The Complainant is Belstaff S.R.L. of Milano, Italy, represented by Hogan Lovells International LLP, Germany.
The Respondent is Fundacion Private Whois of Panama, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2012. On the same date, the Center transmitted by email to I Corp a request for registrar verification in connection with the disputed domain name. On April 20, 2012, I Corp 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 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2012.
The Center appointed Christiane Féral-Schuhl 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
The Complainant is a company specialized in the creation of technology clothing for the protection of motorcyclists.
The Complainant owns a number of registered Community trademarks:
- BELSTAFF, registration No. 000335810, registered on September 15, 1998, in class 25, regularly renewed;
- BELSTAFF, registration No. 002189025, registered on September 5, 2002,in classes 3, 9, and 8, regularly renewed;
- AVIATOR BY BELSTAFF, registration No. 004313334, registered on April 3, 2006, in classes 18 and 25;
- BELSTAFF, registration No. 007439102, registered on June 9th 2009, in classes 14, 16, 24 and 35. (graphic trademark);
- BELSTAFF, registration No. 010060028, registered on November 9, 2011, in classes 3, 9, 14, and 18.
The Complainant states that there is a high number of official BELSTAFF online stores managed on its behalf with the following domain names: , , , , , , and .
The disputed domain name, , was registered on October 12, 2011. 5. Parties’ Contentions A. Complainant
The Complainant presents itself as an internationally-recognized company of high-quality clothing and accessories. The Complainant indicates that its most famous jackets are for motorcycle and aviation purposes.
The Complainant contends that since 1924, it has aroused great interest worldwide and has filed several national trademarks worldwide and Community trademarks under the BELSTAFF trademark. The Complainant adds that it manages a high number of official BELSTAFF online stores.
The Complainant contends that the disputed domain name registered by the Respondent is confusingly similar to its trademarks, and that the addition of non-significant and descriptive elements adds confusion with the BELSTAFF trademark in which the Complainant has rights.
The Complainant also contends that the Respondent does not have a right or legitimate interest in the disputed domain name. The Complainant asserts that the Respondent does not have any trademark rights in BELSTAFF, or any variations thereof. The Complainant states that it has never authorized, licensed or permitted the Respondent to use the BELSTAFF trademark.
The Complainant contends that the Respondent registered the disputed domain name in bad faith, as it is unconceivable that the Respondent was unaware of the Complainant and its trademark by selling counterfeit products. The Complainant considers that the disputed domain name was chosen in order to benefit from the goodwill and reputation of high-quality products attached to the Complainant’s trademark. Also, according to the Complainant, giving wrong contact information to the registrar indicates the bad faith of the Respondent.
The Complainant then asserts that the disputed domain name is being used in bad faith as it attracts Internet users with the intention of fraudulently benefiting from public confusion while the bargain prices led to massive consumer attraction. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is 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 name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel observes that the Complainant has provided evidence of trademark registrations comprising the word “Belstaff”, which is obviously identical with the first and relevant part of the disputed domain name . In comparison with the Complainant’s trademarks, the disputed domain name includes the additional terms “jacken” and “outlets”. Regarding the disputed domain name, there is no doubt that the term “Belstaff” is the dominant component of the disputed domain name.
In fact, the Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered mark, it may be sufficient to establish confusing similarity for purposes of the Policy (see, e.g., Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Magnum Piering, Inc. v.The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047).
Furthermore, it is a well-established principle that the addition of descriptive or non-distinctive terms to a complainant’s trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the Policy.
Here, the Panel considers that the terms “jacken” and “outlets” even add to the confusing similarity of the disputed domain name to the BELSTAFF trademark as they are in direct connection with the Complainant’s products for which its trademarks have been registered.
In fact, the Complainant proved that it offers itself leather jackets under its BELSTAFF mark, including on its own online shopping website at “www.shop.” or www., among others.
It is not contested that the term “jacken”, german translation of “jacket”, is a descriptive term, especially as the Complainant itself markets jackets (see e.g. Pierre Balmain S.A. v. Petra Vierkoetter / Protected Domain Services Customer ID: NRC-2616126, WIPO Case No. D2011-0110).
Moreover, in LEGO Juris A/S v. Dot InFo ,WIPO Case No. D2012-0351, the panel held that “the addition of the word “outlet” has no impact on the overall impression of the dominant part of the disputed domain name” and added that “outlet” is a non-distinctive term “commonly used in commercial circumstances referring to a place of business for retailing goods.”” (See also Swarovski Aktiengesellschaft v. Domains By Proxy, LLC, DomainsByProxy,com / Seek Knight, WIPO Case No. D2012-0177).
In view of the above, the Panel considers that the Complainant proved that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy outlines circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.
In line with prior UDRP WIPO panel decisions, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to have the burden of evidence shift to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Complainant has indeed made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain name. This finding is based on the non-disputed circumstances brought forward by the Complainant that the Complainant never gave the Respondent any permission or authorization to use the word “Belstaff” as part of a domain name or in any other way.
In this case, the Respondent did not answer to the Complaint, and as such failed to demonstrate any of the above circumstances of paragraph 4(c) of the Policy.
In view of the above, the Panel considers that the Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy outlines circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith. These circumstances are:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 have engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s 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 respondent’s website or location or of a product or service on respondent’s web site or location.
As for the Panel, the fact that the products offered on the website to which the disputed domain name resolves are in connection with the products marketed by the Complainant itself proves that the Respondent did not ignore the Complainant’s mark and registered the disputed domain name on purpose to attract Internet users.
Furthermore, the Panel finds that Internet users looking for the Complainant online may find the Respondent’s website instead and become confused as to the Complainant’s affiliation with the website and its content (See e.g. Mattel Inc. v. A Domain Privacy,WIPO Case No. D2011-2264). The likelihood of confusion is all the more apparent as, as above stated, the Respondent provides on its website products in direct connection with the Complainant’s products: mainly clothes and jackets. Moreover, the logo of the Complainant’s trademark BELSTAFF is reproduced on the Respondent’s website and the products offered on this website bear the BELSTAFF trademark. As stated above, the Complainant asserts that it did not grant the Respondent with a license on any of its trademarks for the registration of a domain name including the word ”belstaff”, or for any use whatsoever in relation with the classes in which the Complainant registered its BELSTAFF trademarks. Such circumstance is not contested by the Respondent, who did not reply to the Complaint. In previous UDRP decisions, it has been admitted that the offering of unauthorized or counterfeit products on a website to which a domain name resolves may be an evidence of a use in bad faith under the Policy (see e.g. Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019; Farouk Systems, Inc. v. QYM,WIPO Case No. D2009-1572).
In view of the above, the Panel finds that there is no reason for the Respondent to use the Complainant’s mark except 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, or affiliation of the Respondent’s website, which characterizes a use in bad faith pursuant to paragraph 4(b)(iv).
Therefore, in accordance with the Policy, the Panel considers 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.
Christiane Féral-Schuhl
Sole Panelist
Dated: June 8, 2012
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