The Complainant is Prada S.A. of Luxembourg, represented by Jacobacci & Associati of Italy.
The Respondent is Liu Wan Qiu / Amandine Clavier of France. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2011. On January 17, 2011, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On January 18, 2011, Xin Net Technology Corp. 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), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2011.
The Center appointed Yijun Tian as the sole panelist in this matter on March 2, 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. The Complainant
The Complainant is a leading Italian company in the field of luxury wear, leather accessories, shoes, luggage and hats. The Complainant is the owner of the trademark MIU MIU and has registrations for said trademark worldwide, including China (5 registrations between October 16, 1992 and November 8, 2005), Germany (5 registrations between October 16, 1992 and November 8, 2005) and France (5 registrations between October 16, 1992 and November 8, 2005). B. The Respondent
The Respondent registered the disputed domain name on December 28, 2009, and used the website to sell MIU MIU branded products. 5. Parties’ Contentions A. Complainant
The Complainant requests the Panel issue a decision that the disputed domain name be transferred to the Complainant. The Complainant’s main arguments are the following:
(i) The disputed domain name is confusingly similar to the complaint’s registered trademark.
- The Complainant is the owner of the famous trademark MIU MIU and has registrations for said trademark worldwide, including China.
- The disputed domain name includes trademark MIU MIU and simply adds the non-distinctive word “tasche”.
- The addition of descriptive or non-distinctive terms in a domain name does not affect a finding that a domain name is confusingly similar to the complainant’s registered trade mark.
(ii) There is no way that the Respondent may not have been aware of the trade name and trademark MIU MIU and registration may only have occurred in bad faith
- The Respondent is either from China or France, both countries being among the largest markets for the genuine MIU MIU products.
- The Respondent sells counterfeit MIU MIU branded products and uses without authorization images taken from MIU MIU’s advertising campaign featuring actresses.
(iii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
- The Respondent is not associated in any way to the Complainant or its distribution net work.
- No evidence that Respondent has any rights in the MIU MIU trademark nor that the Respondent has been commonly known by the disputed domain name.
- No evidence that the Respondent is making a bona fide noncommercial or other legitimate fair use of the domain name. The only use of the disputed domain name is to sell infringing products, and this use is neither noncommercial nor legitimate.
(iv) The respondent uses the domain name in bad faith.
- The disputed domain name resolves in Web sites offering MIU MIU products for sale.
- Most of these products are blatant counterfeit. (Annex 10 to the Complaint)
- The Respondent use for selling its counterfeit products images taken from the original MIU MIU campaigns by Prada.
- Panels have consistently held that the use of a domain name confusingly similar to a well-known trademark in order to sell counterfeit product s via Internet is a typical case of se in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English. The Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
1) The Respondent, Ms. Amandine Clavier of Lin Wan Qiu (an organization identified in the registrar’s verification as) is seemingly a resident of France with a mail address in Aumone, France, although the name of her organization has a Chinese sound. Her telephone number is in France.
2) The main language of her Web site is German. This is a typical case of a business operating in different languages of the European Union, where a (or "the") language most commonly used for international business transaction is English (rather than Chinese).
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.
Paragraph 11(a) 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. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). The WIPO Overview of WIPO panel Views on Selected UDRP Questions (the “Overview”) further states: “in certain situations, where the respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even if it is different to the language of the registration agreement” (Overview, paragraph 4.3; L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that the Complainant is an Italy company, and the Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the website at the disputed domain name includes German word ‘tasche’ (which stands for the English term “bag”) (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
On the record, the Respondent appears to be a French based individual who may or may not be a Chinese speaker (although the name of her organization has a Chinese sound). The Panel finds evidence in the present proceeding to suggest that the Respondent has knowledge of German rather than Chinese. In particular, the Panel notes that (a) The disputed domain name has been registered in German, rather than Chinese script; (b) the website at the disputed domain name is a German-based website and the Respondent is apparently doing business in German through this website (Annex 10 to the Complaint); (c) the website appears to have been directed to users in Europe Union (particularly German speakers) rather than Chinese speakers; (d) the Respondent’s business operating in different languages of the European Union, where a (or "the") language most commonly used for international business transaction is English (rather than Chinese); (e) the Center has notified the Respondent of the proceedings in both Chinese and English, and the Respondent has indicated no objection to the Complaint’s request that English be the language of the proceeding; (f) the Center informed the Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trademark MIU MIU (the “Trade Mark”) acquired through registration. The Trade Mark has been registered worldwide including in China and most European Union countries, and enjoys a widespread reputation including China and France.
The disputed domain name comprises the Trade Mark in its entirety. Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark 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).
Generally a user of a mark “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, HKIAC Case No. 0500065).
Thus, the Panel finds that the use of a word “tasche” is not sufficient to negate the confusing similarity between the disputed domain name and the Trade Mark.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. 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) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services;
(ii) the fact that the Respondent has commonly been known by the disputed domain name; and
(iii) legitimate noncommercial or fair use of the disputed domain name.
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG , DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview, paragraph 2.1 and cases cited therein)
The Complainant has prior rights in the Trade Mark (since 1992) which precede the Respondent's registration of the disputed domain name (in 2009) by over 16 years. According to the Complainant, the Respondent is not an authorized dealer of MIU MIU branded products. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; 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).
Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
a) There has been no evidence adduced to show that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “miumiu” in its business operations. There has been no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use the Trade Mark or to apply for or use any domain name incorporating the Trade Mark;
b) 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 has any registered trademark rights with respect to the disputed domain name. The Respondent registered the disputed domain name on December 28, 2009.
c) There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, the Respondent is offering MIU MIU brand products for sale through the website in dispute (Annex 10 to the Complaint).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location or of a product.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith. a) Registered in Bad Faith
The Panel finds that the Complainant enjoys a widespread reputation in the Trade Mark with regard to its products. The Complainant has registered its MIU MIU trademark in France, China and Germany since 1992. It is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. The Panel therefore finds that the Trade Mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra). Moreover, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (see also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant’s products. b) Used in Bad Faith
The Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites offering the Complainant’s MIUMIU bag products. The Complainant claimed that the Respondent attempted to sell counterfeit MIU MIU branded products on its website, and said “Most of these products are blatant counterfeit, a determined by Complainant’s examination of the photographs appearing in the Respondent’s website (see Annex 10 to the Complaint) and technical declaration (Annex 12 to the Complaint)”. In addition, the Respondent used for selling its counterfeit products images taken from the original MIUMIU campaigns by Prada, featuring actress Kindsay Lohan and Kirsten Dunst (Annex 13 and Annex 14 to the Complaint).
To establish an “intention for commercial gain”, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).
Given the widespread reputation of the Trade Mark, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with the Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved (see Annex 10 to the Complaint). In other words, the Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with the Trade Mark. Noting also that apparently no clarification as to the Respondent’s relationship to the Complainant is made on the homepage of the disputed domain name, potential partners and end users are led to believe that the website “www.” is either the Complainant’s site or the site of official authorized partners of the Complainant, which it is not. Moreover, the Respondent has not responded to the Complaint. The Panel therefore concludes that the disputed domain name was used by the Respondent in bad faith.
In summary, the Respondent, by choosing to register and use a domain name which is confusingly similar to the Complainant’s well-known trademarks, intended to ride on the goodwill of the Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet users destined for the Complainant. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain name and the conduct of the Respondent as far as the website on to which the domain name resolves are indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of 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.
Yijun Tian
Sole Panelist
Dated: March 12, 2011
Full & Egal Universal Law Academy