The Complainant is Etro S.p.A. of Milan, Italy represented by Perani Pozzi Tavella, Italy.
The Respondent is Yang Jie of Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2012. On April 2, 2012, the Center transmitted by email to Xiamen eName Network Technology Corporation Limited dba eName Corp. a request for registrar verification in connection with the disputed domain name. On April 5, 2012, Xiamen eName Network Technology Corporation Limited dba eName Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 12, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 13, 2012.
On April 11, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of the proceeding. On April 11, 2012, the Respondent submitted a request for Chinese to be the language of proceeding. On April 12, 2012, the Complainant confirmed its request that English be the language of the proceeding.
The Center verified that the Complaint together with the amendment to 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 April 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on May 9, 2012.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on May 31, 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
Etro S.p.A. is a widely-known company in the fashion industry. It is based in Milan and it markets its products both in Italy and abroad under the ETRO trademark.
The ETRO trademark has been filed, registered and widely used worldwide:
1. International trademark registration No. 610968 ETRO, registered on November 22, 1993 and duly renewed until November 22, 2013, in classes 8, 9, 14, 19, 20, 21, 23 and 28, designating China, Democratic People’s Republic of Korea, Republic of Korea and Vietnam, among others;
2. International trademark registration No. 610967 ETRO, registered on November 22, 1993 and duly renewed until November 22, 2013, in classes 3, 18, 24 and 25, designating Japan, Republic of Korea, China, Democratic People's Republic of Korea and Vietnam, among others;
3. International trademark registration No. 1017364 ETRO & device, registered on June 23, 2009 in class 3, designating China, Japan and Republic of Korea, among others.
The Complainant registered the ETRO sign as a domain name in the main gTLDs (generic) and ccTLDs (country-code), such as ; ; ; ; ; ; , just to name a few.
The disputed domain name was registered on November 9, 2011. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant asserts that it has registered trade mark rights in the mark ETRO and argues that the domain name at issue is identical to the Complainant’s ETRO trademarks.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name for following reasons:
1. The Respondent has no rights in the disputed domain name, since it has nothing to do with the Complainant and the mark ETRO. In fact, any use of the trademark ETRO has to be authorized by the Complainant. The Respondent has not been so authorized or licensed by the Complainant to use the mark in the disputed domain name.
2. The disputed domain name does not correspond to the name of the Respondent and, to the best of the Complainant’s knowledge, the Respondent Yang Jie is not commonly known as “Etro”.
3. There is no evidence of any fair or noncommercial use of the disputed domain name by the Respondent.
The Complainant contends that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy for the following reasons:
1. The Complainant’s trademark ETRO is distinctive and well-known all around the world.
The disputed domain name is not used for any bona fide offerings. The present circumstances indicate that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website.
2. The disputed domain name is connected to a website sponsoring, among others, fashion products, for which the Complainant’s trademarks are registered and used. Internet users, while searching for information on the Complainant’s goods, are confusingly led to the websites of the Complainant’s competitors, sponsored on the websites connected to the disputed domain name. As the disputed domain name is connected to a website containing several offers from the competitors of the Complainant, and is being used in order to sponsor fashion products, the content of the website is confusing to Internet users as the Complainant operates in the fields of fashion. Therefore, the Complainant asserts that the Respondent has registered and is using the disputed domain name in order to intentionally divert traffic away from the Complainant’s web site.
3. Several UDRP decisions have stated that the registration and use of a domain name to re-direct Internet users to websites of competing organizations constitute bad faith registration and use under the Policy. See, e.g., Encyclopaedia Britannica Inc. v. S, WIPO Case No. D2000-0753; YAHOO! INC. v. David Murray, Case No. D2000-1013; E v. Ultimate Search, Inc., WIPO Case No. D2001-1319; Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768; Oly Holigan, L.P. v. Private, NAF Claim FA0011000095940; Marriott International, Inc. v. Kyznetsov, NAF Claim FA0009000095648; Zwack Unicom Ltd v. Duna,WIPO Case No. D2000-0037 (respondent’s linking to complainant’s competitor held to constitute bad faith); Schneider Electric SA v. Ningbo Wecans Network Technology Co., Ltd, Ningbo Eurosin International Trade Co., Ltd.,WIPO Case No. D2004-0554; Microsoft Corporation v. StepWeb,WIPO Case No. D2000-1500; Baudville, Inc. v. Henry Chan,WIPO Case No. D2004-0059; National City Corporation v. MH Networks LLC,WIPO Case No. D2004-0128.
4. The Complainant contends that the Respondent’s commercial gain is evident since the Respondent’s sponsoring activity is being remunerated.
5. On November 28, 2011, the Complainant’s attorney, in the light of the bad faith in the registration and use of the disputed domain name, sent the Respondent (both by registered mail and by e-mail) a cease and desist letter, informing the Respondent of the Complainant’s rights in the trademark “ETRO” and asking for the cancellation of the domain name or the voluntary transfer of the same. The Respondent replied on December 14, 2011, informing the Complainant’s attorney about its availability to sell the disputed domain name for the amount of EUR 3.500,00. The fact that the Respondent asked such a huge amount of money for a domain name in which it has no rights is further evidence of its bad faith. In fact, the above amount clearly exceeds the out-of-pocket costs directly related to the disputed domain name. In this view, seeWIPO Case No. D2005-0732, Telefonaktiebolaget L.M Ericsson v. iNuntius Inc., where the panel considered USD 100 per domain name in excess of the usual out-of-pocket expenses related to a domain name. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
According to the information received by the Center from the Registrar, the language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or as specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceedings should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that English should be the language of the present proceeding for the following reasons:
1. The Complainant contends that English is an appropriate language for the proceedings as it is an international language comprehensible to both parties and it is fair.
2. The Complainant further contends that the website hosted at the disputed domain name is in Italian and English which clearly demonstrates that the Respondent has proficiency and is able to communicate in English.
3. The Complainant has, in the light of the bad faith in the registration and use of the disputed domain name at issue, sent the Respondent (both by registered mail and by e-mail) a cease and desist letter, informing the Respondent of the Complainant’s rights in the trademark ETRO and asking for the cancellation of the disputed domain name or the voluntary transfer of the same. An email was received fgrom an address apparently associated with the Respondent on December 14, 2011, informing the Complainant’s attorney about its availability to sell the disputed domain name for the amount of EUR 3.500,00. The Respondent’s response was in English. Thus, the Complainant contends that this clearly demonstrates that the Respondent has proficiency and is able to communicate in English.
After the commencement of the present administrative proceedings, the Respondent responded to the Complainant’s request for the proceedings to be in English by contending the following:
1. That he is a native Chinese whose mother tongue is Chinese and thus, he is not proficient in the English language;
2. That the Complaint must be filed in Chinese, failing which he is not able to respond to it.
After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel’s discretion under the Policy
Paragraph 11 of the Rules provides:
“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.”
Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On the record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest, in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; and (b) the website to which the disputed domain name is pointed is in Italian and English, which suggests that the Respondent understands English; (c) the Respondent has responded to the Complainant’s cease and desist letter and counter-offered to transfer the disputed domain name at a price a EUR 3500. This demonstrates that the Respondent is sufficiently proficient in the English language. Although the Respondent has argued that the Complainant has never established contact with him, the Panel rejects the argument as the evidence clearly shows the Respondent has replied to the Complainant’s email and attempted to transfer the disputed domain name for money consideration; (d) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has chosen not to respond to the Complainant’s allegations. Considering these circumstances, 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.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English. 6.2. Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. the 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.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
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 Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the ETRO marks in connection with clothes and accessories. Furthermore, the Panel finds that the Complainant has registered trademark rights in the ETRO marks in many countries around the world including China, the country in which the Respondent appears to reside. Thus, the Panel finds that the Complainant has rights in the ETRO marks in connection with clothes and other accessories.
In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.
The disputed domain name consists of the Complainant’s ETRO mark in its entirety and the top level domain suffix “asia”. The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the word “etro” which is identical to the Complainant’s registered trademark ETRO. The addition of suffixes such as “.com” or “.net” being the generic top-level domain is not a distinguishing factor. In this particular case, the addition of the generic top-level domain suffix “asia” to the word “etro” has the effect of suggesting that this may be the Complainant’s official website in Asia. Given that the Complainant has a considerable presence on the Internet and the Complainant’s domain names typically incorporate the prominent and distinctive ETRO mark, the Panel finds that the choice of the words in the disputed domain name will have the effect of causing consumer confusion on the Internet with regards to the Complainant’s ETRO mark.
The Panel bears in mind the following factors, in particular (a) the high degree of recognition of the Complainant’s ETRO mark as a result of its fame and notoriety; (b) the distinctive character of the Complainant’s ETRO mark; and (c) the dominant component of this word in the disputed domain name. The Panel therefore finds that the disputed domain name is confusingly similar to the ETRO mark in which the Complainant has rights. B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
1. The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the words “etro asia” in its business operations;
2. There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the ETRO mark;
3. There is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the Respondent, without the Complainant’s consent, is using the disputed domain name to link to a website sponsoring, among others, fashion products, for which the Complainant’s trademarks are registered and used.
4. The Respondent is not an authorized agent and therefore does not have the right to use ETRO marks in the disputed domain name. Such behaviour on the part of the Respondent clearly shows that it is not using the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent has no rights or legitimate interests in the disputed domain name.
5. As a result of its fame and notoriety, the Complainant and its ETRO mark enjoy a high degree of recognition by consumers of the Complainant’s goods or services, i.e. clothes and other accessories. Furthermore, the ETRO mark is a registered trademark of the Complainant in many countries all over the world, including China. Consequently, in the absence of contrary evidence from the Respondent, the ETRO 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 Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Based on the above reasons, 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 has shifted the burden to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] 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 trademark or service mark at issue.”
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to rights to or legitimate interests in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights to or legitimate interests in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second part of the test. 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 a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a 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) a 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) a respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, a 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 a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product.
The above circumstances are indicative of registration and use of the domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the Panel can also constitute registration and use of the domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Taking into account the reputation of the Complainant and its ETRO mark, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely 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.
Furthermore, the Complainant has established a substantial presence on the internet through the registration of several domain names, including ; ; ; ; ; and . A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain names. Therefore, the Panel finds that it is not likely 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. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with the intent to create an impression of association with the Complainant and its products.
Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant’s trademark and where the mark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use to the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the contrary, the Respondent, without the Complainant’s consent, is using the disputed domain name to link to a website sponsoring, among others, fashion products, for which the Complainant’s trademarks are registered and used. Such behaviour on the part of the Respondent is indicative of bad faith registration and use. The burden is on the Respondent to explain its choice of the disputed domain name and its subsequent conduct. However, the Panel finds that the Respondent has not discharged this burden with any plausible explanation.
The Panel finds that the Complainant has adduced evidence and proved 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 website under paragraph 4(b)(iv) of the Policy. The Panel finds that given the high degree of recognition of the Complainant’s ETRO mark and a lack of plausible explanation for the choice of incorporating the Complainant’s distinctive mark in the disputed domain name, the conduct of the Respondent vis-à-vis the disputed domain name, particularly in the use of it by linking to a website sponsoring, among others, fashion products, for which the Complainant’s trademarks are registered and used, is certainly a relevant factor indicating bad faith registration and use. The fact that the Respondent has attempted to offer the transfer of the disputed domain name to the Complainant on the condition of payment of an amount of money consideration that is substantially greater than the out-of-pocket expenses necessary for registration further indicates that the Respondent has registered the disputed domain name not for a bona fide use in connection with goods or services but with the intention of profiteering from a transfer of the disputed domain name to the rightful trade mark owner or a third party competitor. Such conduct is indicative of bad faith registration and use and it must be rebutted by the Respondent. However, the Respondent has not discharged the burden of production in this regard.
Thus, the Panel finds for the Complainant on the third part of the test. 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 the Complainant.
Susanna H.S. Leong
Sole Panelist
Dated: June 14, 2012
Full & Egal Universal Law Academy