WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Facton Ltd. v. Lindsey Shen Case No. D2010-0368 1. The Parties
The Complainant is Facton Ltd. of Amsterdam, the Netherlands, internally represented.
The Respondent is Lindsey Shen of Shanghai, People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with Wild West Domains, Inc. (“Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2010. On March 11, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 11, 2010, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. 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), on March 12, 2010, the Center formally notified the Respondent of the Complaint by sending the Written Notice by international courier to the postal-mail address shown in the Registrar's WhoIs database for the Domain Name and confirmed by the Registrar and the Complaint (with Annexes) by email to the Respondent's email address shown in the Registrar's WhoIs database for the Domain Name and confirmed by the Registrar (including postmaster@), as required by the Rules. In addition, the website operating under the Domain Name has now been taken down and replaced with a message “we have been shut down this site” which in this Panel's view strongly indicates that the Respondent did receive actual notice of the Complaint. In light of the foregoing, the Panel is satisfied that the Complaint was communicated to the Respondent in accordance with the Rules and accordingly the proceedings commenced on March 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 6, 2010.
The Center appointed William P. Knight as the sole panelist in this matter on April 13, 2010. 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 a corporation which has established a worldwide reputation in respect of its clothing products, in particular premium jeans-ware using the trademark G-STAR. The Complainant owns many trademark registrations including G-STAR as a significant component around the world, including in the United States and the People's Republic of China, as well as Community Trademark, referred to in the Complaint.
The Respondent, who has provided an address in Shanghai in the People's Republic of China, registered the Domain Name on September 26, 2009 and has until recently used the Domain Name as the address for a website devoted to the sale of the Complainant's products. The Complainant asserts that the Respondent's website used the Complainant's own marketing and advertisement materials.
The website at the Domain Name is no longer operating. 5. Parties' Contentions A. Complainant
The Complainant asserts that the Domain Name is confusingly similar to the G-STAR trademark in that the dominant component of the Domain Name is the word “gstar”, the additional words “onsale” and the top level domain “.com” not being sufficient to render the Domain Name distinct from the Complainant's trademark.
The Complainant further asserts that it has not permitted the Respondent to use the G-STAR trademark and, because “the Respondent's [I]nternet site is exclusively devoted to the G-Star brand, using G-Star's owned marketing and advertisement materials,” the Respondent must have been aware of the Complainant's trademark rights. An examination of the Respondent's website as it was before being shut down certainly supports these propositions.
The Complainant also states that the Respondent “has never used the domain name at issue in connection with a bona fide offering of goods or services” and, as a consequence, the Complainant argues that such use of the Domain Name must be for the purpose of misleading Internet users and is accordingly use in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must establish each of the following three elements to prevail in its request for transfer of the Domain Name from the Respondent:
1. The Respondent's Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2 The Respondent has no rights or legitimate interests in respect of the Domain Name; and
3. The Domain Name has been registered and is being used in bad faith.
Notwithstanding the failure of the Respondent to respond to the Complaint in this matter, and its taking down of the website under the Domain Name, the Complainant still bears the burden of proof on each of these elements. The Respondent's default does not automatically result in a determination in favour of the Complainant. The failure of the Respondent to argue its case does not mean that the Panel must accept the propositions of the Complainant. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,WIPO Case No. D2004-0383. A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered trademark rights in G-STAR. The Panel is satisfied that the Domain Name is confusingly similar to the Complainant's G-STAR trademark in that the dominant component of the Domain Name is the word “gstar” and the words “onsale” and the top level domain “.com” in the Domain Name are not distinctive.
The first element of the UDRP is satisfied. B. Rights or Legitimate Interests
It is not disputed that the Respondent is not licensed by the Complainant nor, presumably, by any of the Complainant's related corporations to use the G-STAR trademark in the Domain Name. The Respondent does not pretend to be known by the name G-STAR. The further question of whether the Respondent has a legitimate interest in the Domain Name is a much more difficult one.
There is no doubt, it would appear from the Complaint and an inspection of the Respondent's website before it was taken down, that the Respondent's website was devoted exclusively to promoting the Complainant's products for sale. The Complainant's assertions in the Complaint that, in doing so, the Respondent is intentionally setting out to mislead Internet users in some way, or that the goods sold by the Respondent are not genuine, simply because the Respondent is not licensed by the Complainant, is not supported by the evidence filed. The Complainant's claims rest on the fact, not disputed by the Respondent, that it is not an authorized distributor or reseller of the Complainant's products.
The arguments of the Complainant, and the authorities to which it refers, do not assist it, or the Panel, in making a decision in a case such as this. As a result, the Panel must have reference to other decisions. In Howard Jarvis Taxpayers Association v. Paul McCauley,WIPO Case No. D2004-0014, the learned panel observed:
“Parties in UDRP proceedings are entitled to know that, where the facts of two cases are materially indistinguishable, the complaints and responses will be evaluated in a consistent manner regardless of the identity of the panelist; this goal is undermined when different panels can be expected to rule differently on the same types of facts. Panelists, too, are disadvantaged by these disagreements; they would be able to more efficiently evaluate cases and draft decisions if they knew that they could rely on a shared, consistent set of UDRP principles. If such consistency could be achieved, it also would assist providers, who could assign panelists to cases without any concern that panelist choice may itself inject bias into the system, and would encourage more cost effective decision making as parties could rely on a single panelist rather than having to request a three member panel in order to ensure balance. More generally, because no system of justice can long endure if its decisions are seen as random, consistency will help support the very legitimacy of the UDRP itself. For these reasons, when policy disagreements do arise, panelists should pause and consider whether a consensus has emerged that might inform which way they should rule on these types of issues. If such a consensus has emerged, panelists should endeavor to follow that consensus and thus promote consistent application of the UDRP . . . Such an approach is particularly appropriate in the context of the Policy. That is because UDRP decisions are not binding and non-appealable; rather, a losing party is free to pursue its claim in local courts. See Policy [paragraph] 4(k). Moreover, even if the consensus supports a decision that individuals believe to be wrong or bad policy, parties would at least know how such decisions would be decided under the Policy, and could elect instead to pursue their claims in court if they believed the judicial system would provide a more just result.”
Here, for a reseller of a complainant's products to have such a legitimate interest in registering and using a domain name in respect of the supply of such products, the consensus of prior panel decisions is that the respondent must meet four criteria, as collected from an earlier decision by the panel in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903:
a. Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306 (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering).
b. Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Shigeki Kanao v. J.W. Roberts Co., CPR 0109 (bait and switch is not legitimate).
c. The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. The Weathermen, Inc.,WIPO Case No. D2001-0211 (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton,WIPO Case No. D2000-1201 (no bona fide offering because domain name improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Products,WIPO Case No. D2001-0344 (no bona fide use when respondent suggested that it was the manufacturer of complainant's products).
d. The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525 (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).
The Oki Data decision related to an authorized reseller, but the same principles have been adopted in respect of an unauthorized reseller; see Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946.
Applying these principles to the Domain Name, the only criterion in respect of which there is some doubt in the Panel's view is the third, that the site must accurately disclose the Respondent's relationship with the Complainant.
The cited authorities in respect of this criterion make it clear that the predominant concern of this criterion is any deceptiveness in the subject website, in the sense of conduct likely to mislead Internet users as to some relationship between the website operator and the trademark owner. Conversely, if the absence of such a relationship is obvious from the website, even if not expressly stated, so that no reasonable person could be misled in the required way, this should be sufficient to absolve the website operator. The Panel further notes that, in the case of a group of companies, only one of which may be the trademark owner and complainant, the website operator is not required to make clear an absence of a relationship (if that be the case, as here), with that company, but may meet this requirement by making clear the absence of any relationship with the complainant or any related entity or other entity capable of authorizing the website operator to use the domain name in suit. In this case, in the Panel's view most Internet users would not likely confuse the Respondent's website as being owned or endorsed by the Complainant.
In the case of the Respondent's website that operated under the Domain Name, an inspection of the website snapshot attached to the Complaint includes this statement from the Respondent:
“ABOUT US
There is no better place on the net to grab the latest news, appreciate the latest, the most popular styles from G-Star Raw. We offer a huge catalog of G-star fashion clothes at ‘cost' pricing: Men's G-Star Jeans, jackets, T-Shirts, and Womens G-Star Tanks, Tops, Skirts Hoodies. How are we able to offer the best value online? We leverage our vast distribution relationships and get slightly lower costs, and then pass the savings on to you. So come and enjoy looking at GStarOnS.
The GStarOnS Team”.
The following page offers this helpful information regarding delivery:
“Shipping and return
Ship Goods from G-StarOnS
You--Simply Click
We--Get Everything Done Within 48 Hours
Helpful Tips for Receiving The Package
Couriers require a signature from the recipient for delivery, This is the most secure way to have your products delivered.
It is essential that you provide a full, accurate shipping address, and a valid delivery phone number.
If there is VAT or any Import Duty to pay on the goods due to your country's import rules, the courier will present you with a bill at the time of delivery. In general you will need to pay any such bill to the courier before you can receive the goods. Any such charges are your responsibility and unfortunately we cannot offer advice or estimates about import fees or other taxes in your country.
However, we will package your order as gift or sample which does help to avoide beening [sic] charged for duties and taxes. But if it still doesn't work in some county custom, the charge will still be passed on to you.
Our aim is to deliver all orders within 7 working days of your payment being received. In the unlikely event that it is not possible, for example ordered goods is out of stock, we will email you to advise you of the likely delay.
We give International express delivery worldwide which comes with an online tracking number and need a signature. Orders can be tracked through:
United States:
Canada:
Australia: Http://A
UK: Http://
France: Http://
Returns and Refunds
Returned item(s) must be in the original packaging. GStarOnS reserves the right to limit returns to unwashed, unworn or defective products. Defective product(s) will be replaced with a like style, upon return and fulfillment errors shall be remedied upon our notification of such errors.”
There follows on the website pages of what the Panel guesses to be an attempt at English translation of the Complainant's marketing materials.
There appears nothing on the website operated by the Respondent to suggest any appropriation to itself of the Complainant's trademarks. The Respondent only uses the Complainant's trademarks to refer to the Complainant's products, as the Complainant concedes. There is no suggestion of switch-and-sell, or counterfeit goods here. It is the Panel's view that no one could, reading the material referred to on the Respondent's website, reasonably conclude that the Respondent or its website had any connection with the Complainant. As the Respondent makes clear, it is simply acquiring the Complainant's goods in bulk on wholesale terms, making it possible to offer competitive prices. The Panel would be inclined to agree with the learned panel in Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,WIPO Case No. D2004-0481, that such conduct, without more, is unobjectionable. The facts that the Respondent may be engaging in undesirable conduct in order to avoid customs duty, may be breaching the copyright of the Complainant or some related entity in the use of its marketing materials which would exceed the scope of the UDRP to resolve (the Complainant does not claim any such copyright) and may have given a false address in its registration (which is not clear from the evidence) may, in other cases, be evidence of bad faith, but in this case are no more than vague possibilities.
The Panel accordingly concludes that the Complainant has failed to establish that the Respondent does not have a right or legitimate interest in the Domain Name. C. Registered and Used in Bad Faith
Whilst the Complainant has failed on the second ground required to be established by it under the Policy, it should be noted that, in cases such as these, the considerations relevant to the determination of the right or legitimate interest of the Respondent in the Domain Name are equally relevant to the issue of registration and use in bad faith, in the sense that expression is used in the Policy. For the same reasons, therefore, the Panel concludes that the Complainant has failed to establish that the Domain Name was registered and used in bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
William P. Knight
Sole Panelist
Dated: April 20, 2010
Full & Egal Universal Law Academy