WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Aktieselskabet af 21. november 2001 A/S v. Yu Yawei Case No. D2009-0737 1. The Parties
The Complainant is Aktieselskabet af 21. November 2001 A/S, Brande, Denmark, represented by Bech-Bruun Law Firm, Copenhagen, Denmark.
The Respondent is Yu Yawei, Shijiazhuang, Hebei, People's Republic of China. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with 35 Technology Co., Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2009. On June 5, 2009, the Center transmitted by email to 35 Technology Co., Ltd. a request for registrar verification in connection with the Disputed Domain Name. On June 8, 2009, 35 Technology Co., Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 11, 2009, the Center transmitted by email to the parties a communication concerning the language of proceeding in Chinese and in English. On June 16, 2009, the Complainant submitted a request that English be the language of proceeding. On June 17, 2009, the Respondent sent an email to the Center requesting an email in Chinese that explains the procedural requirements the Respondent has to meet. On the same day, the Center acknowledged receipt of this email in Chinese and English, highlighting that the Center's communication to the Respondent are sent in both Chinese and English, and reattaching the language of proceeding documents in Chinese and in English. The Respondent did not comment on the language of proceeding by the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 13, 2009.
The Center appointed Kar Liang Soh as the sole panelist in this matter on July 16, 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 part of the Bestseller Group which deals in clothes and accessories for young people and children. The Complainant owns applications and registrations for the trade marks ONLY and VERO MODA in over 50 countries (eg, China) including the following which cover Class 25 goods:
Trade Mark No
Jurisdiction
Trade Mark
Registration Date
1447254
China
ONLY
November 18, 1996
967703
International
ONLY
September 25, 1997
1132585
China
VERO MODA
August 4, 2003
967258
International
VERO MODA
November 15, 2000
76548244
The United States of America
VERO MODA
October 1, 2003
The Complainant also owns the domain names and . The Bestseller Group sells its Only products and Vero Moda products through their respective websites resolved from their and domain names.
The Disputed Domain Name was registered on March 18, 2008. 5. Parties' Contentions A. Complainant
The Bestseller Group, of which the Complainant forms part of, has over 39,000 employees worldwide and managed a turnover of 2007/2008 (excluding China and partner related retail turnover) is about EUR 1.45 billion. The Complainant's role in the Bestseller Group is to hold investments in intangible assets.
Through the Bestseller Group, the Complainant's trade marks ONLY and VERO MODA have been used extensively worldwide and are well-known including in China. The trade marks VERO MODA and ONLY were launched in 1987 and 1995 respectively. These trade marks were used on products as well as retail store brands. Products under these trade marks are sold through the Bestseller Group's own stores, franchise stores and third party wholesale stores.
The Bestseller Group currently has 207 Only stores and 845 Vero Moda stores outside China. Within China, there are 827 Only stores and 780 Vero Moda stores. Only and Vero Moda products are sold through over 3,000 wholesale stores outside China. There are no wholesale stores in China selling Only and Vero Moda products.
The Respondent appears to operate an online clothing shop through a website resolved from the Disputed Domain Name. The website uses the trade marks ONLY and VERO MODA and appears to make available for sale clothing items labeled with the trade marks ONLY and VERO MODA.
The Complainant contends that:
(1) The Disputed Domain Name is identical with the Complainant's trade marks ONLY and VERO MODA;
(2) The Respondent has no rights or legitimate interest in respect of the Disputed Domain Name. The Respondent uses pictures from the Complainant's websites on the website resolved from the Disputed Domain Name. The Complainant has not licensed or permitted the Respondent to use its ONLY and VERO MODA trade marks and the Respondent's use thereof constitutes trade mark infringement; and
(3) The Disputed Domain Name is registered and being used in bad faith. The Respondent is using the Complainant's trade marks to divert Internet traffic to his own website for his own commercial gain. In addition, the Disputed Domain Name is used for the illegitimate purpose of selling goods that are infringements of the Complainant's ONLY and VERO MODA trade marks. B. Respondent
The Respondent did not reply to the Complainant's contentions. However, the Respondent's one and only communication in relation to these proceedings with the Center on June 17, 2009 before the commencement of these proceedings made the following statements which the Panel will take into consideration:
(1) The Respondent denies any bad intentions in registering the Disputed Domain Name and asserts that he should be entitled to the Disputed Domain Name on a first-come-first-serve basis;
(2) The Respondent has complied with all regulations and the Disputed Domain Name was registered to him as a consequence thereof; and
(3) The Respondent has been using the Disputed Domain Name for about a year without problems. The Complainant desires the Disputed Domain Name and is claiming trade mark infringement on the Respondent's part as an intimidation tactic. 6. Discussion and Findings 6.1 Language of the Proceedings
The default language of the proceedings is Chinese because the Registration Agreement is in Chinese (paragraph 11(a) of the Rules). However, in determining the language of the proceedings, the Panel must ensure fairness to the Parties and keep the proceedings cost-efficient and expeditious to avoid undue burden on the Parties or delay to the proceedings (e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293).
The Complainant submits that English should be the language of the proceedings for the following reasons:
(1) Even though the Respondent's website resolved from the Disputed Domain Name is substantially in Chinese, the Respondent has demonstrated familiarity with English having regard to the selective use of English on the Respondent's website;
(2) The clothing items offered on the Respondent's website has English wordings printed on them;
(3) The Respondent has removed from the Respondent's website pictures copied from the Complainant's website after receiving the Complaint, thereby showing that the Respondent is able to understand the Complaint in English;
(4) The Respondent has no right or legitimate interests in the Disputed Domain Name and is using the Dispute Domain Name to sell trade mark infringing clothing; and
(5) The Complainant should not have to incur additional costs of translation in order to halt the Respondent's trade mark infringing activities.
The combination of the reasons above suggests that the Respondent is able to deal with the Complaint even though it was submitted only in English. The Center's communications with the Respondent have all been in English and Chinese and the Respondent should know full well the issues that he faces in these proceedings. Despite that, the Respondent has chosen not to respond to the Complainant and/or object to the Complainant's request for English to be the language of the proceedings. In the circumstances, it will be unfairly burdensome on the Complainant and cause undue delay to the proceedings to maintain the default language of the proceedings.
Having regard to the above, particularly the importance of expeditious disposition of the proceedings, this Panel holds in accordance with paragraph 11(a) of the Rules that English be adopted as the language of the proceedings. 6.2 Decision
Paragraph 4(a) of the Policy requires the Complainant to show 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
By virtue of the trade mark registrations, the Complainant owns rights in the trade marks ONLY and VERO MODA. The Disputed Domain Name is not identical to either of these trade marks as it is a combination of both trade marks and not limited to only one of these trade marks. However, save for the hyphen character which can be ignored for all intents and purposes in accordance with numerous past panel decisions, the Disputed Domain Name consists essentially of words identical to both trade marks.
As no additional feature exists to distinguish the Disputed Domain Name from the trade marks ONLY and VERO MODA, both of which are owned by the Complainant, the Panel is of the view that the Disputed Domain Name is confusingly similar to the Complainant's trade marks.
Further, it has been established by many past panel decisions that a domain name incorporating a trade mark in its entirety with the addition of non-distinctive prefixes or suffixes is generally not distinguishable from the trade mark (eg, E, Inc. v. Keyword Marketing Inc. a/k/a Marketing Total S.A. a/k/a Domain Drop S.A.,WIPO Case No. D2007-1427; PM-International AG v. Man Utd Club,WIPO Case No. D2008-1432). The word “only” in the Disputed Domain Name may be seen as descriptive of the trade mark VERO MODA appearing in its entirety in the Disputed Domain Name. The Disputed Domain Name is therefore also confusingly similar to the Complainant's VERO MODA trade mark. B. Rights or Legitimate Interests
The Respondent has not refuted the Complainant's various assertions that the Respondent has no rights or legitimate interests in the Disputed Domain Name. On the contrary, the Complainant's evidence strongly suggests that the Respondent may be using the website under the Disputed Domain Name for illegitimate purposes (ie, infringement of the Complainant's trade marks ONLY and VERO MODA).
The statements in the Respondent's email of June 17, 2009 to the Center, even if incorporated in a Response, do not provide any basis to justify the finding of rights or legitimate interests in the Disputed Domain Name on the part of the Respondent. The Disputed Domain Name is registered on a first-come-first-serve system as rightly pointed out by the Respondent, but the registration is subject to the Policy. The Panel concludes that the Complainant has shown that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent has not shown otherwise. C. Registered and Used in Bad Faith
The Complainant's submission that the trade marks ONLY and VERO MODA are well-known worldwide (including in China, the Respondent's home country) has neither been denied nor refuted by the Respondent. Having regarded to the evidence submitted, this Panel accepts that the Complainant's trade marks ONLY and VERO MODA are well-known.
Paragraph 4(b)(iv) of the Policy provides that the following is evidence of bad faith registration and use:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your website or location.”
The Complainant is the owner of the well-known names ONLY and VERO MODA and the Respondent is unconnected to the Complainant. The online shopping facilities on the Respondent's website under the Disputed Domain Name leave little doubt that the Respondent is using or intends to use the trade marks ONLY and VERO MODA on products covered by the Complainant's trade mark registrations.
It is not the Panel's role to determine if the Complainant's trade marks have been infringed under the laws governing the relevant trade mark registrations, and it is not necessary to do so. It is clear from the Complaint that the Respondent's website is intended for commercial gain and adoption of the Disputed Domain Name and the Complainant's trade marks ONLY and VERO MODA on the Respondent's website is directed at attracting Internet users. These are classic elements of opportunistic bad faith registration and use under paragraph 4(b)(iv) highlighted time and again by past panel decisions (eg, Educational Testing Service v. Mohamed Ahmed Aljarwan,WIPO Case No. D2008-1073). The manner in which the Complainant's trade marks are used in the Disputed Domain Name and the Respondent's website creates a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Respondent's website by the Complainant.
In the circumstances, the evidence points strongly towards a conclusion of bad faith registration and use of the Disputed Domain Name and all the Respondent has basically provided is a mere denial of bad intentions which is not consistent with the evidence presented. As no cogent rebuttal has been provided in response to the Complaint or otherwise, the Panel holds that bad faith registration and use has been made out. 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, be transferred to the Complainant.
Soh Kar Liang
Sole Panelist
Dated: July 30, 2009
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