WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BCBG IP Holdings LP v. Xiamen Privacy Protection Service Co., Ltd./ Wang Su Qing (王素清)

Case No. D2021-1600

1. The Parties

The Complainant is BCBG IP Holdings LP, United States of America (the “United States” or “U.S.”), represented by Tucker & Latifi, LLP, the United States.

The Respondent is Xiamen Privacy Protection Service Co., Ltd., China/ Wang Su Qing (王素清), China.

2. The Domain Name and Registrar

The disputed domain name <bcbgmaxazriaoutlet.net> is registered with eName Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2021. On May 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 2021, 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 May 31, 2021 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 May 31, 2021.

On May 31, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint and 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 the Respondent of the Complaint, and the proceedings commenced on June 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2021.

The Center appointed Douglas Clark as the sole panelist in this matter on July 2, 2021. 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 founded in 1989 and maintains an online retail website at “www.bcbg.com”. The Complainant owns a portfolio of trade mark registrations in over 114 countries, including the BCBG MAX AZRIA trade mark, for various goods and services, such as handbags, clothing, footwear, fragrance, home goods and online retail services. The Complainant’s BCBG MAX AZRIA trade mark registrations date back to as early as 1998. The Complainant has registered BCBG MAX AZRIA as a trade mark in classes 20, 24 and 25 in China. The class 25 registration dates to 1999.

The disputed domain name <bcbgmaxazriaoutlet.net> was registered on August 10, 2016. At the date of this decision, the disputed domain name redirects to the website “www.yhjpkj.com”, which offers dresses and other clothing products for women.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The disputed domain name is confusingly similar to its trade mark. The addition of the terms “outlet” and “.net” in the disputed domain name does not eliminate the overall notion that the designation is connected to the trade mark and the likelihood of confusion that the disputed domain name and the trade mark are associated;

(b) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant in any way and the Complainant has never granted any authorization or license to use the Complainant’s trade mark. The Respondent is not commonly known by the disputed domain name, and has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name; and

(c) The disputed domain name was registered and is being used in bad faith. The Respondent has used the BCBG MAX AZRIA trade mark to promote substantially similar goods and services. The Respondent also registered the disputed domain name that incorporates the BCBG MAX AZRIA trade mark in its entirety. The Respondent is using the disputed domain name to attract Internet users for commercial gain, creating a likelihood of confusion with the Complainant’s trade marks.

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 Proceedings

According 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.

In this case, the language of the Registration Agreement for the disputed domain name is in Chinese. There is no agreement between the Complainant and the Respondent regarding the language of the proceeding. The Complainant has filed its Complaint in English and has requested that English be the language for the proceeding under the following grounds:

a) the Complainant is only able to understand English;

b) the Respondent’s website the disputed domain name redirects to is operated in the English language; and

c) the Respondent is likely to understand English as the content on the website of the disputed domain name is in English.

In accordance with paragraph 11(a) of the Rules and taking into consideration paragraph 10(b) and (c) of the Rules, the Panel hereby determines that the language of the proceeding shall be in English after considering the following circumstances:

- the Center has notified the Respondent of the proceeding in both English and Chinese; and
- the content of the Respondent’s website is only available in English;

Further, this Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.

6.2 Substantive Issues

The Complainant must satisfy all three elements of paragraph 4(a) of the Policy in order to succeed in its action:

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

(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.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <bcbgmaxazriaoutlet.net> is confusingly similar to the Complainant’s trade mark. The disputed domain name incorporates the Complainant’s BCBG MAX AZRIA trade mark in full with the word “outlet” added to it. The word “outlet” does not prevent a finding of confusing similarity. The generic Top-Level Domain (“gTLD”) “.net” is generally disregarded when considering the first element.

The Panel finds that the Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Respondent has not asserted any rights or legitimate interests in relation to the disputed domain name.
Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Complainant has asserted that the Respondent has no business with and is in no way affiliated with the Complainant. The Respondent is not authorized nor licensed to use the Complainant’s BCBG MAX AZRIA trade mark or to apply for registration of the disputed domain name. The Respondent has not responded to any of the Complainant’s contentions. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, which has not been rebutted by the Respondent. Accordingly, the Respondent has no rights or legitimate interests in regard to the disputed domain name.

The Complainant has therefore satisfied the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds the disputed domain name was registered and is being used in bad faith.

The disputed domain name was registered long after the Complainant has registered the BCBG MAX AZRIA trade mark. The BCBG MAX AZRIA trade mark is used by the Complainant to conduct its business and the Complainant has used the trade mark for its various goods and services for more than 20 years. The Panel is satisfied that the Respondent was aware of the Complainant and its BCBG MAX AZRIA trade mark when it registered the disputed domain name. In addition, the website the disputed domain name resolves to offers substantially similar goods to that of the Complainant’s, namely dresses and clothing products for women. By prominently displaying the trade mark on the website, the Respondent has registered the disputed domain name to attract Internet users to the website for commercial gain by creating a likelihood of confusion with the Complainant’s BCBG MAX AZRIA trade mark.

For the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.

The Complainant has therefore satisfied 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, <bcbgmaxazriaoutlet.net> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: July 20, 2021