The Complainant is Belstaff S.R.L. of Milan, Italy, represented by Hogan Lovells International LLP, Germany.
The Respondent is qin tan / tan qin / tanqin of Changchun, Jilin, China. 2. The Domain Name and Registrar
The disputed domain names , , , are registered with B, Inc. The disputed domain name is registered with Hangzhou E-Business Services Co., Ltd.
The disputed domain names , , , and are hereinafter collectively referred to as the Domain Names. 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 B, Inc. and Hangzhou E-Business Services Co., Ltd. a request for registrar verification in connection with the Domain Names. On April 19, 2012, B, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 3, 2012, Hangzhou E-Business Services Co., Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 3, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of 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 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2012.
The Center appointed Linda Chang as the sole panelist in this matter on June 11, 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, originally founded in 1924 in Staffordshire of the English Midlands, is an internationally-recognized Italian company and manufacturer of high-quality clothing and accessories.
The Complainant invests substantial time and resources in the design, manufacture, advertising and sale of its products. The Complainant’s BELSTAFF mark has been widely publicized and the Complainant successfully introduces its products into markets all across the globe. The Complainant currently is present in more than 1,000 points of sale worldwide.
The Complainant owns a number of BELSTAFF trademarks, among others, Community Trademark No. 335810 registered on September 15, 1998 in Class 25, Community Trademark No. 2189025 registered on September 5, 2002 in Classes 3, 9 and 18, and Community Trademark No. 7439102 registered on June 9, 2009 in Classes 14, 16, 24 and 35.
The Domain Name was registered on September 29, 2011, and the Domain Names , , and were registered on December 5, 2011. As evidenced by the documents presented by the Complainant, each of the Domain Names was once linked to an online shop selling purported Belstaff products. 5. Language of the Proceedings
Under paragraph 11 of the Rules, the language of the proceedings shall be the language of the registration agreement, unless both parties agree otherwise, or the registration agreement specifies otherwise, or the panel determines otherwise.
The Complainant filed its Complaint in English and requested for English to be the language of the proceedings for the following reasons:
(a) There is no connection between the Domain Names or the web sites connected to the Domain Names to the Chinese language, including i) the Domain Names consist of Latin letters rather than Chinese letters; ii) the Domain Names are partly in English (utilizing the word “store”); iii) the content of the web sites has no connection to the Chinese language.
(b) The English language can be understood most likely by all parties. The Domain Names consist of Latin letters rather than Chinese letters and all web sites provide English descriptions of the products offered there. Besides, given the complexity and the scale of activities carried out through the Domain Names worldwide, the Respondent is more likely than not to have sufficient understanding of the English language. In the part of the Complainant, though it is based in Italy while its representative is based in Germany, it would not need translation for an English proceeding.
(c) It would be disproportionate to require the Complainant to submit a translated Complaint. The activities carried out via the Domain Names are illegal, and requesting the Complainant to submit a translated Complaint would trigger delays and unduly protect the illegal activities of the Respondent.
As confirmed by the Registrars, the language of the Registration Agreements is Chinese. Based on the evidence presented on the record, no agreement appears to have been reached between the Complainant and the Respondent that the language of the proceedings should be English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings by taking into consideration all relevant circumstances, and it is established practice to take paragraphs 10(b) and 10(c) of the Rules into consideration for the purpose of determining the language of the proceedings to ensure that the parties are treated with equality and that each of them is given a fair opportunity to present its case.
Based on the reasons stated in the Complaint, the Panel finds that the Complainant has adduced sufficient evidence to prove that the Respondent is most likely proficient in the English language. The Panel also notes that the Respondent has been given a fair opportunity to object to the use of English as the language of the proceedings but did not do so.
The Panel therefore holds that using English as the language of the proceedings will not be prejudicial to the Respondent in its ability to articulate the arguments for the case, while if the proceedings are to be conducted in Chinese, the Complainant would be unfairly disadvantaged by being forced to translate the Complaint into Chinese and the proceedings would be unduly delayed.
Considering all of these circumstances, the Panel decides that the language of the proceedings shall be English and the decision will be rendered in English. 6. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Names are highly similar to its BELSTAFF trademark. The addition of descriptive terms is not sufficient to distinguish the Domain Names from the Complainant’s BELSTAFF trademark. The addition of the generic top-level domains such as “.com” or “.org” to the Domain Names also does not avoid confusing similarity.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Respondent does not have any trademark rights in BELSTAFF or any variations thereof and the Complainant has never authorized, licensed or permitted the Respondent to use the BELSTAFF trademark. Moreover, there is no suggestion that the Respondent could possibly invoke any of the circumstances listed in paragraph 4(c) of the Policy as i) the Respondent’s use of the Domain Names does not constitute bona fide use; ii) the Respondent is not commonly known by the Domain Names; and iii) the Respondent is not making a legitimate noncommercial or fair use of the Domain Names.
The Complainant finally contends that the Respondent has registered and is using the Domain Names in bad faith. The Complainant is well-known and it is inconceivable that the Respondent was unaware of the Complainant and its BELSTAFF trademark when registering the Domain Names. Besides, the Respondent tries to internationally attract Internet users to visit his web sites with the intention of fraudulently benefiting from public confusion by creating a likelihood of confusion among Internet users between the Complainant’s famous trademark and the source or affiliation of the Respondent’s web sites. Moreover, the web sites linked to the Domain Names are being used to disrupt the business of the Complainant. The Respondent’s offer for sale counterfeit or unauthorized imitations of products that bear the Complainant’s BELSTAFF trademark could cause considerable damage to the Complainant’s rights and its legitimate business interests. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 7. Discussion and Findings
To succeed in a complaint, the complainant must, in accordance with paragraph 4(a) of the Policy, satisfy the panel of the following three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Based on the evidenced presented by the Complainant and the relevant provisions of the Policy, the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has adduced sufficient evidence to demonstrate its established rights in the BELSTAFF trademark. The Complainant holds a number of BELSTAFF trademarks, among others, Community Trademark No. 335810 registered on September 15, 1998 in Class 25, Community Trademark No. 2189025 registered on September 5, 2002 in Classes 3, 9 and 18, and Community Trademark No. 7439102 registered on June 9, 2009 in Classes 14, 16, 24 and 35. By the time when the Domain Names were registered, the BELSTAFF mark of the Complainant has been registered and used for many years.
The Panel notes that each of the Domain Names consists of the BELSTAFF trademark in its entirety, together with the respective descriptive terms as follows:
- : “jacken” (“jackets” in German) and “store”;
- : “jacken” (“jackets” in German) and “store”;
- : “giubbotto” (“jacket” or “blazer” in Italian);
- : “spaccio” (“store” in Italian);
- : “tiendasenespana” (“tiendas en espana” means “stores in Spain“).
The Panel finds that it is an accepted principle that an addition of suffixes such as “.com” or “.org” as the generic top-level domain indicator is not a distinguishing factor. The Panel holds that the incorporation of the Complainant’s highly distinctive BELSTAFF trademark in the Domain Names by itself is sufficient to support the claim that the Domain Names are confusingly similar to the Complainant’s trademark. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047 (“When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar”), and also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (“a domain name is ‘identical or confusing similar’ to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”).
The Panel further agrees that an addition of the descriptive terms such as “store” or “jacket” cannot serve to avoid the likely similarity but instead reinforces the likelihood of confusion as the Domain Names directly refer to the business of the Complainant. Adding descriptive terms to the Domain Names is insufficient to distinguish the Domain Names from the Complainant’s BELSTAFF trademark. See Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033 (“It is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion”) and also PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Names are confusingly similar to the Complainant’s BELSTAFF trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services; or
(ii) the fact that respondent has been commonly known by the domain name; or
(iii) legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel notes that the Complainant possesses exclusive rights to the BELSTAFF trademark and the Complainant claims its preliminary search revealed that the Respondent has no trademark rights in BELSTAFF or any variations thereof. Besides, the Complainant has never authorized, licensed or permitted the Respondent to use its trademark BELSTAFF.
The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(c) of the Policy. It is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent on this element. See among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683.
The Panel however notes that the Respondent did not respond to the contentions made by the Complainant and failed to present any evidence to prove its rights or legitimate interests in respect of the Domain Names under paragraph 4(c) of the Policy.
The Respondent is not commonly known by the Domain Names. Besides, based on the evidence presented on the record, the Panel holds that the Respondent is not making a legitimate noncommercial or fair use of the Domain Names.
For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the following circumstances which, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the 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 has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent's website or location or of a product or service on its website or location.
The word “belstaff” is a coined word and the Complainant has developed goodwill in its BELSTAFF mark which is exclusively associated with the high quality merchandise manufactured and marketed by the Complainant. Given the widespread fame of the Complainant and its BELSTAFF mark, the Panel finds it inconceivable that the Respondent was not aware of the BELSTAFF mark at the time of the registration of the Domain Names. In fact, the Respondent’s offer for sale of Belstaff branded products on its sites is clear indication that it had the knowledge of both the Complainant and the BELSTAFF mark when registering the Domain Names. Incorporation of the BELSTAFF mark in the Domain Names without any reasonable justification is sufficient evidence of bad faith by the Respondent under the circumstances. See LEGO Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494; Caixa D’Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464.
As evidenced by the documents presented by the Complainant, the Panel notes that the Domain Names were once resolved to web sites offering for sale purported Belstaff products, with which the Complainant claims has no business relationship. After reviewing the case, the Panel finds that there is no evidence that the Respondent has used or intends to use the Domain Names for purposes of bona fide offering of goods or services. To be bona fide, one of the minimum requirements is for the respondent to accurately disclose its relationship with the trademark holder, while in the current case, the Respondent uses the Complainant’s BELSTAFF mark not only in the Domain Names but also prominently on the home pages as well as on various products, without identifying itself as being a separate and independent entity from the Complainant by placing a disclaimer on its sites. Absent evidence to the contrary, the Panel determines that the act of the Respondent does not constitute a bona fide offering of goods or service. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
In the context of a virtual world like Internet, the Panel agrees that consumers who are seeking genuine products from the Complainant on the Internet may be attracted to the Domain Names comprising of the Complainant’s mark and may most likely be misled into the belief that the sites to which the Domain Names are resolved are the official sites of the Complainant and/or the Respondent is affiliated to or has been authorized by the Complainant to sell products of the Complainant, which is not true in fact. The Panel holds that bad faith is found when the Respondent is using the Domain Names to capitalize on the fame of the Complainant and to internationally attempt to attract, for commercial gain, Internet users to its web sites, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its own web sites or of the products being offered for sale there.
The Complainant claims that the offered goods on the sites under the Domain Names are counterfeit products as the Complainant has neither manufactured the goods nor authorized or permitted their production. The Panel also notes these goods are offered at low prices compared to the genuine goods of the Complainant. In all the circumstances, the Panel is satisfied that the Respondent is using the Domain Names to facilitate the sale of counterfeit products and such act of the Respondent is sufficient evidence of bad faith. See Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019.
The Complainant contends that it has never authorized, licensed or permitted the Respondent to use the BELSTAFF trademark. The Respondent could have rebutted the contentions of the Complainant but has chosen not to do so. Failure of the Respondent to respond to the Complaint may be further indicative of bad faith. See The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610, “The failure of the Respondent to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787)”.
In light of the above facts and reasons, the Panel therefore determines that the Domain Names were registered and are being used in bad faith pursuant to the Policy. 8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names , , , and be transferred to the Complainant.
Linda Chang
Sole Panelist
Dated: June 25, 2012
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