WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

B. Forever v. Wen Shuhui (温树辉)

Case No. D2020-0782

1. The Parties

The Complainant is B. Forever, France, represented by Cabinet Atlan & Boksenbaum Avocats, France.

The Respondent is Wen Shuhui (温树辉), China.

2. The Domain Name and Registrar

The disputed domain name <agnesbonline.com> is registered with Xiamen ChinaSource Internet Service Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2020. On April 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 8, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 10, 2020.

On April 8, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On April 10, 2020, the Complainant requested that English be the language of the proceeding, at the same time, provided the Center with a translated Complaint in Chinese. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amended Complaint and the translated 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 in English and Chinese of the Complaint, and the proceedings commenced on April 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2020.

The Center appointed Sok Ling MOI as the sole panelist in this matter on May 20, 2020. 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, through its exclusive licensee CMC, creates, manufactures and distributes various men’s and women’s ready-to-wear clothing and accessories under the AGNES B. brand. CMC commercialises these products through a wide network of high-end points of sale and on the official website “www.agnesb.eu” it operates.

The Complainant is the proprietor of several trade mark registrations worldwide for AGNES B., including the following:

The Complainant is also the registered proprietor of <agnesb.eu> (registered since April 10, 2006), and CMC maintains an online retail business at the website connected to this domain name.

The disputed domain name <agnesbonline.com> was registered by the Respondent on March 10, 2020. According to the evidence submitted by the Complainant, the disputed domain name resolves to a website which reproduces the Complainant’s AGNES B. trade mark and copyrighted images, and purports to offer for sale the Complainant’s branded clothing and accessory products.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar or identical to its trade mark.

The Complainant contends that the Respondent’s use of the disputed domain name to publish a replica website purportedly offering for sale identical or similar goods to those offered by the Complainant, unfairly takes advantage of the Complainant’s reputation and goodwill. The Complainant claims that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Complainant contends that the disputed domain name was registered primarily for the purpose of disrupting the Complainant’s business and is used to tarnish the AGNES B. trade mark as well as to create confusion and mislead Internet users into believing that the Respondent’s website is authorised by the Complainant. The Complainant alleges that the goods offered for sale by the Respondent on its website are counterfeits. The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith.

For all of the above reasons, the Complainant requests for the transfer of the disputed domain name to the Complainant.

B. Respondent

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

6. Discussion and Findings

6.1. Formality Issues – 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 equitably and given a fair opportunity to present their respective cases.

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 both English and Chinese, but has requested that English be the language of the proceeding.

The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain name is registered in Latin characters, rather than Chinese script;

(b) the disputed domain name comprises the English word “online”; and

(c) according to the evidence submitted by the Complainant, the contents of the website to which the disputed domain name resolves are entirely in English.

Additionally, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Chinese and English;

(b) the Respondent has been given the opportunity to present their case in this proceeding and to respond to the issue of the language of the proceeding but chose not to do so;

(c) the Complainant has submitted a translated Complaint in Chinese; and

(d) Center has informed the Respondent that it would accept a Response in either English or Chinese.

Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to all Parties and is not prejudicial to any of the Parties in their ability to articulate the arguments for this case.

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

6.2. Substantive Issues – Findings

Paragraph 4(a) of the Policy directs that a 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 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 arguments and evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

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

The disputed domain name incorporates the Complainant’s AGNES B trade mark in its entirety as a recognizable component. The addition of the English word “online” does nothing to eliminate the confusing similarity between the disputed domain name and the Complainant’s trade mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not impact the analysis of whether the dispute domain name is identical or confusingly similar to the Complainant’s trade mark in this case.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.

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, a 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) of the Policy, the burden of production 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 authorized or licensed to use the AGNES B. trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “agnes” or “agnes b”.

According to the evidence submitted by the Complainant, the Respondent is using the disputed domain name to publish a website, which reproduces the Complainant’s AGNES B. trade mark and copyrighted images, and purports to offer for sale the Complainant’s clothing and accessory products, without disclosing the Respondent’s relationship with the Complainant (or lack thereof). This suggests that the Respondent is using the disputed domain name to mislead Internet visitors by creating an affiliation with the Complainant where there is none.

The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name. Since the Respondent has failed to respond, the prima facie case has not been rebutted.

Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

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 registration 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 website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The AGNES B. trade mark has been used and registered for more than 30 years, and enjoys an international reputation for its clothing and accessory products. There is no doubt that the Respondent was aware of the Complainant’s trade mark when it registered the disputed domain name given that it has reproduced the Complainant’s AGNES B. trade mark and copyrighted images, and purports to offer for sale the Complainant’s clothing and accessory products on its website. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith.

The Panel accepts the Complainant’s contention that the Respondent is seeking to create an impression that its website is the Complainant’s official website. Irrespective of whether the goods offered on the Respondent’s website are in fact counterfeit, the reproduction of the Complainant’s trade mark and copyrighted images on the Respondent’s website without also displaying a clear disclaimer of a lack of relationship between the Respondent and the Complainant, is indicative of bad faith.

The Panel is satisfied that the Respondent’s purpose of registering the disputed domain name was to trade on the reputation of the Complainant and its trade mark by diverting Internet users seeking the Complainant’s branded products to its own website for financial gain. The Panel therefore determines that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

Furthermore, efforts to send the Written Notice to the Respondent at the physical address and fax number provided by the Respondent to the Registrar (and in turn to the Center) failed which suggests that the Respondent had likely provided false contact details at the time of registering the disputed domain name. This further suggests a lack of bona fide.

The Respondent has not denied the Complainant’s allegations of bad faith. Taking into account all the circumstances, the Panel concludes that the Respondent has registered and is using 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 <agnesbonline.com> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: June 9, 2020