Westmore · UDRP DecisionMansurgavrielbag.com
The Panel ordered transfer of <mansurgavrielbag.com>. It found the domain confusingly similar to the Complainant’s MANSUR GAVRIEL trademark because it incorporated the mark with only the descriptive word “bag” and the “.com” suffix. The Respondent’s undisclosed commercial website offering alleged Mansur Gavriel bags was neither a bona fide offering nor legitimate noncommercial or fair use. Registration and use were in bad faith because the domain and website intentionally created confusion with the Complainant’s mark for commercial gain.
The timeline behind mansurgavrielbag.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind mansurgavrielbag.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The decision illustrates that a domain combining an entire trademark with a term describing the trademark owner’s goods can strengthen rather than avoid the inference of targeting. It also shows that commercial sales of alleged branded products do not establish legitimacy where the website fails to disclose the absence of affiliation and its presentation creates an impression of approval by the trademark owner.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Mansur Gavriel LLC v. Hauge Sophia Case No. D2016-1494 1. The Parties The Complainant is Mansur Gavriel LLC of New York, New York, United States of America (“United States”), represented by Kelley Drye & Warren, LLP, United States. The Respondent is Hauge Sophia of China. 2. The Domain Name and Registrar The disputed domain name <mansurgavrielbag.com> is registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2016. On July 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 27, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On July 27, 2016, the Complainant confirmed 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 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 both Chinese and English of the Complaint, and the proceedings commenced on August 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2016. The Center appointed Matthew Kennedy as the sole panelist in this matter on September 1, 2016. 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 company that sells handbags, wallets and shoes online and through authorized resellers located throughout the world. It is named after its founders Rachel Mansur and Floriana Gavriel. The Complainant owns registrations of the MANSUR GAVRIEL trademark including European Union trademark registration no. 012296737, registered on March 24, 2014 in respect of handbags, tote bags, purses and wallets. The Complainant operates an online retail store at its official website “www.mansurgavriel.com”. The Respondent is an individual located in China. The Respondent’s address in the Registrar’s WhoIs database is manifestly fictitious. The disputed domain name was registered on October 16, 2015. It resolves to a website in English that offers for sale what are alleged to be Mansur Gabriel bags at discounted prices. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s MANSUR GAVRIEL trademark. It incorporates the entirety of that trademark and adds only the generic word “bag”. The Respondent has no rights or legitimate interest in the disputed domain name. The Respondent is not commonly known by that name. The Respondent’s sole intention in registering and using the disputed domain name was to benefit financially from, and unlawfully trade upon, the renown associated with the Complainant’s trademark. The disputed domain name was registered and is being used in bad faith. Given the extensive use, promotion, advertising and publicity of the Complainant’s trademark, and the fact that the Respondent’s website offers goods that are substantially indistinguishable from the Complainant’s goods, the Respondent’s knowledge of Complainant’s rights can be inferred. By including the entirety of the Complainant’s trademark in the disputed domain name, creating a website at the disputed domain name that offers goods substantially indistinguishable from those offered on the Complainant’s official website, and misappropriating images from the Complainant’s website, the Respondent is seeking to create a false association with the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language and Findings Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese. The Complainant requests that the language of the proceeding be English. Its main arguments are that the Respondent appears to be very familiar with the English language, as the disputed domain name resolves to a website entirely in English, that the Complainant is not able to communicate in Chinese and would incur substantial expenses for translation and that the administrative proceeding would be unduly delayed. The Panel notes that all the Center’s email communications with the Parties have been in both Chinese and English. The Respondent was given an opportunity to object to the Complainant’s requests that English be the language of the proceeding but the Respondent did not in fact object. Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding takes place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties (See, for example, Solvay S.A. v. Hyun-Jun Shin , WIPO Case No. D2006-0593 ; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd. , WIPO Case No. D2008-0293 ). The Panel observes that in this proceeding the Complaint was filed in English. The website to which the disputed domain name resolves is in English from which it is reasonable to infer that the Respondent is able to communicate in that language. In any case, the Respondent has not expressed any wish to respond to the Complaint or otherwise participate in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Analysis and Findings Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Complainant has rights in the MANSUR GAVRIEL trademark. The disputed domain name incorporates the Complainant’s MANSUR GAVRIEL trademark but for the space between the words, which cannot be included in a domain name for technical reasons. The disputed domain name includes two additional elements. One additional element is the word “bag” but that is merely a dictionary word. A dictionary word is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant’s trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd. , WIPO Case No. D2001-0110. The other additional element is “.com” but that is merely a generic Top-Level Domain (“gTLD”). A gTLD suffix generally has no capacity to distinguish a domain name from a trademark. See Lego Juris A /S v. Chen Yong , WIPO Case No. D2009-1611 ; Dr. Ing. H.c. F. Porsche AG v. zhanglei , WIPO Case No. D2014-0080 . Consequently, the Complainant’s trademark is the dominant and only distinctive element of the disputed domain name. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (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 trademark 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 trademark or service mark at issue. The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s MANSUR GAVRIEL trademark. As regards the first circumstance, the evidence shows that the Respondent is using the disputed domain name in connection with the offering for sale of what are allegedly the Complainant’s bags. The Complainant states that it is not associated with the Respondent but the website fails to disclose this. Whether or not the products are counterfeit, these facts show that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services. (See Oki Data Americas, Inc. v. ASD, Inc. , WIPO Case No. D2001-0903 ). Accordingly, the Panel does not find that the Respondent’s use falls within the first circumstance of paragraph 4(c) of the Policy. As regards the second circumstance, the Respondent’s name is shown in the Registrar’s WhoIs database as Zhang Runfa in Chinese and Hauge Sofia in English. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy. As regards the third circumstance, the disputed domain name resolves to a website that offers goods for commercial sale. This is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has failed to rebut that case because she did not respond to the Complaint. Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows: “(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.” The Respondent registered the disputed domain name in 2015, over a year after the Complainant obtained its first European Union trademark registration. The Complainant’s trademark does not contain ordinary words but rather is comprised of the Complainant’s founders’ names. The disputed domain name incorporates the Complainant’s trademark, but for the space, with the addition only of the dictionary term “bag” and a gTLD. The website to which the disputed domain name resolves displays the Complainant’s trademark with bags that are allegedly the Complainant’s products. This indicates to the Panel that the Respondent intentionally chose to register the Complainant’s trademark and use it as a domain name. The Respondent uses the disputed domain name, which incorporates the Complainant’s trademark but for the space, with a website that displays the Complainant’s trademark and offers for sale what are alleged to be the Complainant’s products. The Respondent is not associated with the Complainant but this is not disclosed on the website to which the disputed domain name resolves. Further, the website displays the Complainant’s trademark in the same script as that in which it appears on the Complainant’s official website. This gives the impression that the Respondent’s website is approved by, or affiliated with, the Complainant. Given these facts, the Panel considers that the Respondent’s use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products on that website. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 disputed domain name <mansurgavrielbag.com> be transferred to the Complainant. Matthew Kennedy Sole Panelist Date: September 3, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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