The Complainant is L.M.X. Holding of Montlimart, France, represented by Cabinet Boettcher, France.
The Respondent is admin, Han-Jin, Ko of Daegu, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <tati.com> is registered with Cydentity, Inc. dba Cypack.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2009. On November 10, 2009, the Center transmitted by email to Cydentity, Inc. dba Cypack.com a request for registrar verification in connection with the disputed domain name. On November 12, 2009, Cydentity, Inc. dba Cypack.com transmitted by email to the Center its verification response, providing the registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to the notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 17, 2009. 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”).
On November 13, 2009, the Center issued a Language of Proceeding notification, inviting comment from the parties. On November 16, 2009, the Complainant submitted a request that English be the language of the proceeding. On the same day, the Respondent expressed an objection to the Complainant's request. On November 18, 2009, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that in accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of the proceeding.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on November 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for the Response was December 8, 2009. However, the Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 9, 2009.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on December 16, 2009. 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 corporation which has acquired the business and the trademark rights from its predecessor “Textile Diffusion (SA)” which was established in 1948. The Complainant and its predecessor have conducted a retailer business notably for clothing using the trademark TATI for more than 60 years. It has French trademark registrations for the marks TATI (and design) No. 1 641 010 and TATI No. 1 444 883 in classes of goods and services 2 through 42 which remain in force; and international trademark registrations for the mark TATI (and design) Nos. 642902, 706403, 641903, and 622027 in respect of cosmetics, jewelry, leather and goods made of leather such as bags or purses, household products, all kinds of fabric and clothing. In addition, the Complainant registered trademarks containing TATI in various countries.
The disputed domain name was registered on March 28, 2002.
5. Parties' Contentions
A. Complainant
i) The disputed domain name is identical to the trademark TATI;
ii) The Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name because it does not own any trademark for TATI, the website used in connection with the disputed domain name does not have any content on its own, the Respondent has no business activity under the name of Tati, and the Complainant has no legal or business relationship with the Respondent; and
iii) The disputed domain name should be considered as having been registered and used in bad faith by the Respondent because its use of the disputed domain name appears to be merely intended to sell the domain name for a profit, the website of the disputed domain name contains a list of links, the Complainant's trademark TATI is very well-known, and the Respondent is a well-known cybersquatter, et als.
B. Respondent
The Respondent did not reply to the Complainant's contentions by saying that it could not prepare and submit a Response because it did not understand the Complaint that was submitted in English.
6. Discussion and Findings
A. The language of the proceeding
The Registrar of the disputed domain name has informed the Center that the language of the relevant registration agreement was Korean. On November 16, 2009, the Complainant submitted a request that English be the language of the proceeding on the ground that: i) the Respondent knows at least English, as evidenced by the content of the website at the disputed domain name; ii) the name of the Respondent includes an English word; iii) the Complainant is not based in an English speaking country; and iv) taking into account that the panel determined that the language of the proceeding was English in DaimlerChrysler AG v. 3v Networks a/k/a Com & Networks,
WIPO Case No. D2006-0450 (3v Networks appears the same identity as the Respondent from the relevant records).
The Respondent indicated an objection to the Complainant's request. The Respondent asserted that it could not prepare and submit a Response as it did not understand the Complaint that was submitted in English.
It is the Panel's view that the Respondent appears to have ability to communicate in English from the facts that the entire content displayed at the disputed domain name is in English as well as the websites to which the provided links resolve, that the Respondent was able to communicate in English without any apparent problems during the negotiations for the purchase of another disputed domain name in DaimlerChrysler AG, supra, and that there is no advantage in favor of the Complainant with the English language being the language of the proceeding as the Complainant is French. As such, the Panel finds that the principles of paragraph 11(a) of the Rules would be best served by accepting the filings in the preferred language of the parties and rendering the decision in the English language (See Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L.,
WIPO Case No. DRO2006-0001). Therefore, the Panel determines that the language of the present proceeding is English.
B. The Respondent's default
The Respondent contended that the language of the proceeding be Korean and that it could not prepare a Response because it did not understand the Complaint that was submitted in English. In fact, the Respondent did not submit any response by the due date. However, the Respondent appears to have the ability to communicate in English as discussed above, and the Center gave it the opportunity to file the Response even in Korean by notifying it of the Center's preliminary decision to accept a Response in either Korean or English and appoint a panel familiar with both languages. As such, the Panel finds that the Respondent's contention does not affect its default.
C. Identical or Confusingly Similar
The Complainant has French trademark registrations for the marks TATI (and design) No. 1 641 010 and TATI No. 1 444 883 in classes of goods and services 2 through 42 which remain in force; and international trademark registrations for the marks TATI (and design) Nos. 642902, 706403, 641903, and 622027 in respect of cosmetics, jewelry, leather and goods made of leather such as bags or purses, household products, all kinds of fabric and clothing. In addition, the Complainant registered trademarks containing TATI in various countries. All of these trademark registrations predate the registration of the disputed domain name as evidenced by the copies of the Complainant's trademark registrations.
In determining similarity of the disputed domain name and the Complainant's trademarks, the non-distinctive element “.com” in the disputed domain name is not considered. As such, the Panel finds that the disputed domain name is confusingly similar to the word mark TATI of the Complainant and the first element of the Policy has been established.
D. Rights or Legitimate Interests
The Panel finds in the current record that the Respondent has not been commonly known by the name Tati and that the Complainant has not authorized or licensed the Respondent to use the Complainant's TATI trademark in any way. None of the Complainant's trademarks TATI (and design), TATI, or TATI MARIAGE is registered in the name of the Respondent according to the outcome of the search conducted by the Complainant. The Respondent does not appear to use the disputed domain name in a legitimate way. There is no demonstrable use or preparation for use of the domain name in connection with a bona fide offering of goods or services. As such, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the second element of the Policy has been established.
E. Registered and Used in Bad Faith
The Complainant and its predecessor have been in the retailer business in respect of various products notably for clothing for more than sixty years since 1948. According to the newspaper and magazine articles especially published on the TATI's 60th anniversary, the trademark TATI is regarded part of the commercial and cultural heritage of France. In view of the long history of the trademark TATI and its consistent use, the notoriety of the Complainant's trademark TATI is recognized.
The notoriety of the Complainant's trademark in respect of retailer business of various goods is such that a prima facie presumption is raised that the Respondent registered the disputed domain name for the purpose of using it in some way to attract for commercial gain users to its web site by creating a likelihood of confusion with the Complainant's trademark.
The Respondent must have been aware of the existence of the Complainant and its trademarks TATI (and design) and/or TATI at the time of registering the disputed domain name due to the following facts:
i) the well-known reputation of the Complainant and its trademark, and
ii) the website at the disputed domain name contains a list of links in which the link “Tati Mariage” one of the Complainant's trademarks appears.
Further, the Respondent's use of the disputed domain name appears to be intended to sell the domain name from the fact that its website attached with the disputed domain name contains the sentence “Contact us if you are interested in above domain name.”
It is also noted that when an Internet user clicks on the link “Tati Mariage”, another page appears, which contains several other links, being related directly or indirectly to the Complainant's business competitors in the field of wedding clothing, and more specifically wedding dresses. In light of the fact above, it is recognized that the Respondent has intentionally attempted to attract, for commercial gain Internet users to its website 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 its website or location or of a product or service on its website or location. Whether or not the Respondent has actually had income does not matter (See Bayerische Motoren Werke AG v. bmwrider llc, WIPO Case No. D2008-0610; Roust Trading Limited v. AMG LLC,
WIPO Case No. D2007-1857; and Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,
WIPO Case No. D2007-0267).
In this respect, the Panel finds that the registration of the disputed domain name was made in bad faith for the purpose of gaining unjust commercial gains.
For all of the above considerations, the Panel finds that the third element of the Policy has been established.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tati.com> be transferred to the Complainant.
Ho-Hyun Nahm Sole Panelist
Dated: December 30, 2009
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