The Complainant is Belstaff S.R.L. of Milan, Italy, represented by Hogan Lovells International LLP, Germany.
The Respondent is jin zhe of Wuhan, Hubei, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. The disputed domain name is registered with Jiangsu Bangning Science & Technology Co. Ltd. (the “Registrars”). 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 the Registrars a request for registrar verification in connection with the disputed domain names. On April 18, 2012, the Registrars 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 23, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On April 24, 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 May 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2012.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on June 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 A. Complainant
The Complainant is a company incorporated in Italy and the owner of numerous registrations worldwide for the trade mark BELSTAFF (the “Trade Mark”), the earliest dating from 1996. B. Respondent
The Respondent appears to be an individual based in China. C. The Disputed Domain Names
The disputed domain name was registered on October 26, 2011 and the disputed domain name was registered on October 5, 2011, respectively. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant was established in United Kingdom of Great Britain and Northern Ireland in 1924 and is a well-known manufacturer of high technology water proof, wind proof and friction resistant leather jackets, boots and bags for use in particular by motorcyclists. The Trade Mark is a unique heritage brand with a story embedded in the world of adventure, travel and motorcycling. The brand’s spirit of innovation resulted in the development of the first waxed cotton clothing to meet the demand of the nascent motorcycling industry and has since evolved in step with aviation and motorsports development. The Trade Mark’s unique heritage and the Complainant’s reputation for fashionable, functional and stylish outerwear have led to significant development beyond those industries, and today the Trade Mark enjoys a strong international awareness.
The Trade Mark has been widely publicised worldwide and the Complainant’s goods are sold under the Trade Mark in over 1,000 points of sale worldwide.
The disputed domain names are confusingly similar to the Trade Mark. They contain the Trade Mark in its entirety together with the non-distinctive words “baratas” (“cheap” in Spanish language) and “billig” (“cheap” in German language).
The disputed domain names have been resolved, respectively, to partly Spanish and partly German language websites which:
1. offer for sale at bargain prices leather jackets, bags and boots which appear to be original goods of the Complainant;
2. use several of the word and logo trade marks of the Complainant, including the Trade Mark and the Complainant’s “Phoenix rising from ashes” logo (the “Logo Mark”);
3. in the case of ”www.”, uses the wording “Copyright © 2004 – 2012 belstaff baratas” in the website footer; and
4. feature photographs of the Complainant’s jackets, bags and boots, (the “Websites”).
The Complainant believes the goods offered for sale on the Website are counterfeits as the Respondent has not been authorised to sell the Complainant’s goods under the Trade Mark and has not been authorised to set up the Websites. In particular, the Complainant notes the goods on the Websites are offered at very low prices. Furthermore, although at first glance the Websites appear to be websites of, or in some way affiliated with, the Complainant, the Websites do not contain full contact information.
The Respondent is not commonly known under the disputed domain names and does not have any legitimate trade mark rights in respect of the disputed domain names.
The Respondent has not been licensed or authorised by the Complainant to use the Trade Mark or to register the disputed domain names. The Respondent is not making a bona fide offering of goods or services under the disputed domain names.
The Respondent has registered and is using the disputed domain names in bad faith. The Respondent is using the disputed domain names primarily for the purpose of intentionally attracting, for commercial gain, Internet users to the Websites. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceedings
The language of the registration agreements 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 Websites are either Spanish or German language websites;
(2) the disputed domain names are in Latin script and include Spanish and German words;
(3) this indicates that the Respondent has sufficient ability communicating in English;
(4) requiring the Complainant to submit documents in Chinese would cause undue delay and substantial further expense;
(5) although the Complainant and its legal representatives are based in Italy and Germany respectively, their understanding of English means that they are able to proceed in English without the need for translation.
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, for the reasons specified by the Complainant, 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 the circumstances of this case, the Panel believes it is reasonable for the proceedings to be conducted in a language which is neutral for both parties.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be 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 names by almost 80 years.
UDRP panels have consistently held that domain names are generally 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).
The disputed domain names contain the Trade Mark in its entirety. The Panel finds that the addition of the non-distinctive words “baratas” and “billig” does not serve to distinguish the disputed domain names from the Trade Mark in any way.
The Panel finds that the disputed domain names are 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 circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in a 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 names or to use the Trade Mark, or to offer for sale and sell goods under the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain names by almost 80 years. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden of production 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 Complainant contends the Websites are used by the Respondent to market unauthorised or counterfeit jackets, shoes and bags under the Trade Mark. There can be little, if any, legitimate interest in the sale of counterfeits (Lilly ICOS LLC v. Dan Eccles,WIPO Case No. D2004-0750). The Panel further notes the Websites feature the Logo Mark and the Trade Mark, as well as images of the Complainant’s products, all without the authorisation or approval of the Complainant.
The Panel finds the copyright notice used on the “www.” website is a further indication of the Respondent’s attempts to pass off the Websites as websites of, or otherwise approved or authorised by, the Complainant. The Panel also notes the goods on the Websites are offered for sale at very low prices.
In all the circumstances, the Panel finds sufficient evidence has been adduced to enable the Panel to draw the inference that the Websites have been used to offer for sale counterfeit goods under the Trade Mark.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names are used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate non-commercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfills 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 of the disputed domain names 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 website 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 website or location or of a product or service on your website or location.”
The Panel has concluded that the disputed domain names have been used to offer for sale counterfeit products via the Websites. 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 goods on the Websites are not counterfeit, the Panel finds the Respondent’s conduct in registering the disputed domain names and setting up the Websites using the Trade Mark, the Logo Mark and images of the Complainant’s goods, and offering for sale jackets, shoes and bags under the Trade Mark, all without the authorisation, approval or licence of the Complainant, amounts to bad faith registration and use under paragraph 4(b)(iv) of the Policy, irrespective of whether the goods offered for sale on the Websites are counterfeit.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
At some stage following receipt of the Complaint, the Respondent has caused the Websites to be taken down. As at the date of this Decision, the disputed domain names appear to be resolved to parking sites with sponsored links. In all the circumstances of this case, the Panel finds this amounts to further evidence of bad faith.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Decision
For all 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.
Sebastian M.W. Hughes
Sole Panelist
Dated: June 15, 2012
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