SAKS.COM LLC v 蒲润 (Pu Run)

WIPO Case No. D2023-1652

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

SAKS.COM LLC v. 蒲润 (Pu Run)

Case No. D2023-1652

1. The Parties

The Complainant is SAKS.COM LLC, United States of America (“United States”), represented by Loeb &

Loeb, LLP, United States.

The Respondent is 蒲润 (Pu Run), China.

2. The Domain Name and Registrar

The disputed domain name <saksfifthavenue.top> is registered with Alibaba Cloud Computing Ltd. d/b/a

HiChina ( (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April
18, 2023. On April 19, 2023, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On April 20, 2023, 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 April
21, 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 amendment to the
Complaint in English on April 25, 2023.

On April 21, 2023, the Center informed the parties in Chinese and English, that the language of the registration agreement for the disputed domain name is Chinese. On April 25, 2023, 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 amendment to the 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

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and English of the Complaint, and the proceeding commenced on April 28, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2023.

The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on June 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

A. Complainant

The Complainant is a company incorporated in the State of Delaware in the United States and the operator of luxury retail stores in the United States and elsewhere since the early 1900s under the trade mark SAKS FIFTH AVENUE (the “Trade Mark”).

The Complainant is the owner of numerous registrations in jurisdictions worldwide for the Trade Mark,
including United States registration No. 627814, registered on May 29, 1956; and Chinese registration No.

777990, registered on February 14, 1995.

B. Respondent

The Respondent is located in China.

C. The Disputed Domain Name

The disputed domain name was registered on January 16, 2023.

D. Use of the Disputed Domain Name

The disputed domain name was previously resolved to an English language “phishing” website, which impersonates an official or authorised website of the Complainant, featuring prominently the Complainant’s stylized version of the Trade Mark, and inviting unsuspecting users to enter user names, log in passwords, invitation codes and other personal and identifying information (the “Website”).

As at the date of this Decision, the disputed domain name is no longer resolved to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade disputed domain name has been registered and is being used in bad faith.

B. Respondent

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

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6. Discussion and Findings

6.1. 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.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burden being placed on the parties and undue delay to the proceeding (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

The Complainant has requested that the language of the proceeding be English, for several reasons, including the fact the Website was an English language website.

The Respondent did not make any submissions regarding the language of the proceeding, and did not file
any response in either Chinese or English, after the Respondent had been duly notified in both Chinese and
English of the language of the proceeding, and the Complaint.

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.

In light of the English language content of the Website, the Panel finds there is sufficient evidence in support of the conclusion that the Respondent is conversant in English.

The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.

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 Elements of the Policy

The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.

Disregarding the generic Top-Level Domain (“gTLDs) “.top”, the disputed domain name is identical to the

Trade Mark.

The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:

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(i)        before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii)       the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or

(iii)      the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden

is thus on the Respondent to produce evidence to rebut this presumption.

The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used fraudulently in respect of the Website.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

In light of the prior manner of use of the disputed domain name highlighted in section 6.2.B above, the Panel
concludes that the disputed domain name has been registered and used in bad faith pursuant to paragraph
4(b)(iv) of the Policy.

The fact the Website has been taken down at some stage following the filing of the Complaint provides further support for a finding of bad faith in this proceeding.

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 <saksfifthavenue.top> be transferred to the Complainant.

/Sebastian M.W. Hughes/
Sebastian M.W. Hughes
Sole Panelist
Dated: June 21, 2023