WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Paul’s Boutique Limited v. yang zhi he
Case No. D2013-0088
Complainant is Paul’s Boutique Limited of Croydon, Surrey, United Kingdom of Great Britain and Northern Ireland, represented by Rouse Legal, United Kingdom.
Respondent is yang zhi he, Nan Jing, Jiangsu, China.
2. The Domain Name and Registrar
The disputed domain name <pauls-boutique.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2013. On January 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent was listed as the registrant and providing the contact details for the disputed domain name.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 22, 2013. When the courier attempted to deliver the communication to the address given by Respondent in the WhoIs, the courier discovered that there was such address. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 12, 2013.
The Center appointed M. Scott Donahey as the sole panelist in this matter on February 19, 2013. 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
Complainant, headquartered in the United Kingdom, is a purveyor of fashion items internationally through selected retailers in the United Kingdom, Europe, and Asia. Complainant is chiefly known for its handbags, which account for approximately 50 % of its gross sales, which gross sales exceeded GBP 21 million in 2011. Complainant markets its goods on the Internet through the use of several domain names, the chief of which is <pauls-boutique.com>. Complaint, annex 4. Complainant’s bags have garnered much publicity, including photographs of various celebrities carrying Complainant’s bags. Complaint, annex 5. Complainant has numerous trademarks registered in the United Kingdom, the European Union, and China for the mark PAUL’S BOUTIQUE. The earliest of these registrations in the United Kingdom dates from April 2, 2004. Complainant’s registrations in China date from September 15, 2009, and its Chinese localizations of International Registrations date from February 7, 2011. Complaint, annex 6.
Respondent, who gave an address in China, registered the disputed domain name on October 20, 2011. Complaint, annex 1. Complainant first learned of the registration when a potential purchaser of Complainant’s handbags contacted Complainant by email on May 2, 2012. The potential customer inquired as to whether handbags pictured on the web site to which the disputed domain name resolved were genuine or counterfeit goods. Complaint, annex 7. The email contained a link to Respondent’s web site. Complaint, annex 8. Upon investigation by Complainant, Complainant determined that the goods offered on Respondent’s web site were counterfeit. When Complainant called upon successive Internet service providers (“ISPs”) to take down the offending web sites, and the ISPs complied, Respondent merely set up the web site through the use of a new ISP.
Complainant also performed a trademark search for the marks registered by Respondent and determined that Respondent had registered no trademarks containing either the mark PAUL, the mark BOUTIQUE, or any combination thereof. Complaint, annex 9.
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to Complainant’s PAUL’S BOUTIQUE trademark, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that Respondent has registered and is using the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion And Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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 directs that the complainant must prove each of the following:
i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name consists of Complainant’s mark PAUL’S BOUTIQUE absent the apostrophe in the first word with the two words being separated by a hyphen rather than a space. From the very outset of the implementation of the Policy, panels have held that the absence of an apostrophe in a domain name will not defeat a finding of identicality or confusing similarity, since an apostrophe is a character that cannot be registered in a second level domain name. Stella D’oro Biscuit Co., Inc. v. The Patron Group, Inc. WIPO Case No. D2000-0012 (STELLA D’ORO trademark and <stelladoro.com> domain name); August Storck KG v. Tony Mohammed, WIPO Case No. D2000-0196 (WETHER’S ORIGINAL trademark v. <wethersoriginal.com> domain name). In addition, the earliest of panel decisions also found that the insertion of a hyphen in a trademark for use as a domain name does not defeat a finding of identicality or confusing similarity. The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038 (EURO TUNNEL trademark and <euro-tunnel.com> domain name); Infospace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075 (INFOSPACE trademark and <info-space.com> domain name).
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s PAUL’S BOUTIQUE trademark.
B. Rights or Legitimate Interests
The consensus view of WIPO panels concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]”
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), paragraph 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights.
In addition, Complainant has alleged and Respondent has failed to deny that Respondent is using the disputed domain name to resolve to a web site at which counterfeit goods which purport to be legitimate goods sold under Complainant’s marks are offered for sale. Panel decisions have found that the offering of counterfeit goods purporting to be the legitimate goods of the complainant on a web site to which a domain name resolves shows that the respondent is not making a bona fide offering of goods or services. Moncler S.r.l. v. Daniel Park, WIPO Case No. D2011-0488; Balenciaga v. liu zhixian, zhixian liu, WIPO Case No. D2010-1831.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
Complainant asserts that it investigated the goods on Respondent’s web site to which the disputed domain name resolves and found them to be counterfeit. Respondent failed to deny this assertion. Panel decisions have held that the offering for sale of counterfeit goods on a web site to which a domain name resolves constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy. Balenciaga v. liu zhixian, zhixian liu, WIPO Case No. D2010-1831; Pandora Jewelry, LLC v. David Lee, WIPO Case No. D2010-0068. The Panel finds this to constitute bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Moreover, Respondent registered the disputed domain name, long after Complainant had been selling its handbags internationally under its trademarks and after Complainant had registered its trademarks in China, the country in which Respondent purportedly resides. When Complainant called upon successive ISPs to take down Respondent’s web site because of the offending counterfeit goods, Respondent merely moved the web site to a new ISP. Finally, Respondent provided incorrect contact details to the Registrar, so that Respondent could not be located.
Accordingly the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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, <pauls-boutique.org>, be transferred to Complainant.
M. Scott Donahey
Date: February 21, 2013