Complainant is Skorpio Limited of Lugano, Switzerland, represented by Notarbartolo & Gervasi S.p.A., Italy.
Respondent is Ma Liang, of Jiangsu, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2012. On October 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 23, 2012.
The Center appointed a sole panelist in this matter on November 30, 2012. However, on December 4, 2012, the Center notified the Parties that the sole panelist had recused itself from the case due to a late disclosure of a potential conflict with one of the Parties.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on December 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
Complainant Skorpio Limited is a Swiss company that manages the intellectual property rights of American fashion designer Rick Owens. Rick Owens began his fashion designer career in Los Angeles, United States of America, in 1994 and moved his production to Italy, starting worldwide distribution, in 2001. In 2002, Rick Owens won the Council of Fashion Designers of America Perry Ellis Emerging Talent Award and, in 2007, he was awarded a Cooper-Hewitt National Design Award, as well as the “Rule Breakers” award, by the Fashion Group International. His clothing designs have been worn by many celebrities, including Courtney Love, Madonna, and Kobe Bryant. Owens has opened up stores in Paris, New York, London, Seoul, Tokyo, and Hong Kong. See Complaint, Annexes 5-7.
Complainant owns a number of trademark registrations for the mark RICK OWENS, including registrations issued by the European Community and the United States of America. See Complaint, Annex 4.
The disputed domain name, , was created on April 21, 2011 and registered to the Respondent in April 2012. 5. Parties’ Contentions A. Complainant
Complainant asserts that the disputed domain name is confusingly similar to its RICK OWENS mark in that it is formed by Complainant’s well-known trademark in association with the generic English indication “shop”, referring to the online retail business which in fact seems to be carried out by Respondent.
Complainant further maintains that Respondent has no rights or legitimate interests in the disputed domain name. To the best of Complainant’s knowledge, there is no evidence that Respondent has ever used, or made any preparations to use, the disputed domain name, or any mark corresponding to the disputed domain name, in connection with a bona fide offering of goods and services. According to Complainant, Respondent is using the disputed domain name to offer for sale counterfeit RICK OWENS goods, as confirmed by a test purchase made by Complainant from the website at the disputed domain name.
Complainant also indicates that, to the best of its knowledge, Respondent has never acquired any trademark or service mark rights in the disputed domain name, nor was it ever commonly known by it.
With respect to the issue of bad faith registration and use, Complainant notes that, at the time the disputed domain name was registered, the RICK OWENS mark was already registered, well-known and internationally established, which fact could have been ascertained by Respondent; that the disputed domain name is used to sell counterfeit RICK OWENS goods; and that the general setup in the home page linked to the disputed domain name misleads consumers into believing that there is an official connection between Respondent’s business and Complainant’s activity under the RICK OWENS mark, in presenting the website at “www.” as an official online retail facility for RICK OWENS goods. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the disputed domain name, , is confusingly similar to the RICK OWENS trademark. The disputed domain name incorporates the trademark in its entirety, adding only the generic term “shop” and the top-level domain “.com.”
The Panel further concludes that Complainant has rights in the RICK OWENS mark. Such rights are established by the registrations covering such mark issued by the European Community and the U.S.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel holds that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is using, or preparing to use, the disputed domain name in connection with a bona fide offering of goods or services, that Respondent is commonly known by the disputed domain name, or that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
For these reasons, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel concludes that the disputed domain name, , was registered and is being used in bad faith. The evidence establishes that Rick Owens is a well-known fashion designer, with stores around the world, including in the Far East. The Panel notes that Respondent is located in China.
The evidence further establishes that the disputed domain name resolves to a site that offers for sale counterfeit RICK OWENS goods. Complainant has submitted the sworn declaration, dated October 11, 2012, of Mr. A. Brué of Brué S.p.A, whose company is an authorized manufacturer and distributor of footwear, including sneakers, under the RICK OWENS trademark. In his declaration, Mr. Brué confirmed the purchase from Respondent’s website of counterfeit sneakers. See Complaint, Annex 9. As determined by the panel in Tag Heuer S.A. v. JBlumers Inc./Jerald Blume,WIPO Case No. D2004-0871, the sale of fake goods for low prices “may cause considerable damage to the trademark rights and legitimate business interests” of the trademark owner and, thereby, disrupt the business of a competitor. Thus, the Panel finds that the circumstances set forth in paragraph 4(b)(iii) of the Policy have been established.
The Panel also finds that the circumstances set forth in paragraph 4(b)(iv) of the Policy have been established. As noted above, the disputed domain name is confusingly similar to the RICK OWENS mark and resolves to a website from which counterfeit RICK OWENS goods may be purchased. Indeed, the website in issue features at the top of its homepage the phrase, “Rick Owens Free Shipping to Worldwide.” See Complaint, Annex 11. The evidence also establishes Rick Owens’ notoriety in the fashion world. As such, the Panel concludes that, by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its site by creating a likelihood of confusion with Complainant’s RICK OWENS mark as to the source, sponsorship, affiliation or endorsement of such site and of the products found at such site.
The Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 Complainant.
Jeffrey M. Samuels
Sole Panelist
Date: December 17, 2012
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