Complainant is Belstaff S.R.L. of Milano, Italy, represented by Hogan Lovells International LLP, Germany.
Respondent is Jason Lau, Sharing of fuzhou, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2012. On April 17, 2012, the Center transmitted by email to GoD, LLC. a request for registrar verification in connection with the disputed domain name. On the same date, GoD, LLC transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 23, 2012.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on June 12, 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
Complainant is active in the fashion industry as a manufacturer of clothing and accessories. In relation to this business, Complainant is using its BELSTAFF mark. Complainant shows to be the holder of, inter alia, the following registered trademarks:
- BELSTAFF (word), registered as a Community trademark under number 000335810 on September 15, 1998 and applied for on August 2, 1996 for class 25;
- BELSTAFF (word), registered as a Community trademark under number 002189025 on September 5, 2002 and applied for on April 23, 2001 for classes 3, 9 and 18.
The disputed domain name was created on August 24, 2011 and is registered by Respondent. The disputed domain name is linked to a website on which figurative trademarks of Complainant are shown and on which clothing, presented as Belstaff clothing appears to be offered for sale. 5. Parties’ Contentions A. Complainant
Complainant considers the disputed domain name to be confusingly similar to trademarks and service marks in which it claims to have rights. Complainant further claims 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 in connection with a bona fide offering of services or a legitimate noncommercial use, as Respondent would offer for sale counterfeit or unauthorized imitiations of goods that bear Complainant’s trademark. Also, Respondent has not been commonly known by the disputed domain name, according to Complainant.
Finally, Complainant considers that the disputed domain name was registered and being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
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 the 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 a domain name. As the proceedings are administrative, 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 deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there is a BELSTAFF trademark in which Complainant has rights. The trademark has been registered and used, including in countries that Respondent seems to target with the website that is linked to the disputed domain name.
The Panel considers the disputed domain name to be composed of a name identical to the BELSTAFF trademark and the non-distinctive generic terms “jacken” (which means “jackets” in German) and “outlet”. The Panel is of the opinion that the mere addition of non-distinctive text to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (See 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 of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org. and Pokemon Fans Unite,WIPO Case No. D2001-1070, where the addition of the words ”mail”, ”post”, ”fan” and ”top50” to the word “pokemon” in the domain names was held to be of minimal impact on what the visitor of the website focuses on, namely the word ”pokemon”; Nintendo of America Inc. 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).
Accordingly, the Complainant has made out the first of the three elements that it must establish. 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 domain name.
It is established case law that 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 apparently been commonly known by the disputed domain name and that Respondent does not seem to have 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, Respondent is using the disputed domain name to advertise and sell products which it indicates to be new Belstaff products. As Respondent has no authorization from Complainant to sell Belstaff products, the Panel is of the opinion that there is a high likelihood that these goods are counterfeit goods. Furthermore, Respondent creates an impression that the website is an official website of Complainant or is authorized or licensed by it. According to the Panel, such use of the disputed domain name is detrimental to Complainant and cannot be considered to constitute a bona fide commercial or fair use. 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.
In the present case, it is inconceivable that Respondent was unaware of Complainants and its trademark rights when it registered the disputed domain name. This is shown by the fact that the disputed domain name is composed of the BELSTAFF trademark in its entirety together with non-distinctive elements that are related to the clothing business in which Complainant is active. Furthermore, the website that is linked to the disputed domain name contains figurative trademarks of the Complainant. Hence, it is apparent that Respondent had Complainant in mind when registering the disputed domain name.
Furthermore, without authorization Respondent is using Complainant’s trademark for the sale of (presumably counterfeited) goods. Hence, Respondent tries to intentionally attract Internet users to visit its website for commercial gain, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location and of the products offered for sale on the web site.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the disputed domain name was registered and is being 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 the Complainant.
Flip Jan Claude Petillion
Sole Panelist
Dated: June 27, 2012
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