The Complainant is Luxottica Group S.p.A. of Italy and Luxottica Fashion Brillen Vertriebs GmbH of Germany represented by Zirngibl Langwieser of Germany.
The Respondent is kaoe Monia aka / Mania Kaoe of Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2010. On September 17, 2010, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On September 25, 2010, HiChina Zhicheng Technology 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 September 27, 2010, the Center transmitted by email to the parties a communication in both Chinese and English regarding the language of proceedings. On September 30, 2010, the Complainant submitted a request that English or alternatively German be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified 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 October 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2010.
The Center appointed Dr. Hong Xue as the sole panelist in this matter on October 29, 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 Luxottica Group S.p.A. is the owner of the registered trademark RAY-BAN. The Complainant Luxottica Fashion Brillen Vertriebs GmbH is the exclusive licensee of RAY-BAN trademark.
The disputed domain name was registered by the Respondent on June 21, 2010. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the trademark RAY-BAN, the registration and use of which by the Complainant long precedes the registration of the disputed domain name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith.
The Complainant requests that the disputed domain name be transferred to the Complainant Luxottica Group S.p.A. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of Proceeding
The language of the registration agreement for the disputed domain name , as confirmed by the Registrar, is Chinese. The Complainant has requested that the language of the proceeding be English or alternatively German and has presented the reasons. The Respondent did not make any submissions in relation to the language of proceeding even though the Center’s communications to this effect (as was the Notification of Complaint) were both in English and in Chinese.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Among other circumstances, the respondent’s ability to clearly understand the language of the complaint, and the complainant’s being disadvantaged by being forced to translate, may both support a panel’s determination that the language of the proceeding remains the language of the complaint, even if it is different from the language of the registration agreement (L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
According to the Rules, paragraph 10(b), the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. Therefore a panel shall objectively assess the Parties’ language ability in the proceeding.
In the present case, the Panel finds that the Respondent has sufficient capacity to understand and use both English and German. The Panel notes that the website at the disputed domain name, , displays the contents in a mixture of German and English terms and expressions but doesn’t contain a single Chinese word or character. The Complainant also submits that the Respondent is capable of communicating in English. On the other hand, the Complainant has submitted the Complaint in English and would bear considerable costs to translate all the submissions into and take part in the proceeding in the language of the registration agreement.
Having considered all the circumstances, this Panel determines under the Rules, paragraph 11(a) that English shall be the language of the proceeding. B. Identical or Confusingly Similar
Pursuant to the Policy, paragraph 4(a)(i), a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such requirement, a complainant must prove its trademark rights and the similarity between the disputed domain name and its trademark.
The Panel finds that before the registration of the disputed domain name Complainant’s trademark RAY-BAN had been registered and used on glasses products in a number of countries.
The disputed domain name is . Apart from the generic top-level domain suffix “.com”, the disputed domain name consists of “ray-ban-sonnenbrille”, which combines the Complainant’s trademark “RAY-BAN”, a dash “-” and a German word “sonnenbrille” meaning sunglasses. It is established by numerous decisions made under the Policy that adding generic words that are related to a complainant’s business is likely to lead the panel to find a confusing similarity between the disputed domain name and the complainant’s trademark (Marriott International, Inc. v. Cafe au lait, NAF Claim No. FA93670).
Given that the disputed domain name contains the Complainant’s mark RAY-BAN in its entirety, adding a non-distinguishable dash and a generic term “sonnenbrille” that is related to the Complainant’s glasses products marked with RAY-BAN does not preclude a finding of confusing similarity.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark RAY-BAN. Accordingly, the Complainant has proven the first element required by paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and, as stated above, the Respondent did not provide any information to the Panel asserting any right or legitimate interest it may have in the disputed domain name.
It is apparent from the Complaint that there is no connection between the Respondent and the Complainant or its business. Paragraph 4(c) of the Policy lists a number of circumstances which can be taken to demonstrate a respondent’s rights or legitimate interests in a domain name. However, there is no evidence before the Panel that any of the situations described in paragraph 4(c) of the Policy apply here. To the contrary, the lack of a Response leads the Panel to draw a negative inference.
Therefore, and also in light of the Panel’s findings below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name . Accordingly, the Complainant has proven the second element required by paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Respondent did not respond.
Through examining the evidence submitted, the Panel notes that the website at the dispute domain name prominently shows the mark RAY-BAN and sells a variety of types of sunglasses. The Complainant, however, states clearly that it has never granted the Respondent any license or other authorization to sell Ray-Ban products.
The Panel therefore finds that the Respondent’s use of a disputed domain name that is confusingly similar to the Complainant’s mark to attract consumers to a website that is using the sign almost identical to Complainant’s trademark RAY-BAN without authorization to commercialize sunglasses that are suspect counterfeit RAY-BAN products is highly likely to cause confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or of the products on Respondent’s website.
The Panel finds that this is adequate to conclude that the Respondent has registered and is using the disputed domain name in bad faith under the Policy, paragraph 4(b)(iv). Therefore, the Complainant has successfully proven the third element required by paragraph 4(a) of the Policy. 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 Luxottica Group S.p.A.
Dr. Hong Xue
Sole Panelist
Dated: November 12, 2010
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