WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Studio Harcourt v. Xiansheng Li

Case No. D2021-1800

1. The Parties

The Complainant is Studio Harcourt, France, represented by Nameshield, France.

The Respondent is Xiansheng Li, China.

2. The Domain Name and Registrar

The disputed domain name <cabine-harcourt.com> is registered with Net-Chinese Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2021. On June 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 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 June 10, 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 two amended Complaints in English on June 10, 2021.

On June 10, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On June 10, 2021, the Complainant submitted a 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 together with the amended Complaints 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 June 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2021.

The Center appointed Jonathan Agmon as the sole panelist in this matter on August 18, 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, STUDIO HARCOURT, is a Parisian photography studio known for its black-and-white photographs of movie stars and celebrities. The Complainant was created in 1934 through a collaboration between Cosette Harcourt and two Larcrois brothers.

The Complainant is the owner of the following registered trademarks containing HARCOURT, namely:

- International Trademark No. 451329 for STUDIO HARCOURT and design, registered on March 24, 1980; and

- International Trademark No. 451330 for HARCOURT, registered on March 24, 1980.

The Complainant is also the owner of the domain name <studio-harcourt.com>, registered on December 2, 2007.

The disputed domain name <cabine-harcourt.com> was registered on June 3, 2021 and resolved to an inactive website when the Complaint was filed.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to its HARCOURT marks as the disputed domain name incorporates the HARCOURT mark, the addition of the term “cabine” (which means “cabin” in French) is insufficient to avoid the likelihood of confusion and the addition of the generic Top-Level Domain (“gTLD”) “.com” does not prevent the finding of likelihood of confusion.

The Complainant also argues that the Respondent has no legitimate rights or interests in the disputed domain name. The Respondent is not affiliated with nor authorized by the Complainant in any way and does not have any activity or business with the Complainant. The Complainant did not license or authorize the Respondent to make use of its trademarks or apply for registration of the disputed domain name. The disputed domain name is also inactive.

The Complainant further argues that the Respondent registered and is using the disputed domain name in bad faith due to passive holding. The Complainant states that the Complainant is known worldwide for its black-and-white photographs of movie stars and celebrities and the Respondent could not have been unaware of the Complainant and its trademarks at the time of registration of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Issue: Language of Proceedings

Paragraph 11 of the Rules provides that:

“(a) 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.”

The language of the Registration Agreement for the disputed domain name <cabine-harcourt.com> is Chinese.

The Complainant requested that the language of the proceeding be English for the following reasons:

(i) English is one of the most widely used languages internationally;
(ii) the disputed domain name is in English (ASCII) characters; and
(iii) the Complainant would incur and be burdened with substantial translation costs if the proceedings were to proceed with Chinese.

The Respondent did not comment on the language of the proceeding.

The Panel cites the following with approval: “Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (See Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

Having considered the above factors, the Panel determines that English be the language of the proceeding. The Panel agrees that the Respondent appear to be familiar with the English language, taking into account their selection of the French/English-language trademark (in either event not Chinese) in the disputed domain name. In the absence of an objection by the Respondent, the Panel does not find it procedurally efficient to have the Complainant translate the Complaint and evidence into Chinese.

6.2 Substantive Issues

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides an indication that the rights in the mark belong to its respective owner. The Complainant has registered rights in the trademarks STUDIO HARCOURT and HARCOURT since 1980.

The disputed domain name wholly integrates the Complainant’s HARCOURT mark in its entirety (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). The addition of a hyphen and the term “cabine” in the disputed domain name does not prevent a finding of confusing similarity with the Complainant’s trademark. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.8 and 1.12.)

Further, it is well established that the addition of the generic Top-Level Domain “.com” is disregarded under the first element confusing similarity test. (See WIPO Overview 3.0, section 1.11.1.)

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names (see WIPO Overview 3.0, section 2.1).

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests. The Complainant has provided evidence that it owns a trademark registration for HARCOURT long before the disputed domain name was registered. The Complainant is not affiliated with nor has it licensed or otherwise permitted the Respondent to use the Complainant’s trade mark (see LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138). There is also no evidence on record showing that the Respondent is commonly known by the disputed domain name (see WIPO Overview 3.0, section 2.3).

Further, the Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name to rebut the Complainant’s prima facie case. There can indeed be little doubt the Respondent unfairly sought to target the Complainant with the disputed domain name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must also show that the Respondent registered and is using the disputed domain names in bad faith (see Policy, paragraph 4(a)(iii)).

The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its HARCOURT trademark. Given that the Complainant’s trademarks have been registered for a long time and that a simple Internet search of the term “cabine harcourt” directs Internet users to the Complainant’s website, it is highly unlikely that the Respondent did not know of the Complainant and its HARCOURT mark prior to registration of the disputed domain name. The disputed domain name incorporates the Complainant’s HARCOURT trademark in its entirety with a hyphen and an additional term, which the Panel finds is an attempt by the Respondent to confuse and/or mislead Internet users seeking or expecting the Complainant. Previous UDRP panels have ruled that in such circumstances “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095).

The disputed domain name is being passively held by the Respondent as it resolved to an inactive website. Panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. (See WIPO Overview 3.0, Section 3.3).

Having regard to the above factors in the particular circumstances of the present case whereby the Complainant’s HARCOURT mark is sufficiently distinctive, the Respondent has failed to submit a Response and the fact that the Respondent has provided false contact details (notably, a false street address, city, postal code and phone number which do not tally), it is implausible to put any good faith use to the disputed domain name.

Based on the evidence presented to the Panel, including the confusing similarity between the disputed domain name and the Complainant’s mark, the Respondent’s false contact details, the fact that no Response was submitted by the Respondent to the Complaint, and that any good faith use of the disputed domain name is implausible, the Panel draws the interference that the disputed domain name was 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 <cabine-harcourt.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: September 1, 2021