The Complainant is Dama S.p.A. of Varese, Italy, represented by Società Italiana Brevetti S.p.A., Italy.
The Respondent is Duan Zuochun of Zhuhai, Guangdong, China. 2. The Domain Names and Registrars
The disputed domain name is registered with Central Comercializadora de Internet Panama S.A.
The disputed domain name is registered with Hangzhou AiMing Network Co., LTD. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2012. On May 14, 2012, the Center transmitted by email to Central Comercializadora de Internet Panama S.A. and Hangzhou AiMing Network Co., LTD requests for registrar verifications in connection with the disputed domain names.
On May 14, 2012, Central Comercializadora de Internet Panama S.A. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name and providing the contact details.
On May 22, 2012, Hangzhou AiMing Network Co., LTD transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name and providing the contact details.
On June 5, 2012, the Center transmitted an email to the Parties in both Chinese and English language regarding the language of the proceeding. On June 6, 2012, the Complainant confirmed its request that English be the language of the proceeding. On June 6 and 7, 2012, the Respondent requested that Chinese be the language of the proceeding.
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 June 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2012. The Respondent sent email communications to the Center on June 6 and 7, 2012, but the Respondent did not submit a formal Response. Accordingly, the Center notified the Parties with an update of the proceeding on June 28, 2012.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on July 2, 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 PAUL & SHARK (the “Trade Mark”), the earliest dating from 1984, including registrations in China, where the Respondent is based.
The Complainant is also the owner of numerous gTLD and ccTLD domain name registrations comprising the Trade Mark, including and . B. Respondents
The Respondent appears to be an individual based in China. C. Disputed Domain Names
The disputed domain name was registered on December 16, 2011.
The disputed domain name was registered on January 7, 2012. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant is a well-known manufacturer, distributor and retailer of high-end men’s, women’s and children’s clothing and accessories, established in Italy in 1921.
In the 1970s, the Complainant created the Paul & Shark sportswear brand, inspired by the yachting world. Today, Paul & Shark is a luxury clothing brand distributed in about 65 countries in a network of approximately 438 both single brand and multi brand stores.
The disputed domain names are confusingly similar to the Trade Mark. They comprise the Trade Mark in its entirety.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not affiliated with or authorized by the Complainant in any way and is not commonly known under the Trade Mark.
The Respondent is not making a bona fide offering of goods or services under the disputed domain names and is not making a legitimate noncommercial or fair use of the disputed domain names.
The disputed domain name is linked to a pay-per-click website (the “Website”) with links to websites of the Complainant’s competitors in the clothing industry. The Website does not contain any disclaimer disclaiming any relationship with the Complainant.
The disputed domain name The disputed domain names have been registered and used in bad faith. The Respondent has used the disputed domain name primarily for the purpose of intentionally attracting, for commercial gain, Internet users to the Website, in order to profit from the notoriety of the Trade Mark. The Respondent has offered to sell the disputed domain name to the Complainant for EUR 3,500. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding The language of the Registration Agreement 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 proceeding 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 proceeding with respect to the disputed domain name should be English. Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding 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 proceeding. 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 proceeding for the following reasons: (1) The Respondent has negotiated the sale of the disputed domain name with the Complainant in English; (2) The Website is available in several languages including English; (3) The “this domain name is for sale” website to which the disputed domain name is linked is in English and Chinese; (4) Requiring the Complainant to submit documents in Chinese would cause undue delay and substantial further expense; (5) The Complainant’s Reverse Whois Search has returned 612 current records for domain names registered in the name of the Respondent. Given the high number of results, it can be assumed that the Respondent has corresponded in English with at least with some of the Registrars involved; (6) It was decided in Immobilière Dassault SA, Groupe Industriel Marcel Dassault v. DuanZuoChun,WIPO Case No. D2011-2106 involving the Respondent that the language of the proceeding would be English; (7) Following the filing of the Complaint, the Respondent has sent to the Complainant further emails regarding the disputed domain names in English. The Respondent requested that Chinese be the language of the proceeding because the Registration Agreement is in Chinese, the Respondent does not understand English, and the Respondent is an individual who cannot afford the translation fee of the Complaint, therefore it would be unfair to accept the Complaint in English. The Respondent did not file a formal Response. 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 therefore finds that sufficient evidence has been adduced by the Complainant to suggest that the Respondent is conversant in the English language (Finter Bank Zurich v. Shumin Peng, supra). Moreover, all of the Center’s communications have been transmitted to the Parties in both Chinese and English, and the Respondent has been provided with an opportunity to file his Response in either English or Chinese. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding 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 by well over 30 years the dates of registration of the disputed domain names. The disputed domain names contain the Trade Mark in its entirety. 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 the disputed domain names: i) before any notice to the Respondent of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organisation) has been commonly known by the domain name even if the Respondent has acquired no trade mark or service mark rights; or (iii) the Respondent is 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. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain names by well over 30 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 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 Respondent has failed to show that it has acquired any genuine trade mark rights in respect of the disputed domain names or that the disputed domain names have been 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, noncommercial or fair use of the disputed domain names. To the contrary, the evidence shows that the Respondent has been using the Website in order to generate revenue through sponsored links to third party websites, capitalising on consumer confusion between the disputed domain name , the Website and the Complainant. The disputed domain name has been linked to a “this domain name is for sale” website. 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 fulfils 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 in bad faith on the part of the Respondent: “By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.” The evidence shows the Respondent has registered the disputed domain name and set up the Website in order to capitalise on the repute of the Trade Mark and gain pay-per-click revenue through attracting consumers to the Website. At some stage following filing of the Complaint, the Respondent ceased using the Website. The disputed domain name is currently inactive. The Panel finds, in all the circumstances of this case, and in particular given the Respondent’s failure to file a formal Response, the Respondent’s conduct in apparently taking down the Website following filing of the Complaint is a further indication of bad faith. Pursuant to paragraph 4(b)(i) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent: “Circumstances indicating that the Respondent has registered or the Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name.” The evidence shows the Respondent has offered to sell the disputed domain name on the “this domain name is for sale” website to which it has been linked, and in direct email correspondence with the Complainant offering to sell the disputed domain name for EUR 3,500, an amount in excess of the Respondent’s likely out-of-pocket expenses incurred in registering the disputed domain name. The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraphs 4(b)(iv) and 4(b)(i) of the Policy, and also under the Panel’s general discretion under paragraph 4(b) of the Policy. 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 Hughes
Sole Panelist
Dated: July 5, 2012
Full & Egal Universal Law Academy