The Complainant is INTS IT IS NOT THE SAME, GmbH (dba DESIGUAL) of Zug, Switzerland, represented by Baker & McKenzie Barcelona, Spain.
The Respondent is Two B Seller, Estelle Belouzard of Montpellier, France. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2011. On November 11, 2011, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On November 11, 2011, 1&1 Internet AG transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On November 16, 2011, the Center informed the Complainant that the language of the registration agreement for the disputed domain name is French, and invited it to either (i) provide evidence of an agreement between the parties that the proceedings should be conducted in English, (ii) to submit the Complaint translated into French; or (iii) to submit a request for English to be the language of the proceedings. On November 18, 2011, Complainant sent a request for English to be the language of the proceedings.
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 November 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2011. On December 14, 2011, the Center notified the parties that, due to an administrative oversight, the due date for submission of any Response was extended until December 16, 2011. The Respondent did not submit any response.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on January 4, 2012. 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 INTS IT IS NOT THE SAME, GmbH (dba DESIGUAL) and is active in the fashion business. Complainant is the holder of a number of trademarks consisting of, or including the word “desigual” in various countries throughout the world and which it uses in relation to fashion and clothing articles. These trademarks include the following:
- DESIGUAL + design, registered as a Community trademark under number 003805652 on April 29, 2004;
- DESIGUAL + design, registered (and duly renewed) as a Spanish trademark under number 2842159, applied for on January 30, 1987;
- DESIGUAL, registered as an international trademark under number 954684 and applied for on September 3, 2007.
According to the WhoIs records , Two B Seller, Estelle Belouzard, Respondent in the instant case, is the current holder of the disputed domain name which was registered on February 10, 2010 with 1&1 Internet AG.
The disputed domain name used to resolve to a webpage, showing Complainant’s figurative trademarks. After Complainant asked Respondent to transfer the disputed domain name, Respondent made the disputed domain name resolve to a black webpage. Respondent also seems to use the disputed domain name as an email address, used in relation to offers that are posted on “eBay”. 5. Parties’ Contentions A. Complainant
Complainant considers the disputed domain name to be identical or confusingly similar to the trademarks and service marks in which it claims to have rights. Complainant further contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. According to Complainant, Respondent has not used the disputed domain name since its registration. Finally, Complainant alleges that the disputed domain name was registered and being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions and did not react to the Center’s invitation both in English and in French to take part in the administrative proceedings. 6. Discussion and Findings A. Language of Proceedings
As the Complaint was not filed in the language of the Registration Agreement (French) and the Parties did not agree on the language of the administrative proceeding, the Panel may decide on this matter, having regard to the circumstances of the case. Indeed, paragraph 11(a) of the Rules reads: “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”.
In cases where the use of the English language in the proceedings would not be prejudicial to the interests of respondent, whereas it would be a disadvantage for complainant to be forced to translate the complaint, panels often decide to use the English language in the proceedings (see e.g., The Dow Chemical Company v. Hwang Yiyi,WIPO Case No. D2008-1276, decision according to which, where a 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 though it is different to the language of the Registration Agreement).
This can for instance be the case where a respondent understands English, but is not proficient in writing. In such cases and in order to procure for the parties a fair and reasonable opportunity to respond, exercise their rights and to present their arguments, and that both parties be equally treated the administrative proceedings, panels may agree to receive and consider all documents and written submissions filed in other languages than the language of the proceedings (see Red Nacional de Ferrocarriles Españoles v. Jesús Hidalgo Álvarez,WIPO Case No. D2000-1025).
In the present case, however, the Panel is not satisfied that both parties speak and write English. The Complainant submits screen prints from a website on which the Respondent offers products for sale in French, but uses the currencies British pounds and US dollars. The Complainant also claims that Respondent reacted to an English letter that was sent by Complainant. However, the Complainant fails to provide evidence showing that Respondent effectively reacted to this letter. Hence, the only sign that the Respondent would understand English would be the use of a foreign currency in a commercial offering. According to the Panel, the mere use of a foreign currency is insufficient to prove the understanding of the English language.
On the other hand, Respondent did not reply to the Center’s French communication regarding the language of the proceedings. Hence the Respondent was aware of the existence of these proceedings. By accepting the terms and conditions of the registration agreement and by the Center’s communication, the Respondent was sufficiently informed about the content of such administrative proceedings. The fact that Respondent did not reply to any of the communications sent by the Center indicates that Respondent deliberately opted for not taking part in the proceedings and chose not to use its right to defend itself.. In such circumstances, the Panel finds that it would be a disadvantage for Complainant to be forced to translate the Complaint. As the Respondent had ample chance to defend itself, but elected not to do so, the rights of the Respondent to defend itself and the right to equal treatment are guaranteed.
For these reasons, the Panel determines that the language of the proceedings is English. B. Substantive elements of the Policy
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the disputed domain name. As the UDRP proceedings are expedited and do not have an evidentiary discovery, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. The disputed domain name has been registered and is being used in bad faith.
The Panel will therefore deal with each of these requirements. A. Identical or Confusingly Similar
Complainant must first establish that there is a trademark or service mark in which it has rights. Since Complainant is the holder of the DESIGUAL trademark that is used in connection with fashion and clothing items, it is clearly established that there is a trademark in which Complainant has rights.
The Panel considers the disputed domain name to be composed of a name identical to the DESIGUAL trademark and the non-distinctive generic term “vip”, both terms separated by a hyphen. The Panel is of the opinion that the mere addition of non-distinctive text and a hyphen to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Caterpillar Inc. v. Roam the Planet, Ltd.,WIPO Case No. D2000-0272, where the addition of the generic word “machines to the complainant’s trademark CAT did not serve to distinguish the domain name ; Nike Inc. v. Farrukh Zia,WIPO Case No. D2000-0167, where the domain name was held to be confusingly similar to the trademark nike; Lime Wire LLC v. David Da Silva/C,WIPO Case No. D2007-1168, where the domain name was held to be confusingly similar to the “LIME WIRE” trademark, especially with addition of the word “download” because users typically download complainant’s software; International Business Machines Corporation v. Scott banner,WIPO Case No. D2008-0965, where the domain name was held to be confusingly similar to the “IBM” trademark because many Internet users would assume that the domain name identifies a website from which they can download software supplied by the Complainant; Nintendo v. Beijin,WIPO Case No. D2001-1070, where the addition of the words “mail”, “post”, “fan” and “top50” to the word “POKÉMON” in the domain names was held to be of minimal impact on what the visitor of the website focuses on, namely the word “POKÉMON”; Nintendo v. Gray West International,WIPO Case No. D2000-1219, where it was held that the addition of the word “games” in the domain name does nothing to reduce its confusing similarity with Nintendo’s POKÉMON marks); Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helios Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc.,WIPO Case No. D2005-0890, where the domain name was held to be confusingly similar to the trademark “PORSCHE”).
The addition of the non-distinctive term “vip” does nothing to reduce the confusing similarity of the disputed domain name with Complainant’s trademark. Therefore, the Panel finds that the disputed domain name is confusingly similar with Complainant’s DESIGUAL trademark.
Accordingly, Complainant has made out the first of the three elements that it must establish under the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.
In accordance with previous UDRP cases, it is sufficient for Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the disputed domain name in order to place the burden of rebuttal on Respondent. (See Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that Respondent has not been commonly known by the disputed domain name and that Respondent has not acquired trademark or service mark rights. Respondent’s use and registration of the disputed domain name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
Moreover, the Panel is of the opinion that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. In fact, the way in which the Respondent has been using the disputed domain created a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site as figurative trademarks of the complainant were taken up on the webpage. Respondent also seems to use the disputed domain name for an email address, used in connection with selling products on “eBay”.
Finally, Respondent did not reply to the Complainant’s arguments and decided not to take part in the administrative proceedings. This is a further indication of the absence of rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith (see e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempted to attract, for commercial gain, Internet users to a web site 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 web site or location or of a product or service on the web site or location. C.1. Bad Faith Registration
In the instant case, the Panel finds that Respondent must have had knowledge of Complainant’s rights in the DESIGUAL trademark at the moment it registered the disputed domain name, since the use that Respondent made of the website linked to the domain name shortly after registration clearly shows that Respondent knew the Complainant’s trademark. The Panel also finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. (See Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks).
Therefore, it is established that the disputed domain name was registered in bad faith. C.2. Bad Faith Use
The Respondent made the website at the disputed domain name look like an official website from the Complainant and used the disputed domain name in connection with selling products on “eBay”. The Panel is of the opinion that Respondent attempted to attract Internet users for commercial gain to its website and other online locations, while creating a likelihood as to the source, sponsorship, affiliation or endorsement by Complainant. Therefore, it is established that the disputed domain name was not only registered, but also used in bad faith. 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 disputed domain name be transferred to Complainant.
Flip Jan Claude Petillion
Sole Panelist
Dated: January 23, 2012
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