The Complainant is Dama S.p.A. of Varese, Italy, represented by Società Italiana Brevetti S.p.A., Italy.
The Respondent is Guopeng Chen of Guangzhou, Guangdong, China. 2. The Domain Names and Registrars
The disputed domain names and are registered with HiChina Zhicheng Technology Ltd. The disputed domain names and (together “the Domain Names”) are registered with Jiangsu Bangning Science & Technology Co Ltd. (together “the Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2012. On October 4, 2012, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On October 9 and 10, 2012, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant of the Domain Names and providing the contact details. On October 10, 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 received the Respondent’s email communication in Chinese on October 10, 2012.
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 October 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the proceeding update on November 8, 2012.
The Center appointed Karen Fong as the sole panelist in this matter on November 16, 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, a company with its head office in Italy, has engaged in the business of manufacturing, distributing and selling high-end men’s, women’s and children’s apparel and accessories since its incorporation in 1921. Inspired by the yachting world, it created the PAUL & SHARK sportswear brand in the ‘70s. The PAUL & SHARK brand is now a leading luxury brand distributed in 65 countries in a 438 stores. In China itself which is where the Respondent is located, the Complainant has 56 shops in 41 cities.
The Complainant has a large portfolio of PAUL & SHARK trade marks registered worldwide including in China where the earliest trade mark registered there was in 1985. Through the extensive use of the trade mark around the world including China (substantial materials of which were provided by the Complainant in evidence), the Complainant has also acquired goodwill and reputation in respect of the PAUL & SHARK trade mark.
The Complainant owns a large portfolio of domain names with generic as well as country top level domains which direct Internet users to the official website of the Complainant.
The Domain Names were registered on the following dates, on March 4, 2012; on April 22, 2012; on May 14, 2012 and on July 3, 2012. The Domain Names are connected to active websites (“the Websites”) bearing the PAUL & SHARK Yachting logo trade mark and with content that gives Internet users the impression that the Websites are somehow connected or associated with the Complainant. The Websites offer for sale clothing and accessories bearing the PAUL & SHARK trade mark which are most likely counterfeit. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Names are identical or confusingly similar to the PAUL & SHARK trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Names and that the Domain Names were registered and is being used in bad faith. The Complainant requests transfer of the Domain Names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. He/She only sent an email to the Center on October 10, 2012 asking what he/she should do. No further response was filed after receipt of an email from the Center responding to the query made in the email. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are 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 Names; and
(iii) The Domain Names were registered and are being used in bad faith. B. Preliminary Procedural Issue – Language of the 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 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 proceedings. According to the information received from the Registrars, the language of the Registration Agreements is Chinese in this case.
The Complainant submits in paragraph 10 of the Complaint that the language of the proceeding should be English as the Respondent is familiar with the English language. The Complainant contends amongst other things that the content of the Websites is in the English language, the Respondent has in pre-complaint correspondence written to the Complainant’s legal representatives in English, the Complainant is not familiar with the Chinese language and conducting the proceedings in Chinese would disadvantage the Complainant as it would have to incur substantial added expense and inconvenience in having this Complaint translated into Chinese.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding and is satisfied that the Respondent is familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Further, the Respondent did not respond to the Complaint or the language of the proceeding by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. C. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights to the trade mark PAUL & SHARK through use and registration that pre dates the Domain Names.
The Domain Names integrate the Complainant’s registered trade marks PAUL & SHARK with the descriptive terms, “sale”, “outlet”, “store” and “online” and the generic “.com” domain suffix. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic domain suffix. Further, the addition of the descriptive terms at the end of the PAUL & SHARK trade mark does not negate the confusing similarity encouraged by the Respondent’s complete integration of the PAUL & SHARK trade mark in the Domain Names.
The Panel finds that the Domain Names are confusingly similar to the PAUL & SHARK trade mark of the Complainant, and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled. D. Rights or Legitimate Interests
The Complainant contends that the Respondent has not been licensed or authorized by the Complainant to use the PAUL & SHARK trade mark. Further the Respondent is not commonly known by the Domain Names. The Complainant has submitted evidence confirming that a product purchased from one of the Websites is a counterfeit. There can be no rights or legitimate interests in the sale of counterfeits. The Complainant has satisfied its burden of proof of showing that the Respondent lacks rights or legitimate interests in the Domain Names. (see Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552 and Farouk Systems, Inc v. QYM, WIPO Case No. D2009-1572).
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. 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 was aware of the Complainant’s well-known trade mark when he/she registered the Domain Names. The Complainant has provided sufficient evidence that the registrations of the Domain Names post date the PAUL & SHARK trade mark registrations.
The very incorporation of the Complainant’s well-known trade mark in the Domain Names and the display of the Complainant’s trade marks and offer for sale counterfeit products on the Websites confirm the Respondent’s awareness of the trade marks. Thus, the Panel concludes that the Respondent deliberately registered the Domain Names in bad faith.
The Panel also finds that the actual use of the Domain Names is in bad faith. The products offered for sale on the Websites are counterfeit PAUL & SHARK products for reasons set out in paragraph 6D. The use by a respondent of a domain name which includes a well-known trade mark to resolve to a website which offers and sells counterfeit products under that trade mark is evidence of bad faith registration and use. (See Burberry Limited v Jonathan Schefren, WIPO Case No. D2008-1546 and Prada SA v. Domains for Life, WIPO Case No. D2004-1019).
In addition, the Websites were set up to deliberately mislead Internet users that it is connected to, authorised by or affiliated to the Complainant. The Websites contain the Complainant’s PAUL & SHARK trade marks.
From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s Websites and the products sold on it are those of or authorised or endorsed by the Complainant.
The Panel therefore concludes that the Domain Names were registered and are being used in bad faith under paragraph 4(b)(iv) 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 Domain Names , , and be transferred to the Complainant.
Karen Fong
Sole Panelist
Dated: November 26, 2012
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