YVES SAINT LAURENT v. Khita Kongsansatien
Claim Number: FA1406001565626
Complainant: YVES SAINT LAURENT of Paris, France.
Complainant Representative: Cabinet SANTARELLI of Paris, France.
Respondent: Khita Kongsansatien of Bangkok, International, Thailand.
REGISTRIES and REGISTRARS
Registries: .CLUB DOMAINS, LLC
Registrars: GoDaddy.com, LLC
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
The Honourable Neil Anthony Brown QC, as Examiner.
Complainant submitted: June 20, 2014
Commencement: July 7, 2014
Default Date: July 22, 2014
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain names be suspended for the life of the registration.
Clear and convincing evidence.
Findings of fact
Complainant owns the Community Trademark No. 011445905 for SAINT LAURENT, registered on April 29, 2013 and in force until December 7, 2022.
Complainant also owns the Community Trademark No. 004672358 for YSL, registered on October 6, 2006 and in force until October 7, 2015.
Complainant has established by evidence accepted by the Examiner that each of the trademarks is in current use.
Respondent is the Registrant of the domain names.
Legal Findings and Conclusions
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
IDENTICAL OR CONFUSINGLY SIMILAR
The domain name <saintlaurent.club> is identical to Complainant’s SAINT LAURENT trademark as the whole of the trademark is included in the domain name and the gTLD <.club> is disregarded for the purposes of this comparison.
The domain name <ysl.club> is identical to Complainant’s YSL trademark as the whole of the trademark is included in the domain name and the gTLD <.club> is disregarded for the purposes of this comparison.
The Examiner therefore finds that in the case of each domain name Complainant has made out the ground set out in paragraph 1.2.6.1 of the URS Procedure since it has established that it holds a valid regional trademark registration (Community Trademark registered No. 011445905 in the case of the domain name <saintlaurent.club> and Community Trademark registered No. 004672358, in the case of the domain name <ysl.club>. Moreover, Complainant has established that the respective trademarks are in current use by adducing evidence of print outs from Complainant’s websites.
RIGHTS OR LEGITIMATE INTERESTS
Respondent does not have any rights or legitimate interests to either the domain name <saintlaurent.club> or the domain name <ysl.club>. That is so because, first, Complainant has established that Respondent has no rights or legitimate interests in respect of the Domain Names as Complainant has not licensed or authorized Respondent to use the YSL or SAINT LAURENT trademarks in any way or to register any domain name incorporating those trademarks. It is also apparent from the totality of the evidence that Respondent is not known by either domain name and has no affiliation with Complainant. Moreover, Respondent has not filed a Response in this proceeding and has not sought by any other means to show that it has a right or legitimate interest in either domain name. The Examiner therefore finds that in the case of each domain name Complainant has made out the ground set out in paragraph 1.2.6.2 of the URS Procedure since it has established that Respondent as Registrant has no legitimate right or interest in either of the two domain names.
BAD FAITH REGISTRATION AND USE
Respondent has registered and used the domain names in bad faith and Complainant has thus satisfied paragraph 1.2.6.3 of the URS Procedure. That is so for the following reasons. First, both of Complainant's trademarks are famous and widely used, as shown by the multiple trademark registrations themselves and the international recognition of Complainant’s name and its SAINT LAURENT and YSL trademarks, as illustrated in the decisions Yves Saint Laurent v. Javier Garcia , WIPO Case D2001-0911 and Yves Saint Laurent, S.A.S. v. WhoisGuard /
University of Paris, Jacky Lee , WIPO Case D2013-0571. Accordingly, Respondent must have known of these famous trademarks at the time of the registration of the two domain names and at all other times subsequent to such registration and must also have known that the registration of the domain names was in bad faith. Secondly, the disputed domain names resolve to parking websites that show various sponsored links presented in the French language, some of which refer to perfumes and other products of the sort supplied by Complainant. Indeed, some such links refer to those products by using Complainant’s famous name. The only conclusion that can be drawn from those facts is that by registering and using the disputed domain names, Respondent has intentionally tried to attract internet users by creating a likelihood of confusion with Complainant’s SAINT LAURENT and YSL trademarks. The traffic generated by the disputed domain names through the confusion that must be caused in consumers’ minds by the use by the Respondent of domain names consisting of the SAINT LAURENT and YSL trademarks, must also be assumed to generate income for Respondent and to disrupt Complainant’s business. Complainant is also entitled to point out, as it does, that Respondent must obtain a financial gain every time an internet user inadvertently obtains access to the resolving websites and activates any of the sponsored links. These circumstances are proof that the two domain names have been registered and used in bad faith. Moreover, the totality of the unchallenged evidence shows that Respondent registered and used both of the disputed domain names in bad faith, within the generally accepted meaning of that expression. Accordingly, the Examiner finds that Respondent registered and used the disputed domain names in bad faith and that Complainant has thus satisfied paragraph 1.2.6.3 of the URS Procedure.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration: <saintlaurent.club> and <ysl.club>
Neil Anthony Brown, Examiner
Dated: July 22, 2014
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