The Complainant is Susana Monaco, Inc. of New York, United States of America represented by Cowan, DeBaets, Abrahams & Sheppard, LLP, United States of America.
The Respondent is Youchao Wang of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2012. On August 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 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 August 27, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of the proceeding. On August 27, 2012, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit its comments within 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 in both English and Chinese the Respondent of the Complaint, and the proceedings commenced on September 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2012.
The Center appointed Jonathan Agmon as the sole panelist in this matter on October 5, 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 Susana Monaco Inc. a company based in the United States of America, which has been engaging in the field of fashion since the year 1990. The Complainant markets its goods under the mark SUSANA MONACO.
The Complainant is the owner of numerous worldwide trademark registrations for the mark SUSANA MONACO. For example: United States trademark registration No. 2221388 – SUSANA MONACO, with the registration date of February 2, 1999; the People's Republic of China trademark registration No. 6740527 – SUSANA MONACO, with the registration date of July 8, 2010; Community trademark registration No. 006893614 – SUSANA MONACO, with the registration date of January 1, 2009, and many others.
The Complainant’s goods are sold worldwide by high-end department stores, boutiques and through designated online retailers. The Complainant also offers its goods for sale through its website under the domain name .
The disputed domain name was registered on May 15, 2012.
At the time of this decision, the disputed domain name resolves to an inactive webpage displaying an error page. 5. Parties’ Contentions A. Complainant
The Complainant argues that its clothing have received significant global recognition from industry experts and from celebrities. The Complainant further contends that its designs were presented in major fashion magazines.
The Complainant further argues that it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register the disputed domain name or use the SUSANA MONACO trademark in any manner.
The Complainant further argues that the Respondent has never used the disputed domain name for any bona fide or legitimate business.
The Complainant further argues that the disputed domain name used to resolve to an online marketplace, which offered for sale goods that appear to be of the Complainant’s.
The Complainant further argues that the website under the disputed domain name features the SUSANA MONACO Mark, while appropriating the exact font and style, which the Complainant uses and purports to sell hundreds of the Complainant’s designs at discount prices. The Complainant further contends that the “look and feel” of the website under the disputed domain name is identical to the Complainant’s website.
The Complainant further argues that the images in the website under the disputed domain name were copied from several of the Complainant’s authorized online retailers.
The Complainant further argues that it received complaints from customers who attempted to purchase items from the website under the disputed domain name and did not receive any merchandise. The Complainant further contends that the Respondent is engaging in a phishing scheme.
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s SUSANA MONACO mark, in which the Complainant has rights, seeing that it incorporates the SUSANA MONACE mark as a whole. The Complainant further contends that the addition of the descriptive word “shop” is insufficient to avoid confusing similarity between the SUSANA MONACO mark and the disputed domain name.
The Complainant further argues that the Respondent's registration and use of the disputed domain name may lead consumers to believe it has a sponsorship, affiliation, approval or association with the Complainant.
The Complainant further argues that the Respondent is not known by the disputed domain name.
The Complainant further argues that the Respondent is using the disputed domain name in order to confuse consumers as to the origin of the goods on the website and for commercial gain.
The Complainant further argues that the Respondent registered and is using the disputed domain name in bad faith. The Complainant further contends that the Respondent was aware of the Complainant and its mark, when registering the disputed domain name.
For all of the above reasons, the Complainant request the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceedings
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding 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 proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of proceedings should be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceedings:
a) The disputed domain name is in English characters and includes the Complainant’s mark, as well as the English word “shop”;
b) The Respondent used to operate on the website under the disputed domain name an online marketplace, while using the English language.
c) The Respondent did not object to the Complainant’s request that English be the language of proceedings.
Upon considering the above, the Panel decides to accept the Complainant’s request and decides that English be the language of proceedings. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous worldwide trademark registrations for the mark SUSANA MONACO. For example: United States trademark registration No. 2221388 – SUSANA MONACO, with the registration date of February 2, 1999; the People's Republic of China trademark registration No. 6740527 – SUSANA MONACO, with the registration date of July 8, 2010; Community trademark registration No. 006893614 – SUSANA MONACO, with the registration date of January-1, 2009, and many others.
The disputed domain name differs from the registered SUSANA MONACO trademark by the additional word “shop” and the additional gTLD “.com”.
The disputed domain name integrates the Complainant’s SUSANA MONACO trademark in its entirety, as a dominant element.
The additional word “shop” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s SUSANA MONACO trademark, as it is a common term directly relating to the Complainant’s business.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
Indeed, “[t]he 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” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
Also, the addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. (See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent failed to assert any such rights, or legitimate interests.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its SUSANA MONACO trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the SUSANA MONACO trademark at least since the year 1999. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.
According to evidence provided by the Complainant, the disputed domain name used to lead Internet users to a website that seemed to be similar to the Complainant’s website and was engaged in marketing of fashion products that seemed to be of the Complainant’s or similar to the Complainant’s products.
The Respondent’s use of the disputed domain name to resolve to a website that is designed to look like a website associated with the Complainant which promotes goods similar or identical to the goods being offered by the Complainant is in the Panel’s view clear evidence of the Respondent registration and use of the disputed domain name with knowledge of the Complainant and of the use the Complainant is making of its SUSANA MONACO trademark and intended to trade off the value of these. The Respondent’s actions therefore constitute bad faith. (See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the Complainant’s trademark registration amounts to bad faith”).
Furthermore, the disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Moreover, the Complainant argues that the disputed domain name was also used as a credit card phishing website. Phishing activities pose a severe threat to customers, trademark holders and other third parties. UDRP panels have found that performing phishing scams using a disputed domain name constitutes use in bad faith (see e.g. CareerBuilder, LLC v. Stephen Baker,WIPO Case No. D2005-0251; The Boots Company, PLC v. The programmer adviser,WIPO Case No. D2009-1383; and Societe Francaise Du Radiotelephone – SFR v. Morel David,WIPO Case No. D2009-1563). However, in the present case, the Complainant failed to provide sufficient evidence to support this argument and the Panel does not consider this argument when rendering its decision.
Finally, based on the evidence presented to the Panel, including the late registration of the disputed domain name, the use of the Complainant’s trademark in the disputed domain name and the similarity between the disputed domain name and the Complainant’s mark, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 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.
Jonathan Agmon
Sole Panelist
Dated: October 19, 2012
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