The Complainant is San Patrick, S.L. of Barcelona, Spain.
The Respondent is Young Holdings Limited of GuangZhou, GuangDong Province, People's Republic of China.
2. The Domain Name and Registrar
The disputed domain name <manuelmota.com> is registered with Guangzhou Ming Yang Information Technology Co., Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2009. On May 5, 2009, the Center transmitted by email to Guangzhou Ming Yang Information Technology Co., Ltd a request for registrar verification in connection with the disputed domain name. On May 7, 2009, Guangzhou Ming Yang Information Technology Co., Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details. On May 8, 2009, the Center transmitted an email to the Parties in both Chinese and English concerning the language of the proceeding. On May 12, 2009, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not submit any comments with respect to the language of the proceeding by the due date. On May 8, 2009, the Center communicated to the Complainant regarding the Mutual Jurisdiction issue. An amendment to the Complaint was submitted to the Center on May 13, 2009.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on May 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2009. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent's default on June 8, 2009.
The Center appointed Sebastian Hughes as the sole panelist in this matter on June 17, 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 the owner of a number of trade marks embodying the word MANUEL MOTA. These registrations include the following:
(1) International Trade Mark no. 933727 MANUEL MOTA covering several countries, including China, Spain and the United States of America;
(2) Community Trade Mark no. 2900736 MANUEL MOTA in classes 25 and 42;
(3) Community Trade Mark no. 5444906 MANUEL MOTA in classes 3, 9, 18 and 35;
(4) Spanish Trade Mark no. 2509006 MANUEL MOTA in classes 25 and 42; and
(5) Spanish Trade Mark no. 2739644 MANUEL MOTA in classes 3, 9 and 18.
The disputed domain name was registered on December 15, 2008.
5. Parties' Contentions
A. Complainant
The following facts are alleged by the Complainant in the Complaint and have not been disputed by the Respondent.
The Complainant is a Spanish company, which belongs to the Pronovias group of companies. Pronovias, established in 1964, is one of the most important manufacturers of wedding dresses in the world. Pronovias employs approximately 650 employees, operates approximately 120 stores and distributes its wedding dresses in 60 countries.
Manuel Mota is a wedding dress designer employed by the Complainant. Manuel Mota is one of the most important designers of wedding dresses and is now considered one of the most important names in the industry and his gowns are the most sought after by brides from around the world. Manuel Mota has been working with the Complainant for almost twenty years.
The Complainant is the owner of the domain names <pronovias.com> and <maneulmota.es> and operates the websites to which these domain names are resolved.
Pronovias advertises its wedding dresses worldwide in various magazines, catalogues and brochures as well as via its “www.pronovias.com” and “www.manuelmota.es” websites.
The Complainant issued cease and desist letters to the Respondent on March 25, 2009 and April 14, 2009 in relation to the disputed domain name. The Complainant did not receive any reply from the Respondent to these letters.
1. Identical or Confusingly Similar
For the reasons specified above, the disputed domain name is similar to the Complainant's registered trade marks.
2. No Rights and Legitimate Interests
The Respondent has no right or legitimate interest in and to the domain name <manuelmota.com> which is the name of the Complainant's designer and an important name in the industry of wedding dresses.
The Complainant has not licensed or otherwise authorised the Respondent to use its trade mark or to apply for any domain name incorporating the trade mark. There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the domain name.
There is no holder of rights to the name MANUEL MOTA other than the Complainant in either the Chinese Trade Mark Office (where the Complainant has registered the trade mark MANUEL MOTA) or the Registry of Companies. (The Complainant did not however submit any evidence to support these assertions).
The Respondent's name does not coincide with the disputed domain name.
Google searches for “Manuel Mota” identify only the Complainant and its well-known wedding dress designer, Manuel Mota.
Therefore prior to any notice of this complaint, the Respondent has not used the domain names in connection with any bona fide offering of goods or services.
The Respondent holds no rights or legitimate interests to <manuelmota.com> since in the sector of wedding dresses there is not any other company or designer with this name.
3. Bad Faith
The foregoing implies that the disputed domain name, identifying only the Complainant and not linked to any other individual or legal entity in the world, can only have been registered in bad faith by the Respondent, with the sole aim of attracting a “misleaded” (sic) public to the Respondent's website in the search for information on the referred individual.
The Respondent has a clear purpose of disrupting the business of Pronovias, since Pronovias takes care of its creations' quality and is the most important wedding dress company in the world and in China where the domain name owner is located. That is why the registration of this domain name cannot be accidental.
The Respondent is making passive holding of the domain name, since the website operated by the Respondent to which the disputed domain name is resolved (“the Website”) seems to offer services related to the Registrar of the disputed domain name. Nevertheless, on the flap above the Website appears different links to other activities which may be obtaining further visitors due to the confusion of the Internet users who look for information about Manuel Mota.
If anyone searches “Manuel Mota” on the Internet, it is very easy that someone would enter the name <manuelmota.com> in order to obtain information about this designer. In that case the website “www.manuelmota.com” may induce errors to the public.
The Complainant has contacted the Respondent in order to obtain the transfer of the cited domain name, but has not received any response.
China was one of the first countries in the world to acquire wedding dresses from Pronovias. There is a huge Chinese market for trade marks and domain names related to Pronovias and Manuel Mota. An unfair use of these trade marks may cause serious damage to the Complainant.
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 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. From the evidence presented in the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be English.
Paragraph 11(a) 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 other words, it is important 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 (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) Electrical Appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The domain name is written in Latin characters (English language does also use the Latin alphabet and not the Chinese one);
(2) The domain name agreement is written in English language although the Registrar's website is in Chinese;
(3) The name of the Registrant is in English: “Young Holdings Limited”;
(4) The Complainant does not deserve to support a translation into Chinese of the proceeding bearing in mind that the risk of confusion or association with its trade mark MANUEL MOTA is possible due to the fact that domain name may be understood for all people who speak English, Spanish or any other language which uses the same alphabet.
The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
On May 7, 2009, Guangzhou Ming Yang Information Technology Co., Ltd transmitted by email to the Center its verification response confirming that the language of the registration agreement is Chinese.
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 (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
According to the Whois search for the disputed domain name, the address of the Respondent is 12/F, Ruttonjee House, 11 Duddell Street, Central, GuangZhou, GuangDong, CN 000000.
According to the Whois search for the disputed domain name, the contact email address for the Respondent is: […]@younghk.com.
The street address for the Respondent is “12/F, Ruttonjee House, 11 Duddell Street, Central”, an address in Hong Kong, SAR of China (“Hong Kong”). The contact email address “[…]@younghk.com” contains the letters “hk” which is an abbreviation for “Hong Kong”.
The Respondent is a company incorporated and registered in Hong Kong.
The official languages of Hong Kong are English and the Mandarin and Cantonese dialects of Chinese.
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding. Further, the Complainant will be spared the burden of dealing with Chinese as the language of the proceeding.
Having considered all the matters above, this Panel determines under paragraph 11(a) that English shall be the language of the proceeding.
6.2 Decision
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(1) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trade mark MANUEL MOTA (“the Trade Mark”) acquired through use and registration.
The Panel finds that the disputed domain name wholly incorporates the Trade Mark and is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services;
(ii) the fact that the Respondent has commonly been known by the domain name; and
(iii) legitimate non-commercial or fair use of the domain name.
The Complainant has not authorised, licensed, endorsed or otherwise permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent's registration of the disputed domain name by over 20 years. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights or that the disputed domain name is used in connection with a bona fide offering of goods or services. The Panel does not agree with the Complainant's assertion that the disputed domain name is being held passively. However, absent evidence from the Respondent to the contrary, the Panel finds that the Website is either a commercial link farm, or the Respondent has been using a “domain parking service” (Owens Corning v. NA WIPO Case No. D2007-1143). By providing links to other websites, the Respondent has intentionally or knowingly attempted to attract, for commercial gain, Internet users to the Website, by creating the likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of the Website, the hyperlinked websites or products or services on such sites (Schneider Electric SA v. Ningbo Wecans Network Technology Co., Ltd., Ningbo Eurosin International Trade Co., Ltd., WIPO Case No. D2004-0554).
There has been no evidence adduced to show that the Respondent has any registered trade mark rights with respect to the disputed domain name. 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 non-commercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with the Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Website.
According to the evidence filed, the Complainant's Manuel Mota dresses are available for sale in Hong Kong, where the Respondent is based.
By intentionally creating a likelihood of confusion with the Trade Mark through unlawfully capitalizing on the name recognition and goodwill of the Trade Mark to divert Internet traffic to the Website, the Respondent has registered and has been using the disputed domain name in bad faith (Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127).
To establish an intention for commercial gain, evidence is required to indicate that it is “more likely than not” that intention existed (Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).
The Panel notes the hyperlinks in the Respondent's Website linking to various websites that provide other kinds of services or products. The Panel concludes it is reasonable to infer that these hyperlinks are for advertising purposes. In all the circumstances, the Panel concludes that the Respondent is making a commercial gain through its use of the disputed domain name. In view of the reputation of the Complainant and the popularity of wedding dresses designed by Manuel Mota worldwide and in Hong Kong, the Panel finds that the Respondent has registered and used the disputed domain name to benefit from the Complainant's goodwill and reputation with an intention to make a commercial gain, by creating a likelihood of confusion with the Trade Mark as to the commercial origin or endorsement of the Website.
The Panel therefore concludes that the Respondent's registration and use of the disputed domain name falls under paragraph 4(b)(iv).
The Panel also finds that the Respondent has provided false or incomplete contact information. According to the Whois search for the disputed domain name, the address of the Respondent is: [,,,]12/F, Ruttonjee House, 11 Duddell Street, Central, GuangZhou, GuangDong, CN 000000.
The Street address“12/F, Ruttonjee House, 11 Duddell Street, Central” is an address in Hong Kong. Hong Kong is a separate jurisdiction to, and is not a part of, GuangDong, China. Guangzhou is a city in GuangDong province, China. The post code “CN 000000” is not a valid post code for China. Hong Kong does not use postcodes.
Supplying false contact information is itself evidence of bad faith (Telstra Corporation Limited v. NuclearMarshmallows, WIPO Case No. D2000-0003; Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068).
The failure of the Respondent to reply to the Complainant's cease-and-desist letters or to respond to the Complaint supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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, <manuelmota.com> be transferred to the Complainant.
Sebastian Hughes Sole Panelist
Dated: June 30, 2009
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