Les Echos v. Zhao Zhong Xian
Claim Number: FA1702001716753
Complainant is Les Echos (“Complainant”), represented by Claire MELKA of AB INITIO, France. Respondent is Zhao Zhong Xian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lesechos.website>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 10, 2017; the Forum received payment on February 10, 2017. That Complaint was only received in the English language.
On Feb 15, 2017, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <lesechos.website> domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the name. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 16, 2017, the Forum served the English Complaint and all Annexes, including an English and Chinese Written Notice of the Complaint, setting a deadline of March 8, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@lesechos.website. Also on February 16, 2017, the English and Chinese Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant registered the LES ECHO mark with France’s National Institute of Industrial Property (“NIIP”) (e.g., Reg. No. 1,337,380, registered Jan 9, 1986). See Compl., at Attached An. 3. Respondent’s <lesechos.website> domain is identical to Complainant’s LES ECHO mark and only adds the generic top-level domain (“gTLD”) “.website”.
2. Respondent has no rights or legitimate interests in <lesechos.website>. There is no evidence that Respondent is commonly known by Complainant’s mark, nor has Complainant licensed or otherwise permitted Respondent to use the mark or use a domain name with the mark. Respondent also fails to make an active use of the disputed domain name.
3. Respondent registered and is using the <lesechos.website> in bad faith. Respondent fails to make an active use of the disputed domain name. Additionally, Respondent has registered 437 domain names, all mimicking famous marks and adding various gTLD’s. Finally, Respondent must have had actual or constructive knowledge of Complainant’s mark because if a person conducts a browser search for LES ECHO, it leads directly to Complainant’s website.
B. Respondent
1. Respondent did not submit a Response in this Proceeding.
PANEL NOTE:
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese.
Complainant contends that the Panel should conduct these proceedings in English, rather than the Chinese alternative. Complainant argues that the disputed domain contains Latin letters rather than Chinese letters, and “website” is an English word. Complainant further claims that it has no knowledge of the Chinese language and the use of the Chinese language would impose a significant burden on Complainant. Finally, Complainant alleges that Respondent holds several fraudulent domain names that reproduce famous trademarks and point to inactive websites. See Compl. at Attached An. 2. The Panel finds the Complainant’s argument persuasive. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the English language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
1. Respondent’s <lesechos.website> domain name is confusingly similar to Complainant’s LES ECHO mark.
2. Respondent does not have any rights or legitimate interests in the <lesechos.website> domain name.
3. Respondent registered or used the <lesechos.website> domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant publishes the main French economic and financial daily news. Complainant has continuously engaged in this line of business since 1958. Complainant claims it registered the LES ECHO mark with NIIP (e.g., Reg. No. 1,337,380, registered Jan 9, 1986). See Compl., at Attached An. 3. Panels have established that registration of a mark with the NIIP sufficiently recognizes a registrant’s rights in a mark. See KERING v. Kane Christopher, FA 1552405 (Forum May 13, 2014) (finding, “Complainant has rights in the KERING mark within the meaning of Policy ¶ 4(a)(i) because Complainant owns a registration for the mark with NIIP.”). Therefore, the Panel sees that Complainant has established rights in the mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <lesechos.website> is confusingly similar to Complainant’s mark as it removes the space from Complainant’s complete mark and adds the descriptive gTLD “.website”. Similar changes to marks have not been held sufficiently distinguishable. Gianvito Rossi SRL Unipersonale v. david backhumn, FA 1628059 (Forum Aug. 12, 2015) (declaring, “Domain name syntax prohibits spaces in a domain name, so their absence must be disregarded when comparing a mark with a disputed domain name under Policy ¶4(a)(i).”). Similarly, Panels have held that adding a descriptive gTLD is irrelevant to an analysis of confusing similarity. See DD IP Holder LLC v. Phill Aspden, FA 1603215 (Forum Apr. 8, 2015) (finding that the disputed domain name <dunkin.coffee> is identical to Complainant's DUNKIN COFFEE registered mark, as gTLD's that reference goods or services offered under the registered mark may be taken into account). Respondent created a domain name using the entire LES ECHO mark, omits the space, and adding the descriptive gTLD “.website”. Therefore, the Panel agrees that Respondent has not included elements in the disputed domain name that would provide distinction from Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain
names.”).
Complainant contends that Respondent has no rights or legitimate interests in <lesechos.website>. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Zhao Zhong Xian” as the registrant. See Compl., at Attached An. 1. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the LES ECHO mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by <lesechos.website> under Policy ¶ 4(c)(ii).
Additionally, Complainant contends that the disputed domain name also redirects users to a website that lacks any content. Failure to make active use of a confusingly similar domain name can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Respondent does not offer any direct evidence of this assertion, however does offer constructive evidence of Respondent’s prior 437 domain name registrations that all lead to the same inactive webpage. See Compl. at Attached An. 2. Accordingly, the Panel chooses to agree with Complainant’s assertions and find that the <lesechos.website> domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor is it a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Complainant claims that Respondent registered and uses the <lesechos.website> domain name in bad faith. Complainant first contends that Respondent presently does not make an active use of the disputed domain name. Failure to make an active use of a confusingly similar domain name can evince bad faith registration. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As previously noted above, Complainant fails to offer direct evidence of the inactive use, however does offer indirect evidence of Respondent’s other inactive webpages. See Compl. at Attached An. 2. The Panel chooses to agree that Respondent registered and uses the <lesechos.website> domain name in bad faith.
Complainant further alleges that Respondent engages in serial cybersquatting. Serial Cybersquatting may evince bad faith. See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum November 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant contends that Respondent has registered 437 domain names, all confusingly similar or identical to famous trademarks while adding descriptive gTLD’s. See Compl. at Attached An. 2. Accordingly, the Panel finds that Respondent registered the disputed domain name in bad faith by engaging in serial cybersquatting.
Complainant lastly claims that Respondent had actual or constructive knowledge of Complainant’s mark. However, Panels have disregarded arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of Complainant’s mark because if a person conducts a browser search for LES ECHO, it leads directly to Complainant’s website. The Panel agrees with Complainant and find that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lesechos.website> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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