WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ESMOD v. Esmod Beijing
Case No. D2016-2186
1. The Parties
The Complainant is ESMOD of Paris, France, represented by UGGC Avocats, France.
The Respondent is Esmod Beijing of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <esmodbeijing.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 October 28, 2016. On October 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 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 November 1, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On November 2, 2016, the Complainant requested for English to 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 of the Complaint, and the proceedings commenced on November 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2016.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on December 19, 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
A. Complainant
The Complainant is a company incorporated in France and is the operator of the first fashion design
school in the world, which was set up in 1841. The Complainant is the owner of two international trade mark registrations for its trade mark ESMOD (“the Trade Mark”): international trade mark registration No. 754496 designating France, China and Russian Federation, with a registration date of March 14, 2001; and international trade mark registration No. 873809 designating several countries including France, China, Russian Federation, the United States of America and the United Kingdom of Great Britain and Northern Ireland, with a registration date of December 7, 2005.
B. Respondent
The Respondent is an entity based in Beijing, China.
C. The Disputed Domain Name
The disputed domain name was registered on December 25, 2005.
D. Passive Use of the Disputed Domain Name
The disputed domain name is not currently being used.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
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, 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. However, 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 burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding be English or French, on the grounds that:
1. The franchise agreement executed between the parties on March 22, 2011 (the “Franchise Agreement”) specifies that any disputes between the parties are to be resolved by arbitration in the English language; and
2. The settlement agreement executed between the parties on March 11, 2015 (the “Settlement Agreement”) specifies that any disputes between the parties are to be resolved by arbitration in the French language.
The Respondent, having received the Center’s communication regarding the language of the proceeding in both Chinese and English, did not make any submissions regarding the language of the proceeding. Having received notice of the proceeding in both Chinese and English, the Respondent chose not to file a response.
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 Respondent’s contractual agreement to resolve any disputes regarding the Trade Mark in either English or French, the Panel determines that the language of the proceeding shall be English.
The Panel further considers that, in light of the Respondent’s decision to take no part in this proceeding, it would be inappropriate to conduct the proceeding in Chinese, which would necessarily involve extra costs on the part of the Complainant in translating the Complaint into Chinese, and would delay the resolution of this proceeding.
In all the circumstances, 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 which incidentally predate the date of registration of the disputed domain name.
The disputed domain name comprises the Trade Mark in its entirety, together with the non-distinctive word “beijing”, the name of the city in which the Respondent is based, which does not serve to distinguish the disputed domain name from the Trade Mark in any significant way.
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:
(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 Respondent was previously authorised by the Complainant, under the Franchise Agreement, to use the Trade Mark in relation to the Respondent’s fashion school operated in Beijing, for a period of time from September 1, 2010 to August 31, 2013. The rights granted under the Franchise Agreement were limited, and did not extend to the right to register any domain names comprising or similar to the Trade Mark.
Pursuant to the Settlement Agreement, the Respondent was granted further limited rights to use the Trade Mark up until June 30, 2016, but such licensed use of the Trade Mark was strictly limited to using the Trade Mark in the interior of the Respondent’s fashion school in Beijing, and only in relation to the training of fashion students at such location. Furthermore, pursuant to the Settlement Agreement, the Respondent expressly agreed not to otherwise use the Trade Mark in any way whatsoever, including using the mark on the Internet or via any other means of communication.
The Complainant has not otherwise 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.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
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 therefore 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.
C. Registered and Used in Bad Faith
The disputed domain name was registered on December 25, 2005. This is several years before the date of the Franchise Agreement. There is no evidence before the Panel as to any use which may have been made of the disputed domain name, whether prior to the date of the Franchise Agreement, or otherwise (and whether by the Respondent or by any other person or entity).
The date of registration of the disputed domain name does however postdate the registration dates of both of the Complainant’s international registrations for the Trade Mark. Furthermore, the undisputed submissions of the Complainant herein are that it has been using the Trade Mark for well over 100 years in relation to its fashion school business.
The evidence put before the Panel by the Complainant is that, as at the date of the Complaint, the disputed domain name was being passively held. That remains the position as at the date of this Decision.
The Complainant contends that, in pre-Complaint correspondence between the parties, the Respondent had indicated that it was unable to delete the registration for the disputed domain name on its own, but that it would not be renewing its registration for the disputed domain name. The Respondent has not however agreed to effect the transfer of the disputed domain name to the Complainant, and, according to the Registrar, the renewal date for the disputed domain name was December 25, 2016.
The undisputed evidence before the Panel is that the Respondent has acted in apparent breach of both the Franchise Agreement and the Settlement Agreement by registering and continuing to hold the disputed domain name.
For the foregoing reasons, the Panel concludes that the disputed domain name has been 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 <esmodbeijing.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: January 2, 2017
