PAI Partners v Yuran
WIPO Case No. DCO2024-0091
•22-01-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
PAI Partners v. Yuran
Case No. DCO2024-0091
1. The Parties
The Complainant is PAI Partners, France, represented by GPI MARQUES, France.
The Respondent is Yuran, China.
2. The Domain Name and Registrar
The disputed domain name <paipartners.co> is registered with Sav.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2024. On November 27, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 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. The Center sent an email communication to the Complainant on November 28, 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 on November 28, 2024.
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 of the Complaint, and the proceedings commenced on December 9, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 2, 2025.
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The Center appointed Luca Barbero as the sole panelist in this matter on January 8, 2025. 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 private equity firm whose operations date back to 1872. It currently operates in the United Kingdom, United States of America, Germany, Italy, Luxembourg, Spain, and the Nordic countries.
With assets under its management worth EUR 28 billion, the Complainant has raised to date over EUR 33 billion in capital and now ranks, according to the 2024 “Private Equity International” ranking, in 65th place as one of the world's largest private equity firms and Europe’s 8th largest private equity firm.
The Complainant is the owner of the following trademark registrations for PAI PARTNERS, as per trademark registration details submitted in Annex 9 to the Complaint:
- European Union trademark registration No. 003028131 for PAI PARTNERS (word mark), filed on January
29, 2003, and registered on October 26, 2004, in class 36;
- International trademark registration No. 1377706 for PAI PARTNERS (figurative mark), registered on
October 3, 2017, in class 36.
The Complainant is also the owner of the domain names <paipartners.com>, registered on November 29,
2001, and <paipartners.fr>, registered on December 22, 2005, both redirected to the website
“ used by the Complainant to promote its services under the trademark PAI
PARTNERS.
The disputed domain name <paipartners.co> was registered on July 23, 2024. According to the screenshot
submitted by the Complainant, the disputed domain name was previously offered for sale on the
“ website. Currently, the disputed domain name resolves to a webpage of the
“ website where it is being offered for sale for USD 1,450.
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 <paipartners.co> is identical or at least confusingly similar to the trademark PAI PARTNERS in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the country code Top-Level Domain (“ccTLD”) “.co”.
The Complainant states that the Respondent does not have any rights or legitimate interests in respect of the connection with a bona fide offering of goods or services as it has offered the disputed domain name for sale, previously on “ and currently on “ for USD 1,450, which is an amount well in excess of ordinary registration fees; v) considering the disputed domain name is identical to the Complainant’s mark and domain name <paipartners.com>, it carries a high risk of implied affiliation and
disputed domain name since: i) the Respondent is in no way affiliated with the Complainant and has not
been authorized, licensed or permitted by the Complainant to use its trademark or seek registration of any
domain name incorporating said mark; ii) the Respondent is not commonly known by the disputed domain
name; iii) the disputed domain name is identical to the Complainant’s company name and the PAI
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confusion; and vi) the Respondent never answered to the Complainant’s cease-and-desist letter and
subsequent reminder.
With reference to the circumstances evidencing bad faith, the Complainant indicates that it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name, since the Complainant and its trademark enjoy a reputation throughout the world, including in the United States of America, where the Complainant is present with an office in New York and recently acquired numerous companies and where the Respondent appears to be located according to the information previously published on the website to which the disputed domain name originally resolved. The Complainant also states that a quick trademark search for PAI PARTNERS or a simple search via Google or any other search engine using the keyword “pai partners” would have revealed to the Respondent the existence of the Complainant and its trademark.
The Complainant therefore submits that the Respondent knew or should have known of the Complainant’s trademark rights. The Complainant further submits that the Respondent registered the disputed domain name with the likely intent of offering the disputed domain name for sale for an amount well in excess of the out-of-pocket costs.
| intent of preventing the Complainant from using its trademark in a corresponding domain name and that the | The Complainant also contends that the Respondent registered the disputed domain name with a likely against the Respondent. |
| The Complainant further submits that the Respondent’s redirection of the disputed domain name to a website where it is offered for sale at an amount considerably in excess of its likely out-of-pocket costs amounts to bad faith use. | |
| B. Respondent | |
| The Respondent did not reply to the Complainant’s contentions. | |
| 6. Discussion and Findings | |
| According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and 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 disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; | |
| (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and | |
| (iii) that the disputed domain name has been registered and is being used in bad faith. | |
| 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. |
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The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. registrations for PAI PARTNERS.
The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
In addition, the ccTLD “.co” can be disregarded under the first element confusing similarity test, being a standard registration requirement. WIPO Overview 3.0, section 1.11.1.
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.
According to the evidence on record, there is no relationship between the Complainant and the Respondent, and the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain name.
Moreover, there is no element from which the Panel could infer the Respondent’s rights over the disputed domain name, or that the Respondent might be commonly known by the disputed domain name.
As mentioned above, the Complainant has demonstrated that the disputed domain name is redirected to a website where the disputed domain name is offered for sale for USD 1,450. The Panel finds that such use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
In addition, the disputed domain name, being identical to the Complainant’s trademark PAI PARTNERS and
to the Complainant’s domain name <paipartners.com>, is inherently misleading. UDRP panels have found
that domain names identical to a complainant’s trademark carry a high risk of implied affiliation.
WIPO Overview 3.0, section 2.5.1.
Therefore, the Panel finds the second element of the Policy has also been established.
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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 finds that, in light of i) the prior registration and use of the trademark PAI PARTNERS in connection with the services provided by the Complainant’s private equity firm since 1872; ii) the promotion of the Complainant’s business online via the website “ iii) the distinctiveness of the PAI PARTNERS mark; and iv) the identity of the disputed domain name with the Complainant’s PAI PARTNERS mark and its domain name <paipartners.com>, the Respondent likely registered the disputed domain name having the Complainant and its trademark in mind.
Moreover, the Complainant has demonstrated that the Respondent offered to sell the disputed domain name for the amount of USD 1,450. The Panel finds that, on balance of probabilities, the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name (absent any evidence from the Respondent to the contrary), according to paragraph 4(b)(i) of the Policy.
Furthermore, the Panel finds paragraph 4(b)(ii) applicable in this case since the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name and has clearly engaged in a pattern of such conduct since it registered additional “.co” domain names incorporating third-party trademarks that have been subject of two prior proceedings under the Policy (BIOFARMA v. Yuran, supra and Teva Pharmaceutical Industries Ltd v. Yuran, supra).
Therefore, the Panel finds that the Complainant has established the third element of the Policy as well.
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 <paipartners.co> be transferred to the Complainant.
/Luca Barbero/
Luca Barbero
Sole Panelist
Date: January 22, 2025
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