WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mansur Gavriel LLC v. Guan Maoshuang

Case No. D2016-1422

1. The Parties

The Complainant is Mansur Gavriel LLC of New York, New York, United States of America ("United States"), represented by Kelley Drye & Warren, LLP, United States.

The Respondent is Guan Maoshuang of Dalian, Liaoning, China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <mansurgavriel.net> is registered with HiChina Zhicheng Technology Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 13, 2016. On July 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 2016, 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 July 18, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On July 21, 2016, the Complainant requested that English be the language of the proceeding. On July 23, 2016, the Respondent requested that Chinese be the language of the proceeding.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on July 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2016. The Response was filed with the Center on August 3, 2016.

The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on August 12, 2016. 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

A. Complainant

The Complainant is a company incorporated in the United States and the owner of several registrations for the trade mark MANSUR GAVRIEL (the "Trade Mark"), including European Union registration No. 012296737 with a filing date of November 11, 2013 and a registration date of March 24, 2014. The Complainant uses the Trade Mark in relation to its business of selling handbags, wallets and shoes in the United States and in numerous countries worldwide, both via bricks and mortar retail stores, and online.

B. Respondent

The Respondent is an individual located in China.

C. The Disputed Domain Name

The disputed domain name was registered on October 29, 2015.

D. The Website at the Disputed Domain Name

The disputed domain name is resolved to a website in Chinese and English which contains images of what appear to be the Complainant's handbags, uses the same font used by the Complainant on the Complainant's official website "www.mansurgavriel.com" (the "Complainant's Website"), and which offers for sale what the Complainant believes are counterfeit MANSUR GAVRIEL handbags, under the heading "MANSUR GAVRIEL官方网站/MANSUR GAVRIEL official website" (the "Respondent's Website").

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent contends that the disputed domain name is not confusingly similar or identical to the Trade Mark, the Respondent has rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was not registered and is not being used in bad faith.

6. Discussion and Findings

6.1 Language of the Proceeding

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 unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.

Paragraph 11(a) of the Rules 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 order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.

The Complainant has requested that English be the language of the proceeding and contends that the Respondent is proficient in the English language, as the Respondent's Website is in both English and Chinese language. The Complainant also contends that translating the Complaint would cause substantial additional expense and delay.

The Respondent has requested that Chinese be the language of the proceeding, in accordance with the Policy and the Registration Agreement, and contends further that Chinese should be the language of the proceeding as the disputed domain name has been registered and used in China, using a Chinese Registrar.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs.

The Panel finds that the English language version of the Respondent's Website (which includes, by way of example, detailed English language terms and conditions) provides sufficient evidence to suggest the likely possibility that the Respondent is conversant in English. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.

In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should the Decision be rendered in English.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:

(1). It will accept the filings herein on behalf of the Complainant in English;

(2). It will accept the filings herein on behalf of the Respondent in Chinese; and

(3). It will render this Decision in English.

6.2 Substantive Elements of the Policy

The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.

The disputed domain name comprises the Trade Mark in its entirety.

The Respondent contends that, as the Complainant has not registered the Trade Mark in China, the disputed domain name does not infringe any trade mark rights in China. Whether or not this is the case is irrelevant for the purposes of the first element under paragraph 4(a) of the Policy.

The Panel therefore finds that the disputed domain name is identical to the Trade Mark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to the respondent 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 (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent 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.

The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.

The Respondent has failed to show that he or she has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the Respondent's Website, which, without the Complainant's authorisation, promotes and offers for sale what appear to be copies of the Complainant's handbags under the false banner "MANSUR GAVRIEL official website".

The Respondent has not addressed in the Response the Complainant's allegations regarding counterfeit goods, nor has the Respondent addressed the allegations that the Respondent's Website copies the look and feel of the Complainant's Website. The Respondent asserts rights or legitimate interests in the disputed domain name as the disputed domain name has been registered legally using the correct formal channels. The Respondent has not otherwise adduced any evidence or made any submissions to demonstrate any rights or legitimate interests.

Even if the goods offered for sale on the Respondent's Website are not counterfeit goods, the manner in which the disputed domain name (which is identical to the Trade Mark) has been used, by copying the look and feel of the Complainant's Website, in order to offer for sale handbags which appear to be copies of the Complainant's handbags, in direct competition with the Complainant, and under the false banner "MANSUR GAVRIEL官方网站/MANSUR GAVRIEL official website", cannot possibly give rise to any rights or legitimate interests.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.

There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant's prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

In light of the evidence of the Respondent's use of the Respondent's Website in the manner described above, the Panel finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.

For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.

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 <mansurgavriel.net> be transferred to the Complainant.

Sebastian M.W. Hughes
Sole Panelist
Dated: August 26, 2016