Etablissements Sogal v li jin lai
WIPO Case No. D2023-0344
•23-03-2023
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Etablissements Sogal v. li jin lai
Case No. D2023-0344
1. The Parties
The Complainant is Etablissements Sogal, France, represented by Inlex IP Expertise, France.
The Respondent is li jin lai, China.
2. The Domain Name and Registrar
The disputed domain name <sogal-cn.com> (the “Domain Name”) is registered with Gname 028 Inc (the
“Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2023. On January 25, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 29, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 30, 2023 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 in English on February 2, 2023.
On January 30, 2023, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On February 2, 2023, the Complainant submitted 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 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in Chinese and English of the Complaint, and the proceedings commenced on February 7, 2023. In accordance with the Rules, paragraph 5, the due date for Response was February 27, 2023. Apart from several automatic
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email communications in response to each of the Center’s email communications, the Respondent did not
submit any formal Response. Accordingly, the Center notified the Parties on March 1, 2023 that it would
proceed to Panel Appointment.
The Center appointed Karen Fong as the sole panelist in this matter on March 7, 2023. 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, based in France, was founded in 1981 and specialises in tailor-made interior design solutions. It has a partnership with a listed cabinetry manufacturer in China, which is also its Chinese licensee. The Complainant’s products and services are marketed and sold under the trade mark SOGAL.
The Complainant has an international trade mark portfolio which includes the trade mark registrations for
SOGAL. The following are the details of some of the trade marks:
| - | French trade mark registration for SOGAL (Stylised) under trade mark registration no. 1671239 filed on and registered from June 10, 1991; |
| - | International trade mark registration for SOGAL & Device designating China under trade mark registration no. 1052493 registered on July 13, 2010 (individually and collectively referred to as, the “Trade Mark”). |
The Complainant also owns several domain names incorporating the Trade Mark, such as <sogal.com> and
<sogal.com.cn>.
The Respondent, who appears to be based in China, registered the Domain Name on December 23, 2022. of writing this decision, the Website is not active.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the
Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain
Name has been registered and is being used in bad faith. The Complainant requests transfer of the Domain
Name to the Complainant.
B. Respondent
Apart from the automatic email communications from the Respondent inter alia providing various websites, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the
Complainant must prove each of the following, namely that:
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(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Language of the Proceeding
The Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should be English for the following main reasons:
| - | the Domain Name is in Latin characters rather than Chinese scripts; |
| - | the Domain Name extension “.com” targets consumer from all over the world who are familiar with the English language; |
| - | there are other decisions in which UDRP panels have already use English as the language of the proceeding involving the Registrar; |
| - | the Complainant would be put to great expense and inconvenience to have to translate the Complaint and its evidence in Chinese, which would cause undue delay. |
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.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Chinese or English. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In view of all the circumstances, the Panel determines that English be the language of the proceeding.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case, the Domain Name contains the Complainant’s Trade Mark in its entirety with the addition of a hyphen and the country code for China “cn”. The addition of these elements does not prevent a finding of confusing similarity. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of
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the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement (section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights, and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the domain name by demonstrating any of the following:
| (i) |
before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does not come forward with such allegations and evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that there is no evidence that the Respondent is commonly known by the Domain or otherwise permitted the Respondent to use the Trade Mark in the Domain Name or for any other purpose. The Respondent’s unauthorised use of the Trade Mark in the Domain Name in relation to pornography is not bona fide or legitimate noncommercial or fair use of the Domain Name.
prima facie
The Panel finds that the Complainant has made out a case, a case calling for an answer from the relation to the Domain Name, and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name. Moreover, the nature of the disputed domain name is inherently misleading as it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview 3.0).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been registered and is being used in bad faith.
The Panel is satisfied that the Respondent was aware of the Trade Mark when he registered the Domain
Name given the reputation of the Trade Mark and the fact that it has no common dictionary significance other
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than that of the name of the Complainant’s brand. It is therefore implausible that the Respondent was
unaware of the Complainant when he registered the Domain Name.
In the WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in
circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a
respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers),
panels have been prepared to infer that the respondent knew, or have found that the respondent should
have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further
factors including the nature of the domain name, the chosen top-level domain, any use of the domain name,
or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s
mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with the Respondent’s choice of the Domain Name (clearly targeting the Complainant’s Trade Mark) is also a significant factor to consider (as stated in section 3.2.1 of the WIPO Overview 3.0). The Domain Name falls into the category stated
above and the Panel finds that registration was in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The pornographic content on the Website presents a risk of tarnishment. The Respondent clearly intended to trade off the Complainant’s reputation by setting up the Website for the commercial benefit of the Respondent. It is highly likely that Internet users when typing the Domain Name into their browser or finding it through a search engine would have been looking for a website operated by the Complainant or connected to the Complainant rather than the Respondent’s pornographic Website.
The Domain Name is likely to confuse Internet users trying to find the Complainant’s official website. Such connected to the Domain Name instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s Domain Name is somehow connected to the Complainant.
confusion will inevitably result due to the complete incorporation of the Trade Mark in the Domain Name.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy. The current non-use of the Domain Name does not change the Panel’s finding of the Respondent’s bad faith.
In all the circumstances, the Panel finds that the Complainant has fulfilled the requirements of paragraph
4(a)(iii) 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 Domain Name <sogal-cn.com> be transferred to the Complainant.
/Karen Fong/ Karen Fong Sole Panelist Date: March 23, 2023
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