The Complainant is Dolce & Gabbana S.r.l. of Milan, Italy, represented by Laura Turini, Italy.
The Respondent is Cheng Mingchun of Quanzhou, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with ChinaNet Technology (SuZhou) CO., LTD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2013. On June 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 21, 2013, 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 June 24, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On June 25, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by 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 the Respondent of the Complaint, and the proceedings commenced on July 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2013.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on July 30, 2013. 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
“Dolce” and “Gabbana” are the last names of the two famous designers Domenico Dolce and Stefano Gabbana, founders of the “Dolce & Gabbana” brand. The Complainant is an Italian company and the exclusive worldwide licensee of the DOLCE & GABBANA trademark and entitled to act in order to recover and register, in the Complainant’s name, Internet domain names. The DOLCE & GABBANA trademark has been registered in many countries, inter alia:
1. DOLCE & GABBANA, Italian trademark, No. 372387, filed on July 26, 1985, renewed on June 15, 2005.
2. DOLCE & GABBANA, International Trademark, No. R555568, registered on February 14, 1990.
3. DOLCE & GABBANA, International Trademark, No. 625152, registered on July 13, 1994.
According to WhoIs data, the Respondent is Cheng Mingchun. The Disputed Domain Name was registered on January 20, 2013.
The Registrar confirmed, in its email of June 1, 2013, that the Registration Agreement for the Disputed Domain Name is in Chinese. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions could be summarized as follows:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Disputed Domain Name is composed of the same root of the Complainant’s trademark, with the additional part “buy” and “online”, which does not diminish the likelihood of confusion with the Complainant’s trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant is the exclusive licensee of the DOLCE & GABBANA trademark. The Respondent was not authorized, licensed, or otherwise allowed by the Complainant or by the owner of the trademark to use the name “dolcegabbana”, or to apply for any domain name incorporating its trademark. The Respondent is also not commonly known by that name.
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
The DOLCE & GABBANA trademark is a famous trademark around the world. Thus, it is hard to believe that the Respondent was not aware of the existence of the Complainant’s trademark and reputation before registering the Disputed Domain Name. The registration of the Disputed Domain Name prevents the Complainant from reflecting its mark in a corresponding domain name, considering that the Disputed Domain Name is a “.com” domain name, the most common on the Internet. In fact, the Disputed Domain Name was selected by the Respondent with clear intent for commercial gain, achieved by using it to sell counterfeit products bearing the DOLCE & GABBANA trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Language of Proceeding
Paragraph 11(a) of the Rules provides that “[u]nless 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.”
Paragraph 10(b) and 10(c) of the Rules provides that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case; [t]he Panel shall ensure that the administrative proceeding takes place with due expedition….”
The Rules allow 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. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceeding should not be 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). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“[...]in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (See paragraph 4.3 of WIPO Overview 2.0).
The Complainant requested that the language of the proceeding be English. Despite the fact that the language of the Registration Agreement for the Disputed Domain Name is Chinese, the Panel notes the following facts:
1. The web site to which the Disputed Domain Name resolves is in English;
2. The Respondent’s business at the web site was conducted in English.
3. The consumers may purchase the Respondent’s products with U.S. dollars. The web site is designed to attract Internet users from around the world rather than only Chinese users.
4. The Center’s communication to the Respondent uses both English and Chinese, and the Respondent has been given an opportunity to object to the Complainant’s request. The Respondent did not reply to the Center or object to the Complainant’s language request.
Given these facts, the Panel is satisfied that the Respondent has sufficient familiarity with English that the Respondent should be able to understand the language of the Complaint and has chosen not to respond. It will not be prejudicial to the Respondent in its abilities to articulate its arguments in English in the administrative proceeding, whereas requiring the Complainant to translate the Complaint into Chinese would cause unnecessary delay to the administrative proceeding. In order to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding and the decision will be rendered in English. 7. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”
Paragraph 1.8 of WIPO Overview 2.0 summarizes the consensus view of UDRP panels regarding whether a licensee of a trademark has rights in a trademark for the purpose of file a UDRP case, whereby:
“In most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding.[...]”
The Complainant has produced registration certificates of the trademarks herein and a letter from the owner of the trademarks establishing that the Complainant is the exclusive worldwide licensee of the DOLCE & GABBANA trademark and entitled to act in order to recover and register, in the Complainant’s name, Internet domain names. Therefore, the Panel finds that the Complainant has rights in the DOLCE & GABBANA trademarks sufficient for purposes of paragraph 4(a)(i) of the Policy.
The Disputed Domain Name incorporates the distinctive portion of the DOLCE & GABBANA trademark, “dolce” and “gabbana”, with the words “buy” and “online” and the top-level suffix “.com”. The words “buy” and “online” are generic terms. The DOLCE & GABBANA element is still immediately recognizable as the Complainant’s trademark. In the Panel’s view, the addition of other descriptive and generic terms does not mitigate the likelihood of confusion between the Disputed Domain Name and the Complainant’s trademark. (J. Choo Limited v. Weng Huangteng,WIPO Case No. D2010-0126; J. Choo Limited v. Hui Wang aka Wang Hui,WIPO Case No. D2010-0534).
As for the applicable top-level suffix such as “.com” in the Disputed Domain Name, it is a consensus view that it may usually be disregarded under the confusing similarity test (MADRID 2012, S.A. v. Scott Martin-MadridMan Websites,WIPO Case No. D2003-0598; also see paragraph 1.2 of the WIPO Overview 2.0).
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”
Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, which states:
“[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
The consensus view of UDRP panels on the rights or legitimate interests of a reseller or distributor under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.3 of the WIPO Overview 2.0, whereby:
“[n]ormally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. […].” (See also, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; National Association of Realtors v. John Fothergill,WIPO Case No. D2010-1284).
The Complainant has established that it is the exclusive worldwide licensee of the DOLCE & GABBANA trademark. It further claims that the Respondent is not authorized, licensed or otherwise allowed by the Complainant or the trademark owner to use the DOLCE & GABBANA trademark or to register the Disputed Domain Name.
The Complainant has produced a counterfeit report by the DOLCE & GABBANA trademark owner claiming that the Respondent’s products are counterfeit. The screenshots of the web site at the Disputed Domain Name provided by the Complainant show that the Respondent uses the description of “Dolce and Gabbana” to sell shirts, bags and shoes but does not actually and prominently disclose the Respondent’s relationship with the Complainant. Thus, it is clear that the Respondent is using the Disputed Domain Name for commercial gain. The Panel need not decide whether the goods sold on the web site are genuine, since the Respondent cannot claim rights or legitimate interests to the Disputed Domain Name when it fails to accurately and prominently disclose the relationship between the parties thereby confusing Internet users. (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
Furthermore, “Dolce” and “Gabbana” are Italian family names and has no specific meaning in Chinese. According to the WhoIs database, the name of the Respondent has no connection to these names. There is no evidence indicating that the Respondent is commonly known by the Disputed Domain Name or the names “Dolce” and “Gabbana”.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.
The Respondent did not provide any allegation or evidence indicating that it has rights or legitimate interests in the Disputed Domain Name and there is therefore no evidence in the case file to suggest that the Respondent has rights or legitimate interests in the Disputed Domain Name under any conditions of paragraph 4(c) of the Policy.
Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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] web site or location or of a product or service on [the respondent’s] web site or location.”
The Complainant’s trademark has been registered in many countries in the world and was well known in many countries prior to the date the Disputed Domain Name was registered in 2013. The Respondent chose the DOLCE & GABBANA trademark as the only distinctive part of the Disputed Domain Name. According to the screenshots of the web site at the Disputed Domain Name in Annex 11 to the Complaint, the Respondent uses the description of Dolce and Gabbana to sell its shirts, bags and shoes. It is obvious that the Respondent registered the Disputed Domain Name with knowledge of the Complainant’s trademark. The Respondent has not submitted any allegation or evidence suggesting that the Respondent selected “dolce” and “gabbana” string with other generic words for any reason other than the reputation of the Complainant’s trademark. Such intentional registration shows the bad faith of the Respondent. The Panel finds that the Disputed Domain Name has been registered in bad faith.
The Respondent describes its shirts, shoes and bag products with reference to the DOLCE & GABBANA trademark on the web site to which the Disputed Domain Name resolves. There is no indication that accurately and prominently discloses the Respondent’s relationship with the Complainant. The Respondent has intentionally designed the web site at the Disputed Domain Name to create an impression to Internet users that it is affiliated, endorsed or sponsored by the Complainant for selling these products. The Panel finds that the Respondent uses the Disputed Domain Name in bad faith and the fact that the web site under the Disputed Domain Name is currently inactive does not change this fact.
Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy. 8. 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.
Peter J. Dernbach
Sole Panelist
Date: August 8, 2013
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