The Complainant is Aktieselskabet af 21. November 2001 A/S of Brande, Denmark, represented by Bech-Bruun Law Firm, Denmark.
The Respondent is Jun Li aka Li Jun of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with Jiangsu Bangning Science & Technology Co. Ltd (”the Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2011. On July 18, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 19, 2011, 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. On July 20, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On July 21, 2011, the Complainant submitted a request 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 proceedings commenced on July 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2011.
The Center appointed Karen Fong as the sole panelist in this matter on August 26, 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.
Paragraph 11 of the Rules provides that unless otherwise agreed by the parties or specified otherwise in the registration agreement, the language of the 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 proceedings.
The language of the Registration Agreement in this case is Chinese. The Complainant submits in its letter to the Center on July 21, 2011 that the language of the proceeding should be English as the Domain Name is in English; that the website connected to the Domain Name (“the Website”) uses the following English headings: “2011 Spring Is in The Air”, “New”, “Hot”, “Only Play”, “Sweater”, “Outers, “Denim”, “Dress/Skirt” and “More” indicating that the Domain Name is directed towards those familiar with the English language and that the Respondent is familiar with the English language. Further, the spirit of paragraph 11 of the Rules is to ensure fairness on the selection of language by giving full consideration to the parties’ level of comfort with each language. English is not the Complainant’s native language either whilst the Respondent is both able and comfortable in communicating in the English language. Consideration also needs to be given to the fact that substantial additional expense and delay would be incurred if the Complaint has to be translated into Chinese.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding and is satisfied that the Respondent appears to be familiar with the English language although the Panel notes that the printouts of the Website in Annex 11 do not show the English headings as alleged in the Complainant’s letter. At the time of this decision, the Panel is unable to view the Website as it is no longer active. Nevertheless, the Complainant’s brand ONLY which is an English word figures prominently on the Website. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. The Respondent did not comment on the language of the proceeding by the specified due date. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. 4. Factual Background
The Complainant is part of the Bestseller Group, a global manufacturer and retailer of clothing and accessories under various trade marks including ONLY, VERO MODA, JACK & JONES and SELECTED. The Bestseller Group is a family owned group of companies founded in Denmark in 1975. The products are aimed at young men, women, teenagers and children. It now has more than 2,500 chain stores and more than 12,000 external multibrand stores in 46 countries around the world. In 2009/10, Bestseller’s turnover was EUR 1,961 million.
The Complainant has numerous trade mark registrations worldwide for the trade mark ONLY including in Denmark under trade mark registration no VR 2000 02183, the European Union under Community trade mark registration no 000638833, United States of America under trade mark registration number 1973394 and China under trade mark registration number 1447254. The Complainant also owns and operates the website resolving from the domain name which features an online shop.
The Domain Name was registered by the Respondent on April 25, 2010. At the time of the filing of the Complaint, the Website which is in the Chinese language featured an online shop selling ONLY branded clothing. The Website does not appear to be active at the moment. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the ONLY trade mark; the Respondent has no rights or legitimate interests with respect to the Domain Name; and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith. B. Identical or Confusingly Similar
The Panel accepts that the Complainant has established that it has rights to the trade mark ONLY.
The threshold test for confusingly similarity under the UDRP involves a comparison between the trade mark and the domain name itself to determine likelihood of Internet confusion. In order to satisfy the test, the relevant trade mark would generally need to be recognisable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
The Complainant’s registered trade mark, ONLY, is the dominant portion of the Domain Name. The addition of the geographical term “China” does nothing to minimise the risk of confusing similarity. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes it clear that the applicable top-level suffix in the domain name, in this case “.net”, is to be disregarded for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
The Complainant contends that it has not licensed or otherwise permitted the Respondent to use its ONLY trade mark or register domain names incorporating its trade marks. There is no business relationship between the parties. The Website offers for sale clothing products under the ONLY trade mark. It also displays photographs from the Complainant’s webshop on Taobao. Unfortunately, the Complainant has not provided copies of the photographs found on its webshop.
The Complainant does not know the origin of the clothing offered for sale on the website. If the goods are counterfeit, the Respondent would fail to establish that it is making a bona fide offering of goods and services and thus have a legitimate interest in the Domain Name. If the goods are in fact genuine, the Respondent will need to demonstrate that its use fall within the requirements established in the case Oki Data Americas, Inc v ASD, Inc,WIPO Case No. D2001-0903. The Respondent has failed to establish this as it does not have the permission of the Complainant to use the Domain Name and the Website does not bear any notice that the Respondent is not an authorized reseller may lead Internet users to believe that the Respondent is in fact an authorized reseller of the Complainant’s products. This is not a bona fide offering of goods or services.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
Therefore, the Panel finds that the Complainant has proven the second element of the Policy. D. Registered and Used in Bad Faith
The Complainant contends that the Domain Name was registered solely for the purpose to profit on an illegal exploitation of the goodwill and reputation related to the Complainant’s ONLY trade mark. Since the ONLY trade mark has been used and registered prior to the registration of the Domain Name, the Respondent either knew or ought to have known of the Complainant’s use and rights in the ONLY trade mark especially since it is offering to sell and selling either genuine or counterfeit ONLY products. The Panel is satisfied that the Respondent must have been aware of the Complainant’s mark when it registered the Domain Name. The fact that the Domain Name incorporates the Complainant’s trade mark in its entirety is in the Panel’s view evidence that the registration of the Domain Name was in bad faith.
The Panel also concludes that the actual use of the Domain Name is in bad faith. Not only is the ONLY trade mark used on the Website, it purports to sell ONLY branded products without authorization from the Complainant, the owner of the ONLY trade mark. Whilst no evidence has been submitted to substantiate the allegation that some of the photographs on the Website have in fact be taken from the Complainant’s Chinese webshop, the Panel notes that the types of photographs used on the Website are very similar to those appearing on the Complainant’s website and that the style, look and feel of the Website is reminiscent of the Complainant’s own website. There is a clear intention to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s Website is and the products sold on them are authorised or endorsed by the Complainant.
The Respondent has offered no evidence that its registration and use of the Domain Name is in good faith. The Panel therefore finds that the registration and use of the Domain Name is in bad faith under paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the Complainant has proven the third element of the Policy. 7. Decision
For 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.
Karen Fong
Sole Panelist
Dated: September 6, 2011
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