The Complainant is Belstaff S.R.L. of Milan, Italy, represented by Hogan Lovells International LLP, Germany.
The Respondent is Smith Davilv of Guangzhou, People’s Republic of China. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , and are 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 names. On April 17, 2012, GoD, LLC transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on April 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2012.
The Center appointed Richard Tan as the sole panelist in this matter on May 21, 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 a company with a registered office in Italy and manufactures high quality clothing and accessories.
It owns Community trademark registrations and various national trademark registrations of the mark BELSTAFF. Its Community trademark for the mark BELSTAFF was registered in 1998 for articles of clothing in Class 25 and since then the Complainant has obtained trademark registrations for BELSTAFF in other classes of goods. Its products are currently sold around the world.
The Complainant had its beginnings in 1924, when Harry Grosberg founded Belstaff in Victoria Place, Longton, Stoke-on-Trent in Staffordshire, England. The original product line then consisted of waterproof garments for men and women. During the 1930s, it made technical garments that were windproof, rain-proof and resistant to heavy friction, and used by aviators, bikers, the army and those living an active outdoor lifestyle. The Complainant also made goggles, gloves, boots, helmets and bags. It became famous for its line of jackets used by motorcycle enthusiasts, for example, the “Black Prince Motorcycle Jacket”, and its Belstaff jackets have been worn by several champion motorcyclists. The Complainant has a history of creating high technology wear.
In 2002 its bags and shoes division was set up and by 2006, its products were sold in many markets including Japan, the Far East, Russia, the United States of America, Australia and South America. It currently has eleven flagship stores, two airport stores, three showrooms and five factory stores and is present in more than 1000 points of sale worldwide. Its Belstaff products have been advertised and featured in numerous fashion magazines in the United Kingdom, Italy, Germany and other countries, and also used by leading actors in well known films like “Ocean’s Twelve”, “The Aviator”, “Batman Begins”, “Mission Impossible III”, “The Dark Knight” and “Iron Man 2”, amongst others.
The Complainant also runs a large number of online Belstaff stores with websites selling its Belstaff products at domain names such as , , , , , , , , which the Complainant owns.
The disputed domain names resolved to websites that offer goods and products such as jackets, boots, sunglasses and bags that directly compete with the Complainant’s products and services.
The disputed domain names were registered in early June 2011. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s trademark. The Complainant is the owner of various trademark registrations of the mark BELSTAFF in many countries and also owns domain names which incorporate that mark.
The Complainant contends that the only difference between the disputed domain names and the Complainant’s BELSTAFF mark is that the disputed domain names add descriptive terms at the end of the domain names. Those additional elements are:
“…”
“…”
“…”
“…”,
“...”
“...”
“...”
“...”
“...”
The Complainant asserts that “Lederjacken” is the German word for “leather jackets”. Therefore, the additional word “Lederjacken” is not sufficient to distinguish the disputed domain name from the Complainant’s trademark BELSTAFF as it merely indicates a website that sells Belstaff leather jackets, is primarily addressed to German consumers and refers to products manufactured by the Complainant.
“Herren” is the German term for “gents”. The addition of this term merely indicates that the shop is primarily directed to male consumers. The message conveyed is that it is a gents store selling original Belstaff products. The element “Herren” is not sufficient to distinguish the disputed domain name in question from the Complainant’s BELSTAFF trademark.
“Hombre” is the Spanish term for “gents”. This additional term is similarly descriptive.
“Kaufen” is the German word for “buy”. The addition of this term to the mark BELSTAFF only indicates to the consumer that this particular website is an online shop where one might buy Belstaff products. This element has no distinguishing function.
“Mujer” is the Spanish term for “women”. As in the case of the terms “hombre” and “herren”, this is a mere descriptive term and seeks to address female consumers. The message conveyed is that it is a shop selling Belstaff products meant for female consumers. This additional term is similarly descriptive.
“Ofertas” is a Spanish term meaning “offers”. This indicates that the website in question offers or sells a certain product and merely conveys the message that the website in question is an online-shop. Nevertheless, the impression created is that the products sold are Belstaff products. Consumers wishing to buy Belstaff products may be attracted to the website thinking that they can buy Belstaff products in this online-shop. This additional term is similarly descriptive and has no distinctive element.
“Oulet” is a modification of the English term “outlet” An “outlet” is understood to mean a store that sells goods of a particular manufacturer or wholesaler. A customer may be attracted to an outlet by the prospect of buying original goods at lower prices. The additional term is descriptive and not distinctive.
“Baratas” is the Spanish term for “cheap” in a plural form. It simply indicates that the website in question sells products that are particularly inexpensive. This term however mere describes the price but with a strong reference to the products sold, which are Belstaff products. Consumers may be attracted to the website by the prospect of acquiring original Belstaff products at a bargain. The additional term refers to the price and is not sufficient to differentiate Belstaff products from the website.
“Spaccio” is the Italian term for “shop”. The additional term is not distinctive as it merely indicates that the products can be bought online. It is descriptive. There also exists an official Belstaff online store.
In essence, the Complainant asserts that in all the disputed domain names, the mark BELSTAFF is the only distinctive element, and indeed, the dominant element. The aforesaid generic and descriptive elements add little or nothing to distinguish the disputed domain names from the Complainant’s mark.
The addition of the generic Top-Level Domain (gTLD) “.com” also does not avoid a finding of confusing similarity.
The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has no trademark rights in the mark BELSTAFF or any variations thereof, according to the Complainant’s preliminary searches.
The Complainant has not granted the Respondent any license or authorization of any kind to use the trademark.
The Respondent is also not using the disputed domain names in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen the disputed domain names incorporating the Complainant’s BELSTAFF mark in order to generate traffic to its websites that offer goods of a kind that are identical to the goods sold by the Complainant but which are counterfeit or unauthorized imitations of the Complainant’s goods and which bear the BELSTAFF mark. The Complainant also claims to have received customer complaints about counterfeit products with poor quality bought from online shops.
The use of the websites to obtain revenue from such links is not a bona fide use of the disputed domain names and does not give rise to any legitimate interests as it seeks to take unfair monetary advantage of the Complainant’s trademark by using disputed domain names that are confusingly similar.
The Respondent must also have been aware of the Complainant’s trademark BELSTAFF at the time of the registration of the disputed domain names, since those incorporate the distinctive trademark of the Complainant.
The Respondent has also not been commonly known by the name “Belstaff”.
The Respondent cannot contend that he is making a legitimate noncommercial or fair use of the disputed domain names.
The Complainant also contends that the disputed domain names were registered and are being used in bad faith.
The Complainant contends that it is inconceivable that the Respondent was unaware of the Complainant’s trademark given its iconic status within the fashion industry. This is underlined by the fact that the mark was deliberately copied in order to benefit from the goodwill in the mark, by the addition of the non-distinctive elements to benefit from confusion on the part of the public and by the nature of the goods sold on the Respondent’s websites which were competing products as well as counterfeits and imitations.
The Respondent clearly had constructive notice of the Complainant’s rights in the trademark at the time the Respondent registered the disputed domain names, as the Complainant’s mark was registered for many years before the registration of the disputed domain names in June 2011.
The Complainant contends that it must have been the fame of the trademark that motivated the Respondent to register the disputed domain names in order to attract for commercial gain Internet users to the Respondent’s websites. Such conduct constitutes bad faith registration.
The Respondent also intentionally attempted to attract visitors to its websites through creating a likelihood of confusion with the mark. The Respondent’s use of the disputed domain names that were so obviously connected with the Complainant’s well-known mark must have been deliberately designed to mislead consumers into believing that the goods offered for sale at the Respondent’s websites were the Complainant’s original and genuine products and sold at bargain prices. This clearly demonstrated the Respondent’s bad faith use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain names:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint”. Paragraph 14(b) of the Policy further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences” from the Respondent’s failure to comply with the Rules, “as it considers appropriate”. While a panel may draw negative inferences from the respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed: See for example The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D1999-0001; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; and Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827. A. Identical or Confusingly Similar
Based on the evidence adduced by the Complainant as noted above, this Panel has no hesitation in finding that the Complainant has rights in the BELSTAFF mark. The BELSTAFF mark and its variations have been registered in many countries around the world as noted above, including in Europe, Japan, the Far East, Russia, the United States of America, Australia and South America. The evidence adduced by the Complainant further demonstrates that the marks have been extensively used by the Complainant and the Complainant has acquired rights in those marks.
The Panel accepts that the disputed domain names are confusingly similar to the Complainant’s registered BELSTAFF mark.
The Panel finds that the threshold test for confusing similarity under the Policy involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable 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.
In this Panel’s view, this threshold test is satisfied. Each of the disputed domain names reproduces the BELSTAFF mark in its entirety but includes a generic and descriptive term. This Panel accepts the contentions of the Complainant set out above that the relevant terms found in the respective disputed domain names, namely, “lederjacken”, “herren”, “hombre”, “kaufen”, “mujer”, “ofertas”, “oulet”, “baratas” and “spaccio”, bear the respective meanings asserted by the Complainant, as mentioned above.
This Panel further accepts that each of those words or terms has the descriptive and/or generic meaning contended by the Complainant, which in each case is insufficient to avoid a finding of confusing similarity.
Further, the Complainant’s BELSTAFF mark is instantly recognizable as the dominant or principal component of each of the disputed domain names. The Panel further accepts the evidence of the Complainant that the BELSTAFF mark has acquired fame and reputation and has become identified with the Complainant and its goods.
Previous UDRP panels have found that domain names that combine generic terms with trademarks are confusingly similar to the marks: See, e.g., Autodesk, Inc. v. Nurinet, WIPO Case No. D2011-1426 and the decisions cited by the Complainant like Pfizer Inc v. Juan Gonzales,WIPO Case No. D2004-0589.
The addition of the gTLD “.com” does not prevent the disputed domain names from being regarded as confusingly similar to the marks.
In this Panel’s view, the test of confusingly similarity is clearly satisfied. This Panel accordingly finds that the disputed domain names are confusingly similar to the Complainant’s trademark in which the Complainant has rights. B. Rights or Legitimate Interests
As several UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In the absence of a Response, the Panel is entitled to draw certain inferences against the Respondent that it has no rights or legitimate interests. The Panel accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant has not granted the Respondent any license or authorization of any kind to use the trademarks. On the evidence, the Complainant is not in any way associated or affiliated with the Respondent nor is there any relationship between the Complainant and the Respondent that could give rise to any license, permission, or other right by which the Respondent could own or use any domain names incorporating the Complainant’s mark.
The registration of the disputed domain names was long after the Complainant had registered and used its trademarks. The evidence is that the disputed domain names were registered on June 2, 2011, except for the disputed domain name which was registered on June 1, 2011, which were all long after the Complainant began selling its Belstaff products and its trademark registrations dating back to 1998.
The Panel therefore accepts the contentions of the Complainant that the Respondent must have had knowledge of the Complainant’s rights in the marks at the time the Respondent registered the disputed domain names.
In the Panel’s view, the Respondent has intentionally chosen the disputed domain names based on the Complainant’s trademark in order to generate traffic to its websites which sells good that compete with the Complainant’s goods and which the Complainant further asserts are counterfeit goods. The use of the websites to obtain revenue in such a manner is not a bona fide use of the disputed domain names. The use of a mark with an intention to derive advantage from user confusion is not legitimate use and does not confer any rights in favor of the Respondent.
There is also no evidence that the Respondent is or has been commonly known by the disputed domain names or that the disputed domain names are in any way identified with or related to any rights or legitimate interests of the Respondent.
The Respondent has not filed a Response to the Complaint. It has not demonstrated that it has any rights or legitimate interests in the disputed domain names. In the absence of a Response, the Panel is entitled to draw certain adverse inferences against the Respondent, namely, that it has no rights or legitimate interests in the disputed domain names.
The Panel accordingly accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain names have been registered and used in bad faith.
The Complainant submits that the Respondent registered and is using the disputed domain names in bad faith.
The undisputed evidence establishes that the Respondent is not affiliated with the Complainant and has no license or other authorization to use the Complainant’s trademark or a mark similar thereto.
The disputed domain names were registered well after the Complainant’s mark was in use. The Panel finds that the Respondent must have had notice of the Complainant’s mark and business when registering the disputed domain names, as asserted by the Complainant. It is highly improbable that given the reputation of the trademark, and its “iconic status” as asserted by the Complainant, which this Panel, based on the evidence adduced, is prepared to accept, the Respondent was unaware of that mark at the time of the registration of the disputed domain names.
The Panel finds that the incorporation of the BELSTAFF trademark in its entirety as part of the disputed domain names is a further indication of bad faith. The Respondent’s choice of the disputed domain names which incorporated the Complainant’s mark in its entirety leads to the conclusion that the Respondent was seeking to derive unfair monetary advantage from the Complainant’s reputation by its use of the website offering goods from which revenue could be derived. Such goods were of a similar kind to the goods of the Complainant and which therefore competed with the Complainant’s goods. Further in the absence of a Response from the Respondent, the Panel accepts the contentions of the Complainant that the goods appear to be counterfeit goods.
The Respondent also added descriptive and non-distinctive elements to the disputed domain names that, as the Complainant asserted, merely served to add to the confusion and to attract Internet users looking for the Complainant’s original goods to the Respondent’s websites instead.
All of the above matters clearly demonstrate that the Respondent intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Panel further notes that, as found by other UDRP panels, where a domain name is so obviously connected with a well-known product or service, its very use by someone with no connection with the product suggests opportunistic bad faith: See for example Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; Go Daddy Software, Inc. v. Internet Masters, WIPO Case No. D2002-0570; and RapidShare AG, Christian Schmid v. PrivacyP, Domain Admin / n/a, Sergey Malgov, WIPO Case No. D2010-0608.
The Respondent has not submitted any evidence to rebut the Complainant’s claims and assertions. In the absence of such evidence, and based on the evidence submitted by the Complainant and having regard to all the relevant circumstances, the Panel accepts the Complainant’s contentions that the disputed domain names were registered and are being used in bad faith within the meaning of paragraph 4(a)(iii) 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 disputed domain names , , , , , , , and be transferred to the Complainant.
Richard Tan
Sole Panelist
Dated: June 4, 2012
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