The Complainant is Belstaff S.R.L. of Milan, Italy, represented by Hogan Lovells International LLP, Germany.
The Respondent is li qiuhua of Guiyang, Guizhou, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with B, Inc. (the “Registrar”) 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2012. On April 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 20, 2012, the Registrar 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 20, 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 April 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2012.
The Center appointed Karen Fong 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
The Complainant is the internationally recognised company and manufacturer of high-quality clothing and accessories under the trade mark BELSTAFF. It was founded in 1924 and specialises in the creation of high technology protective garments, boots, helmets, gloves, goggles for motorcyclists, aviators, the army and those involved in active outdoor activities. The Belstaff brand has over the years achieved iconic status and has been worn by many famous people from Che Guevara to Tom Cruise. It has been featured in many films including the various Batman, Mission Impossible and Terminator movies.
The Complainant has stores around the world as well as online stores connected to the following domain names , , , , , , and .
The BELSTAFF trade mark is registered all over the world including the following Community trade marks registration numbers: 335810 (applied on August 2,1996) and 2189025 (applied on April 23, 2001).
The Domain Name was registered on June 11, 2011. The Website offers for sale Belstaff products that appear to be counterfeit and/or are unauthorised by the Complainant. The Website also features the Complainant’s Belstaff logo. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the BELSTAFF trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the domain name, the language of the proceedings shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the Registration Agreement in relation to the Domain Name is Chinese.
The Complainant has in the Complaint and in its email in response to the Center’s email regarding the language of the proceeding of the Domain Name submitted that English be the language of the proceeding for the following reasons: there is no connection between the Domain Name or the content of the website connected to the Domain Name (the “Website”) to the Chinese language; the English language is one which is most likely to be understood by all parties especially given the fact that the Domain Name consist of Latin letters rather than Chinese characters and the Website appears to be directed at Europeans rather than Chinese speakers and it would be disproportionate to require the Complainant to submit a translated Complaint. The Respondent did not comment on the language of the proceeding by the specified due date.
The Panel accepts the Complainant’s submissions in the Complaint regarding the language of the proceeding and is satisfied that the Respondent appears to be familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English and that the Respondent was given the opportunity to file a response in either English or Chinese but decided not to do so. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. B. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith. C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade mark BELSTAFF and that BELSTAFF is a famous trade mark.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Complainant’s registered trade mark BELSTAFF is the dominant portion of the Domain Name. The addition of the descriptive terms, “sito” and “ufficiale” which is Italian for “official website” does nothing to minimise the risk of confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.com”. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. D. Rights or Legitimate Interests
The Complainant submits that it has not authorized, licensed or permitted the Respondent to use the BELSTAFF trade mark in the Domain Name or in any other way. The Respondent is not commonly known by the Domain Name. Further the Complainant alleges that the Belstaff products offered for sale by the Respondent are counterfeit as they are sold at much lower prices than genuine Belstaff products. Another giveaway is the fact that there is no contact information for the Respondent on the Website. According to prior UDRP jurisprudence, there can be no legitimate interest in the sale of counterfeits (see Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552 and Farouk Systems, Inc v. QYM,WIPO Case No. D2009-1572). The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent.
In any event, whether the Respondent is selling genuine goods or counterfeits is irrelevant as the criteria set out in Oki Data Americas, Inc v. ASD, Inc,WIPO Case No. D2001-0903, referred to in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), are not established in this case. In particular, the Website does not accurately or prominently disclose the relationship between the registrant and the trade mark owner. Further, as the Respondent failed to respond to the Complainant’s contentions, it therefore has failed to displace the assertion on the part of the Complainant that the Respondent has no rights or legitimate interests in the Domain Name. Paragraph 14 of the Rules provides that the Panel may draw such inferences from such a default as it considers appropriate. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. E. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s BELSTAFF trade mark when it registered the Domain Name. The fact that the Domain Name incorporates the Complainant’s well-known trade mark in its entirety is in the Panel’s view evidence that the registration of the Domain Name was in bad faith. Further the Domain Name incorporates the words “sito-ufficiale” or “official website” when that is clearly not the case is a another clear indication that the Domain Name was registered in bad faith.
With respect to the use of the Domain Name, the Panel observes that the Respondent in using the Complainant’s trade mark on the Website and is also using the Website to sell what appears to be counterfeit Belstaff products. This shows a clear intention to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s Website is and the products sold on it are authorised or endorsed by the Complainant. The above is clearly bad faith use under paragraph 4(b)(iv) of the Policy.
The Panel also concludes that the actual use of the Domain Name was 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 Domain Name be transferred to the Complainant.
Karen Fong
Sole Panelist
Dated: June 25, 2012
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