EDHEC Business School v zhu changzan

WIPO Case No. D2024-4048

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

EDHEC Business School v. zhu changzan

Case No. D2024-4048

1. The Parties

The Complainant is EDHEC Business School, France, represented by CSC Digital Brand Services Group

AB, Sweden.

The Respondent is zhu changzan, China.

2. The Domain Name and Registrar

The disputed domain name <edhecinside.com> is registered with Gname.com Pte. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2024. 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 October 9, 2024.
On October 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On October 3, 2024, 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 (Redacted For Privacy) and contact information in the Complaint.

On October 4, 2024, the Center informed the parties in Chinese and English, that the language of the registration agreement for the disputed domain name is Chinese. On October 10, 2024, the Complainant requested English to be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission.

The Center verified that the Complaint together with 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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on October 16, 2024. In accordance with the Rules, paragraph
5, the due date for Response was November 5, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on November 9, 2024.

The Center appointed Jonathan Agmon as the sole panelist in this matter on November 20, 2024. 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 school founded in 1906 in Lille, France. Over the course of its over 100-year history, the Complainant has become a leading international business school with five campuses in three countries. The Complainant has 8,600 students with 110 nationalities, and over 50,000 alumni from 130 countries, and has been ranked amongst the top business schools internationally. The Complainant also maintains a

strong Internet presence on social media platforms, with over 120,000, 58,600, and 85,200 followers on

Facebook, Instagram, and X (formerly known as Twitter), respectively.

The Complainant owns various trademark registrations for EDHEC, including the following:-

- International trademark registration no. 890123 for , registered on May 19, 2006;

- French trademark registration no. 4080521 for EDHEC, registered on September 5, 2014.

The Complainant owns and operates in official domain names, <edhec.edu> and <edhec.com>, registered on October 26, 1999, and February 23, 1998, respectively.

The disputed domain name was registered on July 22, 2024, and resolved to a parking page with Pay-Per-

Click (“PPC”) links, some of which directly compete with the Complainant's business.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that:

- The disputed domain name is confusingly similar to the Complainant’s EDHEC trademark. The

disputed domain name contains the entirety of the Complainant’s EDHEC trademark with the addition of the dictionary term “inside” as a suffix. The mere addition of the suffix to the Complainant’s trademark does not negate the confusing similarity between the disputed domain name and the Complainant’s trademark.

- The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent

is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the disputed domain name. The Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark. The Respondent’s name is “Zhu Changzan”, and there is no evidence that he is commonly known by the disputed domain name. The Respondent registered the disputed domain name long after the Complainant registered its EDHEC trademark. At the time of registration of the disputed domain name, the Complainant’s EDHEC trademark

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had already acquired a reputation. The disputed domain name therefore carries a high risk of implied likely that the Respondent obtains a fee from the PPC links being clicked on by Internet users. The disputed domain name was previously owned by one of the Complainant’s student associations, and the registration had inadvertently lapsed. The Respondent seized this opportunity to register the disputed domain name. This is evidence of the Respondent’s lack of rights or legitimate interests in the disputed domain name. The Respondent is also offering the disputed domain name for sale, which is evidence of his lack of legitimate interest in the disputed domain name.
affiliation with the Complainant. The Respondent is using the disputed domain name to direct Internet users
to a website featuring, presumably PPC links to third party websites, some of which directly compete with the

- The disputed domain name was registered and is being used in bad faith. The Complainant and its EDHEC trademark are very famous. The Complainant has used the trademark since 1951, well before the Respondent registered the disputed domain name. Given the famous nature of the Complainant’s

trademark, the Respondent knew, or should have known of, the Complainant’s trademark at the time of registration of the disputed domain name. Further, given that the disputed domain name was previously owned by the Complainant’s student association, the Respondent was more likely than not aware of the Complainant’s brand and business at the time of registering the disputed domain name. The Complainant

alleges that by registering a domain name that comprises the Complainant’s EDHEC trademark, the domain name, which leads to the misperceptions as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. The Complainant contends that the fact that the disputed domain name resolves to a webpage containing PPC links is evidence of bad faith. The Respondent had also offered to sell the disputed domain name for a sum likely far in excess of this out-of-pocket expenses, which is also evidence of bad faith. The Respondent has also ignored the cease-and-desist letters sent by the Complainant, and had also employed a privacy service to hide his identity. These facts are also considered to be evidence of bad faith.

B. Respondent

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

6. Discussion and Findings

Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in English. The Complainant requested that the language of the proceeding be

English for several reasons, including that:

- The disputed domain name incorporates the Complainant’s trademark and the English dictionary term

“inside”;

- The disputed domain name resolves to a website that displays sponsored links which are in English;

- The Complainant is unable to communicate in Chinese and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter.

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- The Complainant previously sent cease-and-desist letters to the Respondent who had ample time and opportunity to respond to the letters and request that communications continue in Chinese. However, he did not.

The Respondent did not make any specific submissions with respect to the language of the proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of an additional term, here, “inside” may bear on assessment of the second and third elements, the Panel finds the addition of such a term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

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There is no evidence that the Respondent is commonly known by the disputed domain name or that he was licensed or authorized by the Complainant to use the EDHEC trademark, or to register the disputed domain name. The Complainant’s use and registration of the EDHEC trademark long predates the registration date of the disputed domain name.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent registered the disputed domain name long after the Complainant registered its EDHEC trademark. Given the distinctiveness of the Complainant’s mark and its good will, it is highly unlikely that the Respondent did not know of the Complainant and its trademark prior to registering the disputed domain name.

The Panel notes that the disputed domain name was previously owned and operated by the Complainant’s student association, before the registration inadvertently lapsed, and the Respondent registered the disputed domain name after it had lapsed. This suggests that the Respondent may have monitored and targeted the Complainant and/or its affiliations, which is evidence of bad faith.

The disputed domain name resolves to a parking page containing PPC links, which advertised services such as “Doctorate Degree”, “Graduate Degrees”, and “Community Colleges”. These purported services are in direct competition with the Complainant’s own services. The disputed domain name likely was intended to divert Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks. The Panel further notes that the disputed domain name was offered for sale on Dan.com for a sum that likely far exceeds the Respondent’s out-of-pocket registration costs. These uses of a domain name are further evidence of bad faith of the disputed domain name.

The Panel also notes that the Respondent had ignored the Complainant’s three cease-and-desist letters dated May 8, 2024, May 14, 2024, and May 23, 2024, and had also utilized a privacy service to hide his registration details. These acts further support a finding of bad faith.

The Panel finds that the Complainant has established the third element 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 <edhecinside.com> be transferred to the Complainant.

/Jonathan Agmon/
Jonathan Agmon
Sole Panelist
Date: December 3, 2024