Administrative panel decision paris Saint Germain Football V. Ai Si Ai Si, ma guobao, Yin Lin, Mi Ni Mi Ni




Yüklə 39.2 Kb.
tarix16.04.2016
ölçüsü39.2 Kb.




ARBITRATION
AND
MEDIATION CENTER



ADMINISTRATIVE PANEL DECISION

Paris Saint Germain Football v. Ai Si Ai Si, ma guobao, Yin Lin, Mi Ni Mi Ni

Case No. D2015-1396



1. The Parties

The Complainant is Paris Saint Germain Football of Paris, France, represented by Cabinet Plasseraud, France.


The Respondents are Ai Si Ai Si of Chang Dao, United States of America; ma guobao of Guangzhou, Guangdong, China; Yin Lin of Fuzhou, Fujian, China; Mi Ni Mi Ni of Beijing, China.


2. The Domain Name and Registrar

The disputed domain names are, respectively,


,
, and
. They are registered with Xin Net Technology Corp., Jiangsu Bangning Science & technology Co. Ltd. and Ourdomains Limited (the “Registrars”).


3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2015. On August 7, 2015, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On August 10 and 11, 2015, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants and providing the contact details.


On August 13, 2015, the Center transmitted and email communication to the Parties in English and Chinese regarding the language of proceeding. On August 14, 2015, the Complainant submitted its request that English be the language of proceeding. The Respondent did not submit any comments within the specified due date.
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 Respondents of the Complaint, and the proceeding commenced on August 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2015. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 14, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on October 1, 2015. 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, commonly called by its initials, PSG, is a French football club established in 1970 and based in Paris. It has a considerable reputation in the area of professional football not only in France but across the world. It is also one of the most prominent football clubs in Europe, ranking 9th on the UEFA rankings for club competitions.


The Complainant’s official website is accessible at “www.psg.fr” and is published in several languages including in Chinese. Its official online store is accessible at “www.boutiquepsg.fr”.
The Complainant owns a number of trade mark registrations for PSG, PARIS SAINT GERMAIN and PSG PARIS SAINT GERMAIN, amongst other marks. It cited, for instance, its French trade mark registration Nos. 1564786 (filed on February 14, 1989) and 3647436 (filed on April 29, 2009), and Community trade mark registration Nos. 314336 and 5877956.

The disputed domain name
was registered on June 9, 2015;
on July 15, 2015; on January 21, 2015; and
on February 9, 2015. The Registrars with which the respective domain names are registered are different except that the disputed domain names and
share the same Registrar.



5. Parties’ Contentions

A. Complainant

(i) The disputed domain names are confusingly similar to the trade mark PSG in which the Complainant has rights. The disputed domain names differ from PSG by the addition of the following terms: “maillot”, “maillots” and “jerseys” and the generic Top-Level Domain (“gTLD”) “.com”. The said gTLD has to be ignored in the consideration of this issue under paragraph 4(a)(i) of the Policy. “Maillot” is the French term for “jersey”. The words added to “psg” in the disputed domain names are not sufficient to distinguish or differentiate the disputed domain names from the Complainant’s PSG trade mark since “psg” is the dominant component of the disputed domain names. The words “maillot”, “maillots” and “jerseys” are descriptive of goods covered by the Complainant’s trade mark registrations and goods sold on the websites of the Respondents accessed through


,
and . The addition of these words to “psg” in the disputed domain names in fact aggravate the likelihood of confusion as they refer to goods for which the Complainant’s PSG trade marks are intensely used.
(ii) The Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents have never asked for nor have they ever been given permission by the Complainant to register and use any domain name incorporating the Complainant’s PSG trade mark. The Complainant has no relationship with the Respondents and has never granted them a licence or rights in the PSG trade mark. The Respondents are not making a legitimate noncommercial or fair use of the disputed domain names
,
and as they redirect toward online stores selling football jerseys. Moreover, the websites to which these disputed domain names resolve reproduce, without the Complainant’s consent, graphic elements and trade marks from the Complainant’s official website. The Respondents also sell counterfeit versions of the Complainant’s current-season football jerseys and clothing. The disputed domain name
is passively held.

(iii) The disputed domain names were registered and are being used in bad faith. They were registered long after the Complainant’s trade mark registrations. The combination of the Complainant’s well-known PSG trade mark with words directly referring to goods for which the Complainant’s PSG trade marks are intensely used in each of the disputed domain names cannot be a coincidence. Three of the four disputed domain names are linked to the same email address. The Complainant also tendered evidence that the said email address is associated with a number of other domain name registrations which comprise the names of famous brands or trade marks of famous sports clubs, combined with generic terms such as “shirts”, “jerseys” or “outlets”: examples of these sports clubs are REAL MADRID, CHICAGO BULLS, FC BARCELONA and LOS ANGELES LAKERS.


The Respondents were fully aware of the Complainant and its prior rights at the time of the registration of the disputed domain names and are using them in bad faith as the three active disputed domain names redirect to websites selling counterfeit football jerseys of the Complainant’s football team; they mimick the Complainant’s official website, thus passing themselves off as official online stores (the text “Official PSG Magasin en Ligne” meaning “Official PSG online Store” appears on the webpages and provide the contact email [ ]@psgmaillot.com). The Respondents have therefore registered and are using the disputed domain names in order to attract Internet users by creating a likelihood of confusion with the Complainant’s PSG trade mark as to the source, sponsorship, affiliation or endorsement of their websites.
While the
disputed domain name does not redirect to an active website, it has to be considered in light of the use of the other disputed domain names. The passive holding of the disputed domain name
constitutes use in bad faith.
Further, information on the Respondents as found on the WhoIs rcords appears to be questionable and the websites to which the
,
and resolve do not clearly identify their publishers. This demonstrates an intention of the Respondents to frustrate any attempt to identify them.

B. Respondents

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




6. Discussion and Findings



Preliminary Issue – Multiple Respondents
There are multiple disputed domain names and also multiple Respondents. Paragraph 3(c) of the Rules provides as follows: “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”
The Complainant submitted a request for a consolidation of the proceedings in the single Complaint filed. The Center sent an email to the Parties in both English and Chinese on August 24, 2015, noting that the Complainant was filed in respect of four domain names with seemingly distinct registrants. The Center stated that it would put the Complainant’s request for consolidation before the Panel.
The Complainant’s basis for its request is its strong belief that the four disputed domain names are subject to common control. The disputed domain names
, and
share the same Registrant and/or administrative contact email. The disputed domain name
redirects towards the URL “www.psgmaillots.com”. The corresponding website was initially accessible through the URL ”www.psgmaillot.com” in early July 2015 before it was removed by its hosting provider following a takedown request sent by the Complainant. The disputed domain name redirects towards an almost identical website to the one accessible through the disputed domain names
and
. The websites accessible through
,
and share the same contact email and all the disputed domain names combine the trade mark PSG with the word “jerseys” or “maillot” which is the French term for “jersey”.
Paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition states the consensus view on this issue as follows:
“WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.”
In the case of Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281, the Panel held:
“…indicia of common control have been found based on commonalities in registrant information, such as shared administrative or technical contacts and shared postal or email addresses, as well as other circumstances in the record indicating that the respondents are related or that a sufficient unity of interests otherwise exists that they may be essentially treated as a single domain name holder for purposes of paragraph 3(c) of the Rules.
The Panel also finds it appropriate to look in certain respects for guidance to panel decisions under paragraph 10(e) regarding the consolidation of multiple complainants and multiple domain names against a single domain name registrant. With a view to the general principles articulated in these decisions, even where common control of the disputed domain names is established, in this Panel’s view the disputes must still be appropriate for consolidation in the context of the summary administrative proceeding provided for under the Policy. Thus, it is incumbent upon panels to determine that any consolidation of multiple respondents under paragraph 10(e) will be both procedurally efficient and fair and equitable to all parties. See, e.g.National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltdsupra.
In a manner similar to situations involving requests for the consolidation of multiple complainants, this Panel also finds it appropriate for the administrative service provider to act in a preliminary gatekeeper capacity and to decline to accept complainants requesting consolidation of multiple respondents which do not prima facie satisfy the requisite criteria. As the panel in Fulham Football Club (1987) Limited, supra, observed in connection with requests for consolidation of multiple complainants:
‘The role of the administrative service provider is to act as a gatekeeper by clearly rejecting complaints which do not fulfil the requisite criteria. Once a complaint is admitted on a prima facie basis the respondent will have its opportunity to make submissions as to validity of the complaint together with its substantive response. The panel will then be in a position to determine the procedural issues based on both parties’ submissions and the panel may of course request further statements or materials from either party if found to be necessary. There seems to this Panel to be no compelling reason to impose an additional step into the process which would require a provider to seek comments from the respondent, or to place the onus of review and determination of competing submissions upon the administrative service provider.’

These observations are in the Panel’s view as equally applicable to cases involving requests for consolidation of multiple respondents.” 


The material and information that the Complainant has put forward is persuasive and the Panel also takes cognizance of the fact that the disputed domain names are rather similar to one another, all containing the letters “psg” which form the Complainant’s trade mark. The Respondents’ addresses in the WhoIs records appear to be deliberately false and incomplete. The Panel notes that the disputed domain names
and
were registered about a month of each other and the disputed domain names and
were registered within a month of each other. There is also a strong common connection with France since three of the disputed domain names contain the French word “maillot” which corresponds to the term “jersey” found in the fourth disputed domain name, and the trade mark owner, the Complainant, is French. There is clearly a specific common grievance in this case which has not been disputed by the Respondents. The Panel is satisfied that the Respondent for the disputed domain names is one and the same person or entity and therefore finds the condition prescribed by paragraph 3(c) of the Rules has been met.

A. Language of the Proceeding

The language of the Registration Agreements is Chinese whereas the Complaint was filed in English. The Complainant requested that English be the language of the proceeding. It submitted that the use of the words “jerseys” in one of the disputed domain names, and the use of the words “shirts”, “jerseys” or “outlets” in the other domain name registrations linked to the Respondent’s common email address indicates a basic understanding by the Respondent of the English language. Further, some of the domain names mentioned redirect towards websites published in English. To conduct the proceeding in Chinese would lead to additional delays and translation expenses on the Complainant’s end.


Paragraph 11(a) of the Rules stipulates 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”. Paragraph 10(b) and (c) of the Rules stipulate, respectively, that: “In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and “the Panel shall ensure that the administrative proceeding takes place with due expedition […]”.

Having considered the circumstances of this case, the Panel determines it appropriate that English should be the language of the proceeding. The Respondent has been given ample opportunity to present its case and to dispute the Complainant’s various assertions. It did not participate in the proceeding nor did it respond on the issue of the language of the proceeding. Requiring the Complainant to translate the Complaint and evidence into Chinese would no doubt introduce a significant delay in the proceeding. There is nothing to suggest in this case that the Respondent would be prejudiced if English is adopted as the language of the proceeding.



B. Identical or Confusingly Similar

The Complainant has established that it has rights in the trade mark PSG. The next issue is to consider whether each of the disputed domain names is confusingly similar to the Complainant’s trade mark PSG. The Panel finds that they are indeed confusingly similar as the PSG trade mark is clearly identifiable within each of the disputed domain names. The Panel finds the addition of the terms “maillot”, “maillots” and “jerseys” does not at all diminish or negate the confusing similarity with the PSG trade mark since they are generic and descriptive, in particular of the kind of products the Complainant actively deals in and produces under the PSG trade mark.


The first element of paragraph 4(a) of the Policy has therefore been satisfied.


C. Rights or Legitimate Interests

The Panel finds nothing which would suggest that the Respondent has rights or legitimate interests in the disputed domain names. There is no evidence that the Respondent is commonly known by the name “PSG” nor is there any indication that it could be its initials. On the other hand, the disputed domain names


,
and redirect towards online stores selling football jerseys, and the websites to which these disputed domain names resolve reproduce graphic elements and trade marks from the Complainant’s official website. This prima facie evidence of the Respondent’s lack of rights or legitimate interests and apparent offering by the Respondent of counterfeit products has not been disputed by the Respondent.
In the circumstances of this case, the passive holding of the disputed domain name
does not confer any rights or legitimate interests.
In the absence of evidence to the contrary by the Respondent, the Panel therefore finds that the Respondent does have not rights or legitimate interests in the disputed domain names.

The second element of paragraph 4(a) of the Policy has been satisfied.



D. Registered and Used in Bad Faith

The Panel is satisfied that the Respondent must have been aware of the Complainant and of its PSG trade mark when it registered the disputed domain names. The choice of the disputed domain names and close timing of the respective registrations, the incorporation of the Complainant’s well-known PSG trade mark with the generic terms “maillot”, “maillots” and “jerseys”, are cumulative evidence of the bad faith registration of the disputed domain names. The manner of use of the disputed domain names ,


and
also indicate bad faith as elements of the Complainant’s website have been incorporated without the Complainant’s consent and are intended to create the false impression that the websites are the Complainant’s official website. There is therefore evidence of an intention to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s websites are authentic and that the products sold are authorized and/or endorsed by the Complainant. The passive holding of the disputed domain name
constitutes use in bad faith since it incorporates the Complainant’s well-known trade mark and the Panel is persuaded that the Respondent is one and the same person or entity, and the Panel can conceive of no plausible good faith use to which it could be put.
The Panel therefore finds that the Respondent’s registration and use of the disputed domain names have been in bad faith.
The third element of paragraph 4(a) of the Policy has been satisfied.


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 names ,


,
and
be transferred to the Complainant.

Francine Tan

Sole Panelist



Date: October 17, 2015



Verilənlər bazası müəlliflik hüququ ilə müdafiə olunur ©azrefs.org 2016
rəhbərliyinə müraciət

    Ana səhifə