The Complainant is Facton Ltd. of Amsterdam, Netherlands, represented by Igor San Juan, Esq., of Netherlands.
The Respondent is Lin jiajin of Henan, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2010. On December 9, 2010, the Center transmitted by email to B, Inc. a request for registrar verification in connection with the disputed domain name. On December 10, 2010, B, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 14, 2010, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On December 15, 2010, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding 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 proceeding commenced on December 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2011.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on January 24, 2011. 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 A. Complainant
The Complainant is a company incorporated in the Netherlands and the owner of registrations worldwide for various word and device marks comprising the word G-STAR, including the word trade mark G-STAR (the “Trade Mark”). B. Respondent
The Respondent is an individual apparently with an address in China.
The disputed domain name was registered on August 30, 2010. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Trade Mark is one of the leading fashion brands for premium jeans-wear. The Complainant has made extensive use of the Trade Mark and has incurred considerable expenditure in respect of advertising the Trade Mark in magazines and newspapers as well as on billboards and at fashion fairs. As a consequence of its extensive and worldwide use, the Trade Mark enjoys considerable goodwill and fame and can be regarded as a well-known trade mark within the meaning of Article 6bis of the Paris Convention.
The disputed domain name is identical or confusingly similar to the Trade Mark. It incorporates without any modification the Trade Mark. The addition of the suffix “outlet” is not sufficient to render the domain name distinct from the Trade Mark.
The Complainant has not licensed or otherwise permitted the Respondent to use the Trade Mark, or a sign confusingly similar to the Trade Mark, or to apply for any domain name corresponding to the Trade Mark. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has never used the disputed domain name in connection with a bona fide offering of goods or services, the Respondent has never been commonly known by the disputed domain name, nor has the Respondent made any legitimate or fair use of the disputed domain name.
The Respondent is pretending to have a licence to use the Trade Mark, and is misleading customers into believing that the Respondent’s website to which the disputed domain name is resolved (the “Website”) is fully endorsed and approved by the Complainant. In the “Conditions of Use” part of the Website, it is said:
“Copyrights and Trademarks. Unless otherwise noted, all Contents are copyrights, trademarks, trade dress and/or other intellectual property owned, controlled or licensed by G- or by third parties who have licensed their materials to G- and are protected by China and international copyright laws”.
This creates confusion as to whether the disputed domain name is owned or at least approved and endorsed by the Complainant.
The Complainant is using the disputed domain name to offer counterfeit G-STAR products via the Website. The Complainant has purchased several G-STAR items from the Website and can confirm that the products delivered by the Respondent are not genuine products, but counterfeits.
The disputed domain name has been primarily registered to disrupt or damage the business of the Complainant. The Website is exclusively devoted to the Complainant’s G-STAR brand, using the Trade Mark and the Complainant’s own marketing and advertising materials.
The disputed domain name has been primarily registered to attract Internet users to the Website for commercial gain by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of the Website or of a product or service on the Website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the proceeding should be English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance .,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) English is the de facto international business language, widely spoken and understood by the majority of business people who conduct international transactions;
(2) The Website operates exclusively in the English language. This demonstrates that the Respondent is fluent and literate in the English language;
(3) The expenses of translation of the Complaint and annexes into Chinese, as well as the ongoing proceeding, will be disproportionately high, and place on the Complainant an undue burden;
(4) The Complainant is a Dutch entity, and seeking to establish English as the language of the proceeding is a good-faith effort on its part to conduct the proceeding in a third, neutral language.
The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
The Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra).
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding. B. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate by many years the date of registration of the disputed domain name.
UDRP panels have consistently held that a domain name is identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
The disputed domain name contains the Trade Mark in its entirety.
In the present case, the Panel concludes that the addition of the non distinctive word “outlet”, a word frequently used in retailing and marketing of branded goods, does not serve to distinguish the disputed domain name from the Trade Mark in any way.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark1.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by several years. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Complainant has asserted that the Website is used by the Respondent to market counterfeit G-STAR goods under the Trade Mark. There can be no legitimate interest in the sale of counterfeits (Lilly ICOS LLC v. Dan Eccles,WIPO Case No. D2004-0750).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”
The Complainant has submitted compelling evidence to suggest that the disputed domain name has been used to offer for sale counterfeit products under the Trade Mark via the Website. This is strong evidence of bad faith (Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019).
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
The Complainant has also asserted that the Respondent has reproduced the Complainant’s marketing and advertising materials on the Website. The Panel finds this constitutes further evidence of bad faith. In all the circumstances, the Panel also considers the “Conditions of Use” on the Website are deliberately misleading and calculated to impart a veneer of legitimacy to the Respondent’s operations via the Website, contrary to the fact. The Panel concludes this conduct provides further evidence of bad faith on the part of the Respondent.
Given the circumstances of this case, the Panel also considers the failure of the Respondent to file a Response to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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.
Sebastian M.W. Hughes
Sole Panelist
Dated: January 25, 2011
1 The Panel however makes no finding as to whether the Trade Mark is a well-known trade mark under the Paris Convention.
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