Complainant is Yves Saint Laurent of Paris, France, represented by IP Twins S.A.S., France.
Respondent is Roxanna Devlin/Alexandra Schutti of China.
The disputed domain names <ysloutletfrance.com> and <yvesaintlaurentysl.com> are registered with Xin Net Technology Corp. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 22, 2015. On September 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 23, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On September 28, 2015, the Center sent a deficiency notice to the parties noting that the Complaint was not signed by Complainant and asking Complainant to amend the Complaint. Complainant filed an amended Complaint on September 28, 2015.
On September 28, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On September 28, 2015, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.
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 Respondent of the Complaint, and the proceedings commenced on October 8, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 29, 2015.
The Center appointed Yijun Tian as the sole panelist in this matter on November 9, 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.
Complainant, Yves Saint Laurent, is a company incorporated in Paris, France. It is a French luxury fashion house founded by Yves Saint Laurent and his partner, Pierre Bergé in 1961. It is one of the most prominent fashion houses in the world.
Complainant has exclusive rights in multiple trademarks including YVES SAINT LAURENT, YSL YVES SAINT LAURENT and YSL (YSL Marks) since 1966. Complainant is the exclusive owner of the well-known registered YSL Mark globally since 1966 (Annex 5 to the Complaint). Complainant also owns numerous domain names which contain YSL Marks, such as <ysl.eu>, <ysl.info> and <yvessaintlaurent.com>.
Respondent is Roxanna Devlin. The Panel finds Alexandra Schutti to be an alter ego of Roxanna Devlin; noting the disputed domain names were registered within days of each other, using the same registrar, using the same email address.
The disputed domain names <ysloutletfrance.com> and <yvesaintlaurentysl.com> were registered on November 14, 2013 and November 23, 2013 respectively, which are long after the YSL Marks were registered.
Complainant contends that the disputed domain names <yvesaintlaurentysl.com> and <ysloutletfrance.com> are identical or confusingly similar to the YSL Marks in which Complainant has rights.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant contends that the disputed domain names were registered and is being used in bad faith.
Complainant requests that the disputed domain names <yvesaintlaurentysl.com> and <ysloutletfrance.com> be transferred to it.
Respondent did not reply to Complainant's contentions.
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) The website resolved by the disputed domain name <yvesaintlaurentysl.com> is in Italian. However, the owner of the disputed domain names is undoubtedly able to understand English (Annex 4 to the Complaint).
(b) Respondent (498756@gmail.com) is associated with the owner contact of many other domain names, such as <myshoes.us> and <louboutinonlinesale.com>. All of the websites associated with these domain names are similar to the website associated with the disputed domain name and appear to be selling counterfeit fashion products. Those websites all use English language.
(c) Complainant is not able to communicate in Italian. Being a French entity, Complainant is not in position to conduct these proceedings in Italian without a great deal of additional expense and delay due to the need for translation of the Complaint.
(d) English language is not the native language of Complainant or its representative, therefore it would not give him unfair advantage over Respondent. Therefore, Complainant deems it fair to both parties to conduct the proceeding in English.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006‑0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") further states:
"in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement" (WIPO Overview 2.0, paragraph 4.3; see also L'Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company from France, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the websites at the disputed domain names <yvesaintlaurentysl.com> and <ysloutletfrance.com> include Latin characters 'yve saint laurent', 'ysl' and the English words "outlet" and "france" respectively (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
On the record, the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain names <yvesaintlaurentysl.com> and <ysloutletfrance.com> all registered in Latin characters and particularly in English language, rather than in Chinese script; (b) The website resolved by the disputed domain name <yvesaintlaurentysl.com> is an Italian website rather than a Chinese website. And the payment method options at the top-right of the homepage contain English words such as "GB Pound", "Australian Dollar" and "Canadian Dollar"; (c) the website resolved by <yvesaintlaurentysl.com> appears to have been directed to users worldwide, including English speakers; (d) According to Complainant, Respondent (498756@gmail.com) is associated with the owner contact of many other domain names, such as <myshoes.us> and <louboutinonlinesale.com>. Those websites all use English language; (e) the Center has notified Respondent of the proceeding in both Chinese and English; (f) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, 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 English shall be the language of the proceeding, and the decision will be rendered in English.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) the disputed domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
The Panel finds that Complainant has rights in the YSL Marks acquired through registration. The YSL Marks have been registered worldwide since 1966, and Complainant has a widespread reputation as one of the most prominent fashion houses in the world.
The disputed domain name <yvesaintlaurentysl.com> comprises the YVES SAINT LAURENT Mark and YSL Mark in its entirety. The disputed domain name simply connects YVES SAINT LAURENT Mark and YSL Mark. This does not eliminate the identity or at least the confusing similarity between Complainant's registered trademark and the disputed domain name.
The disputed domain name <ysloutletfrance.com> contains YSL Mark in its entirety.
The disputed domain names only differ from Complainant's trademark by the addition of the English words "outlet" and "france". This does not eliminate the identity or at least the confusing similarity between Complainant's registered trademark and the disputed domain name.
Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy "when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
Generally a respondent "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it" (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087).
The addition of the descriptive terms "outlet" and "france" as a suffix(s) to Complainant's mark fails to distinguish to this Panel the disputed domain names from Complainant's trademark. By contrast, it may increase the likelihood of confusion. Moreover, Complainant is one of the most prominent fashion houses in the world (as mentioned above). Internet users who visit Respondent's website are likely to be confused and may falsely believe that the disputed domain names <yvesaintlaurentysl.com> and <ysloutletfrance.com> are operated by Complainant for providing YSL-branded products or services.
Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain names and the YSL Marks.
The Panel therefore holds that the Complaint fulfils the first element of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain names:
(i) use of, or preparations to use, the disputed domain names in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has commonly been known by the disputed domain names; or
(iii) legitimate noncommercial or fair use of the disputed domain names.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant's contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the YSL Mark globally since 1966. According to Complainant, it is a famous French luxury fashion house and one of the most prominent fashion houses in the world.
Moreover, Respondent is not an authorized dealer of YSL branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain names in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the words "yves saint laurent" or "ysl" in its business operation or the use of the YSL Marks and design on its website (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the YSL Mark or to apply for or use any domain name incorporating the YSL Mark;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain names. The disputed domain names <ysloutletfrance.com> and <yvesaintlaurentysl.com> were registered on November 14, 2013 and November 23, 2013 respectively, which are long after the YSL Marks became widely known. The disputed domain names are identical or confusingly similar to Complainant's YSL Mark.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was advertising and offering purported YSL products and services at <yvesaintlaurentysl.com>.
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain names. The Panel therefore holds also taking into consideration the Panel's findings below, that Complainant has established the second element of paragraph 4(a) of the Policy.
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 Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain names; or
(ii) Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites or location or of a product or service on Respondent's websites or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.
The Panel finds that Complainant has a widespread reputation in the YSL Marks with regard to its products or services. Complainant has registered its YSL Marks internationally. Moreover, the website at the disputed domain name <yvesaintlaurentysl.com> advertises for sale various purported YSL products or services.
Respondent would likely not have advertised products or services purporting to be YSL products or services on the website if it was unaware of YSL's reputation. In other words, it is not conceivable that Respondent would not have had actual notice of Complainant's trademark rights at the time of the registration of the disputed domain names.
The Panel therefore finds that the YSL Mark is not a mark that a trader would randomly adopt for the purpose other than to creat an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Thus, the Panel concludes that the disputed domain names were registered in bad faith with the intent to create an impression of an association with Complainant's YSL-branded products or services.
Complainant has adduced evidence to prove that by using the disputed domain names, Respondent has "intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites" purportedly offering Complainant's YSL-branded products and services without authorization.
To establish an "intention for commercial gain" for the purpose of this Policy, evidence is required to indicate that it is "more likely than not" that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, supra).
Given the widespread reputation of the YSL Marks (as well as the content on Respondent's website at <yvesaintlaurentysl.com> mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain names have a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain names resolve. In other words, Respondent has through the use of the disputed domain names created a likelihood of confusion with the YSL Marks. Noting also that apparently no clarification as to Respondent's relationship to Complainant is made on the homepage of the disputed domain names, potential Internet users are led to believe that the website at <yvesaintlaurentysl.com> is either Complainant's site or the site of an official authorized agent of Complainant, which is not the case.
The Panel therefore concludes that the disputed domain name <yvesaintlaurentysl.com> is being used by Respondent in bad faith.
Regarding the disputed domain name <ysloutletfrance.com>, at the time this decision is rendered, the disputed domain name is currently inactive. In terms of inactive domain name, the WIPO Overview 2.0 provides: "with comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith" (paragraph 3.2., WIPO Overview 2.0). The WIPO Overview 2.0 further states: "The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the disputed domain name was used in bad faith given the circumstances surrounding registration, and vice versa."
Based on information provided by Complainant, founded in 1961, Complainant has been one of the most prominent fashion houses in the world for many years. Complainant has rights in the YSL Marks globally since 1966. As such, Complainant's YSL Marks, arguably, are widely known. Taking into account all the circumstances of this case, the Panel concludes that the passively held disputed domain name <ysloutletfrance.com> is used by Respondents in bad faith also.
In summary, Respondent, by choosing to register and use the disputed domain names, intended to ride on the goodwill of Complainant's trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain names and the conduct of Respondent as far as the website to which the disputed domain names resolve is indicative of registration and use of the disputed domain names in bad faith.
The Panel therefore holds that the Complaint fulfils the third element of paragraph 4(a) of the Policy.
For all 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 <ysloutletfrance.com> and <yvesaintlaurentysl.com> be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: December 1, 2015