TRADEMARKS AND DOMAIN NAMES IN CHINESE CHARACTERS

Yves Saint Laurent wins reassignment of a domain name in Chinese characters infringing the Saint Laurent trademark: fashion house’s Chinese character trademark decisive for victory.

Fashion house Yves Saint Laurent (YSL) brought an administrative action before the Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO) against the registration by Chinese company Qunaitao of the domain name 圣罗兰.世界 meaning “SaintLaurent.world” in Chinese.

The administrative procedure UDRP (Uniform Domain Name Dispute Resolution Policy) before the Arbitration and Mediation Center allows trademark owners to obtain the reassignment of domain names if it is proved that a domain name is identical or confusingly similar to the mark, that the domain name owner has no right or legitimate interest to detain the domain name and lastly that the domain name was registered and used in bad faith.

In this case, YSL was able to prove that it owns trademarks registered in China for the transliteration圣罗兰 of the name Saint Laurent, and that it owns another Saint Laurent domain name in Chinese characters: 圣罗兰.公司.

YSL also pointed out that Qunaitao owned no trademark registration in China for signs related to the transliteration 圣罗兰, and had not been authorised by YSL to use the Saint Laurent trademark.

The fashion house claimed therefore that the disputed domain name must be considered identical to the trademark 圣罗兰, and that Qunaitao had failed to show that it had any right to, or legitimate interest in, its ownership.

YSL argued lastly that the only reason that could have induced Qunaitao to register the domain name was that of exploiting the notoriety of the Chinese transliteration of the Saint Laurent trademark.

Qunaitao argued that YSL trademarks registered in China do not cover all classes of products and services, and that several domain names exist which include the characters 圣罗兰 but are not owned by YSL.

Furthermore, Qunaitao’s good faith in registering the domain name could be inferred by the company’s not having asked YSL to pay for the disputed domain name. On the contrary, Qunaitao had entered into an agreement to license the domain name to a company offering intellectual property services.

The Panel’s decision

The Panel’s decision of 13 September 2017 in case D2017-1246 granted YSL’s request and ordered the reassignment of the domain name 圣罗兰.世界.

Finding that the domain name was identical to the trademark 圣罗兰, and that Qunaitao had failed to prove any right to, or legitimate interest in, its detention, the Panel considered Qunaitao’s argument concerning the fact that YSL’s Chinese trademarks only cover certain products and services.

The Panel rejected the argument finding that from the point of view of the UDRP proceedings trademark ownership is decisive, while the list of products and services for which the trademark is registered is not relevant for the purpose of assessing the identity, or likelihood of confusion, between the trademark and the domain name.

Moreover, the Panel observed, Qunaitao had not denied knowledge that 圣罗兰 was a registered trademark and well known world wide; furthermore, the disputed domain name had not been connected to a web page, and Qunaitao had not shown that preparations were under way to do so.

The Panel therefore concluded that the registration and passive detention of the domain name in the circumstances of the case amounted, from the point of view of the UDRP, to registration and use of a domain name in bad faith by Qunaitao.