of bad faith registration and use of all the Disputed Domain Names.

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 Names <paulsboutique-bag.com>, <paulsboutique-bag.net>, <paulsboutiquebag.net>, <paulsboutique-bags.com>, <paulsboutique-bags.net>, <paulsboutiquestore.com>, <paulsboutique-uk.com> be transferred to the Complainant.

Kar Liang Soh
Sole Panelist
Date: April 11, 2013