Juratoys v Xia Jinyuan

WIPO Case No. D2024-2348

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Juratoys v. Xia Jinyuan

Case No. D2024-2348

1. The Parties

The Complainant is Juratoys, France, represented by GUIU IP, France.

The Respondent is Xia Jinyuan, China.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June
14, 2024. On June 17, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On June 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 Registrant (Redacted for Privacy)) and
contact information in the Complaint. The Center sent an email communication to the Complainant on June
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 June 24, 2024.

On June 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 June 24, 2024, the Complainant confirmed its request that English 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”).

page 2

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceedings commenced on June 27, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2024.

The Center appointed Joseph Simone as the sole panelist in this matter on July 22, 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, Juratoys, is a French Company created in 1970, which specializes in toys, games and
playthings. The Complainant creates and distributes its products in France and abroad under its trademark

JANOD.

The Complainant has an extensive global portfolio of trade marks for JANOD, which includes the following:

- French Trade Mark Registration No. 3800213 for JANOD in Classes 15, 16, 18, 20, and 28, registered

on July 15, 2011;

- International Trade Mark Registration No. 1080282 for JANOD in Classes 18, 20, and 28, designating

inter alia Australia, Israel, Japan, Norway, Switzerland, China, Morocco, Monaco, Russian Federation,
registered on May 13, 2011; and

- European Union Trade Mark Registration No. 010042869 for JANOD in Classes 18, 20, and 28,

registered on November 15, 2011.

The disputed domain name was registered on January 22, 2024.

According to evidence provided by the Complainant, the disputed domain name resolves to a website featuring an online store reproducing both the JANOD mark in plain letters as well as in logo form. The website also allegedly offers for sale of the Complainant’s JANOD branded toys, playthings and games products at discounted prices.

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.

The Complainant further contends that the disputed domain name registered by the Respondent is identical or confusingly similar to the Complainant’s JANOD trade marks, and that the addition of the generic Top- Level Domain (“gTLD”) “.com” does not affect the analysis as to whether the disputed domain name is identical or confusingly similar to the Complainant’s trade marks.

The Complainant also argues that the addition of the French term “jouets” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s JANOD mark.

The Complainant asserts that it has not authorized the Respondent to use the JANOD mark, and that there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.

page 3

The Complainant also claims that there is no evidence indicating that the Respondent has any connection to the JANOD mark in any way, and that there is no plausible good-faith reason for the Respondent to have registered the disputed domain name. The Complainant therefore concludes that the registration and any use of the disputed domain name whatsoever must be in bad faith.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Issue: Language of the Proceeding

In accordance with paragraph 11(a) of the Rules:

“[…] the language of the administrative 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.”

In this case, the language of the Registration Agreement for the disputed domain name is Chinese. Hence, the default language of the proceeding should be Chinese.

However, the Complainant filed the Complaint in English, and requested that English be the language of the proceeding for the following reasons:

- The Respondent is able to read and understand English, as this is evidenced by the fact that certain

pages of the record for the disputed domain name are redacted in English, the owner of the website is
presented as a global company (“entreprise mondiale”) on About Us web page for the company (“A propos
de nous”), the page claims the operator operates several warehouses across the United States of America,
and the disputed domain name is registered in Latin script and not in Chinese;

- English is not the native language of either Party, but it is the primary language for international

commercial relations, and therefore would be a fair language compromise to both Parties; and

- The Complainant has no knowledge of Chinese. Requiring the Complainant to translate the Complaint and exhibits into Chinese would result in additional costs and delays, imposing a high financial burden on the Complainant.

The Respondent was notified in both Chinese and English of the language of the proceeding and the commencement of the proceeding and did not comment on the language of the proceeding or submit any response in either Chinese or English.

In exercising its discretion to use a language other than that of the registration agreement, the Panel must
judiciously and in the spirit of fairness take into account all relevant circumstances of the case, including the
Parties’ ability to understand and use the proposed language, and the time and costs incurred by the Parties
(see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview
3.0”), section 4.5.1).

Considering the circumstances of this case, the Panel determines that the language of the proceeding shall be English, and as such, the Panel has issued this decision in English. The Panel further finds that this determination should not create any prejudice to either Party and should ensure that the proceeding takes place with due expedition.

page 4

A. Identical or Confusingly Similar

The Panel acknowledges that the Complainant has established rights in the JANOD trade marks in many jurisdictions around the world.

Disregarding the gTLD “.com”, the disputed domain name incorporates the Complainant’s trade mark not prevent a finding of confusing similarity.
JANOD in its entirety. Thus, the disputed domain name should be regarded as confusingly similar to the

The Panel therefore finds that the Complainant satisfies the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the JANOD trade mark and in showing that the disputed domain name is confusingly similar to its mark.

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 challenging 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 evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

The Complainant asserts that it has not authorized the Respondent to use its trademarks and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Having reviewed the

available record, the Panel finds that the Complainant has established a prima facie case that the
Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent did not file a response and has therefore failed to assert factors or put forth evidence to establish that he enjoys rights or legitimate interests in the disputed domain name. In this case, there is no evidence adduced to show that the Respondent, prior to the notice of the dispute, has used or has demonstrated its preparation to use the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name resolves to a website allegedly offering various retail items for sale at a discount, some of which are identified through the Complainant’s trade mark, all the while failing to disclose any relationship (or lack thereof) with the Complainant. Given the composition of the disputed domain name and the use to which it has been put, the Respondent clearly sought to create a misleading inference of association or ownership by the Complainant for its commercial advantage.

There is also no evidence adduced to show that the Respondent has been commonly known by the disputed domain name or the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. As such, the Panel concludes that the Respondent has failed to rebut the Complainant’s prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name, and that none of the circumstances of paragraph 4(c) of the Policy is applicable in this case.

Accordingly, and based on the Panel’s findings below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

page 5

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.

Paragraph 4(b) of the Policy states that any of the following circumstances in particular but without limitation shall be considered as evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the

purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the
owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in
excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name to prevent the owner of the

trademark or service mark from reflecting the mark in a corresponding domain name, provided that the
respondent has engaged in a pattern of such conduct; or

(iii)      circumstances indicating that the respondent has registered the domain name primarily for the

purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to

attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of
confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the
respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances in which bad faith may be found. Other circumstances may also be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. (WIPO Overview 3.0, section 3.2.1)

For reasons discussed under this and the preceding heading, the Panel believes that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name.

When the Respondent registered the disputed domain name, the JANOD trademarks were already widely known and directly associated with the Complainant’s activities. UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar (particularly domain names comprising typos or incorporating the mark plus a generic or descriptive term) to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4.

Given the extensive prior use and fame of the Complainant’s marks, in the Panel’s view, the Respondent should have been aware of the Complainant’s marks when registering the disputed domain name.

The Respondent has provided no evidence to justify his choice of the term “janod” in the disputed domain name.

The Complainant’s registered trademark rights in JANOD for its products and services predate the
registration date of the disputed domain name. A simple online search (via services such as Google or
Baidu) for the term “janod” would have revealed that it is a famous brand in toys for children. See WIPO
Overview 3.0, section 4.8.

The Panel takes particular note of the fact that Respondent had used the disputed domain name for a website promoting toys suspected to be counterfeits of the Complainant’s products.

The Panel is therefore of the view that the Respondent registered the disputed domain name with full knowledge of the Complainant’s trademark rights.

page 6

In light of the foregoing facts, there is no plausible good faith reason for the Respondent to have registered and used the disputed domain name. The Panel finds in the circumstances that, by registering and using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.

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 <jouetsjanod.com> be transferred to the Complainant.

/Joseph Simone/
Joseph Simone
Sole Panelist
Date: August 5, 2024