The Complainant is Dolce & Gabbana s.r.l. of Milan, Italy, represented by Studio Legale Turini, Italy.
The Respondent is Hu Weijie of Xiang Tan, Hunan, China. 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 April 3, 2012. On April 3, 2012, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On April 5, 2012, 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. On April 10, 2012, the Center transmitted an email to the Parties in both Chinese and English language regarding the language of the proceedings. On April 10, 2012, the Complainant confirmed its request that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings 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 April 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2012.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on May 25, 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 A. Complainant
The Complainant is a company incorporated in Italy and the owner of numerous registrations worldwide for the trade mark DOLCE & GABBANA (the “Trade Mark”), the earliest dating from 1985. The Trade Mark is a well-known trade mark. B. Respondent
The Respondent is an individual apparently with an address in China. C. The Disputed Domain Name
The disputed domain name was registered on March 26, 2012. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant is the exclusive licensee of the Trade Mark, which is one of the most famous trade marks in the world in the field of fashion.
The disputed domain name is confusingly similar to the Trade Mark. It comprises the Trade Mark in its entirety, albeit separated by a hyphen, together with the non-distinctive word “online”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with or authorized by the Complainant or the owner of the Trade Mark in any way and is not commonly known by the disputed domain name.
The disputed domain name has been registered and used in bad faith.
Given the notoriety of the Trade Mark, the Respondent must have or ought to have known of the Trade Mark prior to registering the disputed domain name.
Although the disputed domain name is at present being held passively, the results of an SEO Text Browser search conducted by the Complainant suggest it was used in July 2011 in respect of a website offering for sale unauthorised, and probably counterfeit, clothing, footwear, bags and accessories under the Trade Mark, using wording such as “sale cheap dolce gabbana handbags, dolce gabbana shoes”. 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 unless specified otherwise in the registration agreement, the language of the administrative proceedings 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 language of the proceedings should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceedings 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 proceedings. 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 co. ltd., 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 proceedings for the following reasons:
(1) the results of the Complainant’s SEO Text Browser search are a clear indication of the Respondent’s ability to understand and communicate in English;
(2) English is the most widely-spoken international auxiliary language;
(3) the Respondent has failed to show any interest in the proceedings and has not answered the Complainant’s communictions;
(4) as both the Complainant and its legal representatives are Italian, it would cause significant expense and delay if the Complainant were required to translate the Complaint and Annexes into Chinese;
(5) as English is not the native language of either of the parties, using English as the language of the proceedings would be fair.
The Respondent did not file any submissions with respect to the language of the proceedings.
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 notes, according to the results of the Complainat’s SEO Text Browser search, it appears the Respondent is proficient in the English language (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).
The Panel therefore 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). The Panel is also mindful of the need to ensure the proceedings are conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be unduly prejudiced, should English be adopted as the language of the proceedings.
Having considered all the matters above, the Panel determines under paragraph 11(a) that the language of the proceedings shall be English. 6.2 Decision
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by almost 30 years.
UDRP panels have consistently held that domain names are 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).
In the present case, the disputed domain name contains the Trade Mark in its entirety. The Panel concludes that the use of a hyphen and the addition of the generic word “online” do 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 Mark.
The Panel therefore holds that the Complaint fulfills 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 non-exhaustive 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 almost 30 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 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. To the contrary, it appears from the SEO Text Browser search conducted by the Complainant’s representatives that the disputed domain name may have been used in July, 2011 in respect of a website offering for sale unauthorized, and possibly counterfeit, fashion clothing, footwear, bags and accessories under the Trade Mark. Such use does not amount to a bona fide offering of goods or services under the Policy (Lilly ICOS LLC v. Dan Eccles,WIPO Case No. D2004-0750). The Panel notes that the disputed domain name is currently not being used at all.
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 any 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 fulfils the second condition of paragraph 4(a) of the Policy. C. 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 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 your web site or location or of a product or service on your web site or location.”
The Complainant asserts that the disputed domain name was used in July, 2011 to offer for sale unauthorised, and probably counterfeit, products under the Trade Mark. Using domain names to facilitate the sale of counterfeit goods is strong evidence of bad faith (Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019).
Even if the disputed domain name was not used in this manner in July, 2011, the circumstances indicated under paragraph 4(b) of the Policy indicating bad faith are not however exclusive and exhaustive and there are grounds under the Policy for a determination of bad faith based upon other general considerations not specifically enumerated in the Policy.
It has been held, for example, that, in certain circumstances, passive use may amount to bad faith under the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In all the circumstances of this case, the Panel finds there are sufficient grounds for an inference of bad faith, given the notoriety of the Complainant and the Trade Mark, the current passive use of the disputed domain name, and the failure of the Respondent to respond to communications from the Complainant’s representatives and to file a Response (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
For 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 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.
Sebastian M.W. Hughes
Sole Panelist
Dated: June 4, 2012
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