The Complainant is Belstaff S.R.L. of Milan, Italy, represented by Hogan Lovells International LLP, Germany.
The Respondent is Bei Da Fu, N/A of Wulumuqi, Xinjiang, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2012. On May 21, 2012, the Center transmitted by email to Registrar a request for registrar verification in connection with the disputed domain name. On May 22, 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.
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 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 15, 2012.
The Center appointed Angela Fox as the sole panelist in this matter on June 20, 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 manufacturer of high-quality clothing and accessories marketed under the brand name and trademark, BELSTAFF. The Complainant’s business was founded in the United Kingdom in 1924 and from the outset the manufacture of special waterproof, windproof, rainproof and protective jackets for motorcyclists, aviators and outdoor enthusiasts formed an important part of its business. The Complainant’s Belstaff-branded jackets have been worn by generations of motorcycle enthusiasts and competitors on the international racing circuit, as well as by legends such as Ernesto Che Guevara during his motorcycle journey across Latin America.
The Complainant’s Belstaff products are sold worldwide including in Europe, Japan, the Far East, the Russian Federation, the United States, Australia and South America. The Complainant’s business currently retails through eleven flagship stores, two airport stores, three showrooms and five factory stores and is present at more than 1,000 points of sale worldwide. In addition to being sold through retail shops, the Complainant’s high-quality and upscale luxury fashion items under the BELSTAFF mark are sold through numerous official Belstaff online stores, which are managed for the Complainant at the following domain names, which the Complainant owns:
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Annexed to the Complaint were copies of the Complainant’s company brochures and other information on the history and use of the Belstaff brand.
The Complainant’s Belstaff-branded jackets have enjoyed substantial commercial success and international acclaim within celebrity and fashion circles. The brand has been advertised and promoted worldwide in magazines with international circulations such as InStyle and Glamour, and annexed to the Complaint was evidence that Belstaff-branded jackets and clothing have been worn in numerous blockbuster films, including:
- “Ocean’s Twelve” (2004),
- “The Aviator” (2005),
- “Batman Begins” (2005),
- “The Interpreter” (2005),
- “War of the World” (2005),
- “Mission Impossible III” (2006),
- “Superman Returns” (2006),
- “The Dark Knight” (2008),
- “The Curious Case of Benjamin Button” (2008),
- “Terminator Salvation” (2009),
- “Iron Man 2” (2010),
- “I am Number Four” (2011),
- “Water for Elephants” (2011).
The Complaint also states that Belstaff-branded jackets have been worn by many high-profile musicians, as well, including:
- Enrique Iglesias in the videoclip “Not in Love” (2003),
- Britney Spears in the videoclips “Toxic” and “Everytime” (2003),
- Rolling Stones in the videoclip “Streets of Love” (2005),
- Jamie Foxx in the videoclip “Unpredictable” (2006),
- Chris Brown in the videoclip “Wall to Wall” (2007),
- Jay-Z at the MTV European Music Awards (2009),
- Mary J. Blige, and
- Anastacia.
The Complainant owns various national trademark registrations for BELSTAFF and marks including BELSTAFF, as well as the following Community trademark registrations, details of which were annexed to the Complaint:
Trademark Application Date Registration No./Date Classes and Goods/Services
BELSTAFF (word)
August 2, 1996
335810
September 15, 1998
25
Class 25: Articles of clothing; articles of protective clothing (other than clothing for protection against accident or injury); footwear and headgear.
BELSTAFF (word)
April 23, 2001
2189025
September 5, 2002
3, 9, 18
Class 3: Non-medicated toilet preparations; cosmetic preparations; soaps, essential oils; perfumes; preparations for the teethe and for the hair; deodorants for personal use; anti-perspirants; products for the care of the skin, scalp and body, sun care preparations, gels for the shower; shampoos and hair lotion.
Class 9: Spectacles, sunglasses and cases and frames therefor.
Class 18: Bags, holdalls, haversacks, rucksacks, luggage, wallets, purses, briefcases and umbrellas.
AVIATOR BY BELSTAFF
(Logo)
February 28, 2005
4313334
April 3, 2006
18, 25
Class 18: Leather and imitations of leather and goods made of these materials included in this class; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 25: Clothing, footwear, headgear.
BELSTAFF (Logo)
November 24, 2008
7439102
June 9, 2009
14, 16, 24, 35
Class 14: Jewellery, precious stones, horological and chronometric instruments.
Class 16: Stationery, bookbinding material, articles of paper.
Class 24: Textile and textile goods, bed and table covers.
Class 35: Selling of jewellery, precious stones, horological and chronometric instruments, stationery, bookbinding material, articles of paper, textiles and textile goods, bed and table covers, in retail outlets, on-line, by mail order, telephone and television; advertising; business management; business administration; office functions.
BELSTAFF (Logo)
June 7, 2011
10060028
November 9, 2011
3, 9, 14, 18
Class 3: Toiletries, not for medical purposes, in particular aftershave, After-shave balm, Deodorants for personal use, Perfumes, Moisturisers, Soaps, Talcum powder and antiperspirants, Cosmetic preparations, Soaps, Essential oils for personal use, Dental care preparations, namely toothpaste, Mouthwashes; Hair-care preparations, in particular shampoo, Hair conditioners and Hair mousses; Skin and body care preparations, in particular moisturisers, Soaps, Body foam and Body oil, Shower gels, Sun-screening preparations and Sun lotion.
Class 9: Spectacles, sunglasses and cases and frames relating thereto.
Class 14: Jewellery; Jewellery, precious stones, horological and chronometric instruments.
Class 18: Bags, Including backpacks, Beggar’s bags, Trunks (luggage),Motorcycle bags, Handbags, Fabric bags and/or Animal skins, hides, Notecases, Small bags, Portfolio bags and Umbrellas.
The disputed domain name was registered on October 8, 2011. It has been used to link to a German-language website that offers Belstaff-branded jackets for sale. The website contains no contact details for the source of the goods, and the Complainant states that the goods advertised on the website are counterfeits. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to its registered trademark BELSTAFF and to its registered marks incorporating BELSTAFF. The disputed domain name incorporates the BELSTAFF mark in its entirety and differs only in the addition of the non-distinctive words “jacke”, which means “jacket” in German, and “Deutschland”, which of course is the German word for “Germany”.
In the Complainant’s submission, the Respondent has no rights or legitimate interests in the disputed domain name, which the Complainant states was registered and has been used in bad faith in order to draw in Internet users searching for the Complainant’s goods to a website that appears to be that of, or authorized by, the Complainant, but which in fact offers counterfeit Belstaff goods. B. Respondent
The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) a respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy. A. Identical or Confusingly Similar
The Complainant has shown that it owns registered trademark rights in BELSTAFF and marks incorporating BELSTAFF. The disputed domain name incorporates the Complainant’s distinctive BELSTAFF trademark in its entirety and differs only in the addition of the non-distinctive German words “jacke”, which means “jacket”, and “Deutschland”, the German word for “Germany”.
Previous UDRP panels have ruled that the presence of relevant descriptors or non-distinctive matter does not avoid confusing similarity between a domain name and a complainant’s trademark (see, inter alia, Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709, where the panel held, “the mere addition of a descriptive term to an identical trademark, has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” and Pfizer Inc. v. Juan Gonzales,WIPO Case No. D2004-0589, where the panel held, “it is an established principle that the mere addition of generic terms and/or numbers does not create a different trademark in which the respondent has rights and cannot be considered sufficient to avoid confusion between the domain name and the complainant’s trademark.”).
The word “jacke” is a relevant descriptor since it directly describes the Complainant’s goods, and the reference to “Deutschland” simply denotes a geographical area where the goods may be sold. Taken together, all the elements in the disputed domain name combine to suggest a German website where the Complainant’s Belstaff-branded jackets can be bought.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s BELSTAFF trademark. B. Rights or Legitimate Interests
The Complainant has never authorized, licensed or permitted the Respondent to use the trademark BELSTAFF. The Respondent does not appear to have been commonly known by a name corresponding to the disputed domain name. A preliminary search by the Complainant has disclosed no trademark rights in BELSTAFF, or any variations thereof, in the name of the Respondent.
The Respondent, for its part, has made no effort to refute the allegation that it has no rights or legitimate interests in the disputed domain name.
There is nothing on the facts of this case to suggest that the Respondent could invoke any of the circumstances listed in paragraph 4(c) of the Policy in order to demonstrate a right or legitimate interest.
In particular, although the Respondent appears to have used the disputed domain name to offer Belstaff-branded jackets for sale, such use does not appear to be use in connection with a bona fide offering of goods and services in accordance with paragraph 4(c)(i) of the Policy, since the goods appear to be counterfeit or unauthorized imitations of goods that bear the BELSTAFF trademark, masquerading as genuine Belstaff products. Such activities, while commercial in nature, are designed to capitalize on the confusing similarity of the disputed domain name with the Complainant’s BELSTAFF trademark and thus to mislead Internet users into purchasing counterfeit products in the mistaken belief that they are genuine. In the Panel’s view, such conduct lacks the bona fides needed to give rise to a right or legitimate interest under the Policy.
As noted by the panel in Madonna Ciccone v. Dan Parisi and “M”, WIPO Case No. D2000-0847, trading upon the name, goodwill and reputation of another by misleadingly attracting Internet users for commercial gain cannot be considered to constitute a bona fide commercial or fair use within the meaning of paragraph 4(c)(i) of the Policy. In that case the panel held that:
“use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services […] to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy.”
Numerous panels have found under the UDRP that “once the Complainant makes a prima facie showing that the registrant does not have rights or legitimate interests in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name.”(see, for instance, The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064).
The Panel finds that the Complainant has made out a prima facie case under this heading, and the Respondent has done nothing to refute it. The Panel therefore concludes that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant has shown in evidence that its BELSTAFF mark is well-known as denoting its luxury clothing and accessories, including in particular jackets. The Respondent’s use of the Complainant’s BELSTAFF trademark on the website linked to the disputed domain name in respect of what the Complainant contends, and the Respondent does not deny, are counterfeit Belstaff goods demonstrates, moreover, that the Respondent must have been aware of the Complainant and its BELSTAFF trademark when it registered the disputed domain name, and that it registered the disputed domain name with the intention of attracting Internet traffic seeking the website of the Complainant or one authorized by it as the source of genuine Belstaff-branded goods.
The Complainant refers to the comments of the panel in PepsiCo, Inc. v. Paul J. Swider, WIPO Case No. D2002-0561, where the panel held that “Respondent’s registration, without authorization, of a domain name that is identical to Complainant’s famous […] mark and […] trade name is in and of itself evidence of bad faith.”
The Panel agrees that the disputed domain name appears to have been deliberately chosen with the intention of attracting, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s BELSTAFF trademark. These circumstances, in the Panel’s view, amount to evidence that the disputed domain name was registered in bad faith.
There is, moreover, evidence that the disputed domain name has been used in bad faith. As indicated above, the Respondent has used the disputed domain name to intentionally attract Internet users to its website by creating a likelihood of confusion with the Complainant, with the intention of benefiting commercially through the sale of what the Complainant has alleged, and the Respondent has not denied, are counterfeit goods. The Respondent has therefore been intentionally attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion between the Complainant’s famous BELSTAFF trademark and the source or affiliation of the Respondent’s website under paragraph 4(b)(iv) of the Policy.
By such conduct, the Respondent essentially free-rides on the goodwill of the Complainant’s well-known BELSTAFF trademark and disrupts the Complainant’s business by diverting and misleading consumers looking for genuine Belstaff products and instead offering them what appear to be counterfeit products masquerading as the genuine article. Such activities are inherently damaging to the Complainant’s rights and legitimate business interests.
The Panel notes that the Respondent’s website appears to have been subsequently deactivated. However, as noted in paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), this does not preclude a finding of bad faith in respect of the use that has been made of the disputed domain name. ,.
In light of these findings, the Panel concludes that the disputed domain name was both registered and has been 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.
Angela Fox
Sole Panelist
Dated: July 13, 2012
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