WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MAJE S.A.S. v. Zhangwei

Case No. D2015-1032

1. The Parties

The Complainant is MAJE S.A.S. of Paris, France, represented by Nameshield, France.

The Respondent is Zhangwei of Yangzhou, Jiangsu, China.

2. The Domain Name and Registrar

The disputed domain name <wwwmaje.com> is registered with Hangzhou AiMing Network Co., LTD (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2015. On June 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 2015, 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.

On June 19, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On June 23, 2015, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center verified that 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 in both Chinese and English, and the proceeding commenced on July 3, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2015.

The Center appointed Sok Ling MOI as the sole panelist in this matter on July 31, 2015. 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 fashion brand of ready-to-wear clothes and accessories with stores in many countries around the world.

The Complainant is the owner of several trade mark registrations for the trade mark MAJE worldwide, including the following:

The Complainant owns a portfolio of domain names incorporating the trade mark MAJE, including the following:

The disputed domain name <wwwmaje.com> was registered on May 1, 2015, long after the Complainant has registered the trade mark MAJE in France. According to the evidence provided by the Complainant and at the date of this decision, the disputed domain name resolves to a parking page with commercial links relating to fashion wear.

5. Parties’ Contentions

A. Complainant

The MAJE brand was created in Paris in 1998 and there are currently almost 200 stores around the world. A Google search on “maje” displays results all of which relate to the Complainant.

A1. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:

The disputed domain name is confusingly similar to the Complainant’s trade mark MAJE. The addition of the letters “www” and the generic Top-Level Domain (“gTLD”) “.com” does not prevent the confusing similarity between the disputed domain name and the Complainant, its trade mark and its domain names.

A2. The Respondent has no rights or legitimate interests in respect of the disputed domain name:

The Respondent is not in any way related to the Complainant. The Complainant has not given any licence or authorization to the Respondent to use or apply for registration of the disputed domain name.

The disputed domain name points to a parking page with commercial links “in relation to the Complainant”.

A3. The disputed domain name was registered and is being used in bad faith:

The disputed domain name includes the Complainant’s well-known trade mark MAJE. It consists of a common typographical mistake made by Internet users who are seeking to visit the Complainant’s official website at “www.maje.com”, namely by missing out on a “dot” between the world wide web prefix “www” and the domain name “maje.com”. This is an act of “typosquatting” which strongly suggests bad faith registration. Prior UDRP panels have held that registering a domain name that is a common misspelling of a mark in which another party has rights can be recognised as evidence of bad faith registration per se.

The Respondent is intentionally using the disputed domain name to divert Internet users to the Respondent’s parking website. Previous UDRP panels have considered such use is strong evidence of bad faith use.

For all of the above reasons, the Complainant requests the transfer 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

Pursuant to paragraph 11(a) 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.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their respective case.

The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding for the following reasons:

(a) English is the language most widely used in international relations and is one of the working languages of the Centre.

(b) The disputed domain name resolves to a website with content (with commercial links) in English. The Respondent is presumed to have knowledge of the English.

(c) If the proceeding were to proceed in the Chinese, the Complainant would have to retain specialized translation services at a cost very likely to be higher than the overall cost of these proceeding. Proceeding in Chinese in this case would therefore impose a burden on the Complainant which must be deemed significant in view of the low cost of the proceeding.

(d) the Centre has notified the Respondent of the proceeding in Chinese and afforded the Respondent the opportunity to respond to the issue and to file a Response in Chinese.

The Panel agrees that requesting the Complaint and all supporting documents to be re-filed in Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantage the Complainant. The proceeding would also be unnecessarily delayed. The Panel accepts the above-stated reasons provided by the Complainant and would add two other reasons: First, the disputed domain name <wwwmaje.com> is registered in Latin characters, rather than Chinese script; secondly, the Panel notes that the Respondent has registered other domain names consisting of Latin characters, for example <wwweasyclass.com>, <victoriapump.com>, <themoneywork.com>, <wwweachbuyer.com> and <amazinacademy.com>, based on a reverse WhoIs lookup which the Panel independently conducted. The Panel therefore finds persuasive evidence to suggest that the Respondent has sufficient knowledge of English, despite being a Chinese individual resident in China.

Considering the above circumstances and noting that the Respondent has not objected to the Complainant’s request, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; and (ii) English shall be the language of the proceeding and the decision will be rendered in English.

6.2 Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(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.

On the basis of the evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in MAJE by virtue of its use and registration worldwide of the same as a trade mark.

The disputed domain name incorporates the Complainant’s trade mark MAJE in its entirety, and differs only by the addition of the letters “www” before the trade mark. The trade mark MAJE is clearly identifiable and is the prominent element of the disputed domain name. The Panel accepts the Complainant’s argument that “wwwmaje.com” is a common misspelling of the URL of the Complainant’s website “www.maje.com”. The consensus view of previous UDRP panels is that a domain name which contains a common or obvious misspelling of a trade mark will normally be found to be confusingly similar to such trade mark, where the misspelled trade mark remains the dominant or principal component of the domain name. The Panel agrees with this consensus view and finds the disputed domain name to be confusingly similar to the Complainant’s trade mark.

The addition of the gTLD “.com” does not impact on the confusing similarity analysis.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii), the burden shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd, WIPO Case No. D2013-0974.)

The Complainant has confirmed that the Respondent is not in any way related to or affiliated with the Complainant or otherwise authorized or licensed to use the MAJE trade mark or to seek registration of any domain name incorporating the trade mark.

The disputed domain name resolves to an active website which appears to be a parking page with commercial links presumably to fashion wear, two of which links are entitled “Sandro Maje” and “Maje Paris”. The consensus view of previous UDRP panels is that use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name. This is especially so where such links result in a connection to goods or services competitive with those of the Complainant.

The Panel notes a disclaimer on the parking page stating that “the sponsored listings displayed above are served automatically by a third party”. This is a system inherently likely to result in the display of sponsored links in the field of commercial activity of a company whose mark corresponds to the domain name, including links to that company’s competitors. Such use of the disputed domain name is neither legitimate nor fair. As discussed below, the Respondent is deemed responsible for the content that appears at the disputed domain name.

The Panel is therefore satisfied that the Complainant has made out a prima facie caseshowing that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has however failed to respond.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or location or of a product.

The Panel accepts the Complainant’s argument that “wwwmaje.com” is a common misspelling of the URL of the Complainant’s website “www.maje.com”. Internet users attempting to enter the address for the Complainant’s website in a browser and making a minor typographical error will be diverted to the Respondent’s website which contains automatically generated commercial links to fashion wear content carrying, among others, the Complainant’s competitors’ brands (such as “Longchamp” and “Desigual”).

The consensus view of previous UDRP panels is that a domain name registrant is normally deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an “automatically” generated basis.

The Panel notes the presumption that the Respondent or a third party stands to profit or make a “commercial gain” from advertising revenue by such an arrangement trading on third party trade marks. In the Panel’s opinion, such links clearly seek to capitalise on the trade mark value of the Complainant’s MAJE mark resulting in misleading diversion.

Furthermore, the Panel is satisfied that the Respondent is engaged in a pattern of cybersquatting, based on a reverse WhoIs look up independently conducted by the Panel on the email address of the Respondent. The results show that the Respondent has registered a number of domain names comprising mis-spellings of known trade marks, such as <vicyoriassecret.com>, <wwwbluesmart.com>, <verizonwilreless.com> and <etudhouse.com>.

The Panel therefore determines that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. A such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

Lastly, the Panel notes that efforts to contact the Respondent at the physical address provided to the Registrar failed which suggests that the Respondent had provided false contact details.

Taking into account all other relevant circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 <wwwmaje.com> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: August 26, 2015