J.M. Weston v 金晓瑶 (Carol Martin)

WIPO Case No. D2024-0565

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

J.M. Weston v. 金晓瑶 (Carol Martin)

Case No. D2024-0565

1. The Parties

The Complainant is J.M. Weston, France, represented by Cabinet Germain & Maureau, France.

The Respondent is 金晓瑶 (Carol Martin), China and France.

2. The Domain Name and Registrar

The disputed domain name <jmwestonofficial.com> is registered with West263 International Limited (the

“Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2024. On February 8, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 18, 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 (Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 21, 2024, 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 26, 2024.

On February 21, 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 February 23, 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 in English and Chinese of the Complaint, and the proceedings commenced on February 28, 2024. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 25, 2024.

The Center appointed Karen Fong as the sole panelist in this matter on April 4, 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 French luxury footwear company founded in 1891. The trade mark, J.M. WESTON, has been used by the Complainant as its house brand since the creation of the company. The Complainant has 42 stores in France and abroad. It has about 148,000 followers on its Facebook account and 146,000 on its Instagram account.

The Complainant has trade mark registrations for J.M. WESTON in many countries around the world including the following:

- French Trade Mark Registration No. 1372787 for J.M. WESTON registered on September 30, 1986;

- European Union Trade Mark Registration No. 2596930 for J.M. WESTON (stylized) registered on March
18, 2004; and

- International Trade Mark Registration No. 837836 for J.M. WESTON (stylized) designating inter alia
China and the United States of America (“United States”), registered on Jule 27, 2004.

(together, individually and collectively referred to as the Trade Mark”).

The Respondent appears to be based in both China and France in the city of “Kentucky” but has a Chinese telephone number. The address does not appear to be a Chinese nor a French address but an American one. The disputed domain name was registered on January 23, 2024. The disputed domain name was connected to a website which displays the Trade Mark prominently, mimics the Complainant’s own website at “ including using its images and purportedly offers for sale merchandise that bears the Trade Mark at discounted or “sale” prices and purports to be the Complainant’s products (the “Website”). The Website is currently inactive.

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 Trade Mark, that the Respondent has no rights or legitimate interests with respect to the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. The Complainant requests transfer of the disputed domain name.

B. Respondent

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

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6. Discussion and Findings

6.1 Preliminary Issue: Language of the Proceeding

The language of the Registration Agreement for the disputed domain names 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 the following reasons:

- The Respondent has a French name and an address in the United States;

- The disputed domain name is composed of Latin characters and includes the English term “official”;

- The Website content was in English and French;

- The currency for selling products on the Website was EUR rather than the Chinese currency;

- The Complainant is based in France and has no knowledge of the Chinese language; and

- For the Complainant to translate the Complaint into Chinese would unfairly disadvantage and burden
the Complainant in terms of costs and delay the proceeding and adjudication of this matter.

The Respondent has not challenged the Complainant’s language request and in fact has failed to file a response in either English or Chinese despite being duly notified by the Center in both English and Chinese of the language of the proceeding and of the commencement 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.

6.2 Substantive Issues

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 trade mark and the disputed domain name. WIPO Overview 3.0, section 1.7.

Based on the available record, the Panel finds the Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The Panel finds the entirety of the Trade Mark is reproduced within the disputed domain name (even though the dots are omitted). Accordingly, the disputed domain name is identical or confusingly similar to the Trade Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

While the addition of the other term here, “official” after the Trade Mark in the disputed domain name may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the Trade Mark for the

purposes of the Policy. WIPO Overview 3.0, section 1.8.

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Based on the available record, 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.

While 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 often impossible 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. 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 record, the Panel finds the Complainant has established a prima facie case that the 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.

Moreover, the nature of the disputed domain name is inherently misleading as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. WIPO Overview 3.0, section 2.5.1.

Based on the available record, 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 must have been aware of the Trade Mark when she registered the disputed domain name given the Trade Mark was registered prior to registration of the disputed domain name and, the reputation of the Trade Mark. It is therefore implausible that the Respondent

was unaware of the Complainant when he registered the disputed 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 reflects that the Respondent had the Complainant in mind when registering the disputed domain name.

of the disputed domain name without any explanation is also a significant factor to consider (as stated in
WIPO Overview 3.0, section 3.2.1). The disputed domain name falls into the category stated above and the

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The disputed domain name is also being used in bad faith. The products offered for sale on the Website are likely to be counterfeit and/or unauthorised and heavily discounted J.M. WESTON products considering the difference in prices and the fact that there is no relationship between the Parties.

The Respondent’s website prominently displayed the Complainant’s Trade Mark, without any disclaimer disclosing (the lack of) relationship between the Parties. The content of the Website is calculated to give the impression it has been authorized by or connected to the Complainant when this is not the case. The Website was set up to deliberately mislead Internet users that it is connected to, authorised by or affiliated with the Complainant. From the above, the Panel concludes that the Respondent has intentionally attempted to attract, for commercial gain, by misleading Internet users into believing that the Respondent’s Website was, and the products sold on it are those of or authorised or endorsed by the Complainant.

It is highly likely that Internet users when typing the disputed domain name into their browser or finding it through a search engine would have been looking for a site operated by the Complainant rather than the Respondent. The disputed domain name is likely to confuse Internet users trying to find the Complainant’s

official website especially since it has the word “official”. Such confusion will inevitably result due to the fact
that the disputed domain name comprises the Trade Mark in its entirety.

The fact that the disputed domain name is now inactive does not prevent a finding of bad faith given that the distinctiveness and reputation of the Trade Mark, the composition of the disputed domain name, the lack of a response from the Respondent, and the fact that the address and the telephone number of the Respondent

are in different countries.

The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.

Based on the available record, the Panel finds the third element of the Policy has been established.

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 <jmwestonofficial.com> be transferred to the Complainant.

/Karen Fong/ Karen Fong Sole Panelist Date: April 19, 2024