The Complainant is Skorpio Limited of Lugano, Switzerland, represented by IP Skill, Italy.
The Respondent is Gary Newton of Cincinnati, United States of America (“US”). 2. The Domain Name and Registrar
The disputed domain name (the “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 July 4, 2013. On July 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 6, 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.
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 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1, 2013.
The Center appointed Dawn Osborne as the sole panelist in this matter on August 12, 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
The Complainant manages the intellectual property rights of the well-known American fashion designer Rick Owens who began activity as a fashion designer in 1994 in Los Angeles, and, moving his production to Italy, started worldwide distribution in 2001.
The Complainant is the owner of Community, International and US trade marks for RICK OWENS, the first in time filed December 7, 2001 and registered May 21, 2003.
The Respondent registered the Domain Name on April 21, 2013. It is using the site to offer counterfeit goods similar to the Complainant’s goods, but not originating from the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant's contentions can be summarized as follows:
The Complainant manages the intellectual property rights of the well-known American fashion designer Rick Owens who began activity as a fashion designer in 1994 in Los Angeles, and, moving his production to Italy, started worldwide distribution in 2001.
The Complainant is the owner of Community, International and US trade marks for RICK OWENS, the first in time filed December 7, 2001 and registered May 21, 2003.
The Domain Name is formed by the Complainant’s well known RICK OWENS mark and the generic indication mall referring to online retail business. The Domain Name is therefore confusingly similar to the Complainant’s registered trade mark.
The Respondent is using the Domain Name to offer for sale goods which are counterfeits of the original products of the Complainant, which cannot be bona fide use of the Domain Name. The Complainant has verified this by a test purchase. The Respondent has never acquired any trade mark rights in the Domain Name, nor has it ever been commonly known by it. The Respondent has no rights or legitimate interests in the Domain Name.
The Complainant has received a complaint letter from a purchaser who assumed the products were genuine and was not happy that the Respondent was passing off goods not of the Complainant’s manufacture as and for the same. The web site is misleading customers into thinking that there is an official connection of some kind between the Respondent and the Complainant when there is not. The Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. A. Identical or confusing similarity
The Complainant has Community, International and US trade mark registrations for RICK OWENS going back first in time to 2003. The Domain Name is confusingly similar to the Complainant’s trade mark consisting of the Complainant’s RICK OWENS registered trade mark and the generic text “mall”, indicating retail services. The distinctive part of the Domain Name is the “RICK OWENS” name. The addition of the non-distinctive text “mall”, as such, does nothing to prevent the confusing similarity of the Domain Name with the Complainant’s RICK OWENS trade mark. Accordingly, the Panel holds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy. B. Rights or Legitimate Interest of the Respondent
The Respondent has not filed a Response. It has no consent from the Complainant, has not used the Domain Name for a bona fide offering of goods or services given the confusing use and use to sell counterfeit goods, as discussed below, and is not commonly known by the Domain Name. Nor is it making noncommercial fair use of it. In the circumstances of this case, and in view of the Panel’s discussion below, the Panel finds that the second element of the Policy has been established. C. Registered and Used in Bad Faith
Paragraph 4 (b) of the Rules sets out four nonexclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
The Respondent has not provided any explanation why it would be entitled to register a domain name equivalent to the Complainant’s trade mark with only a generic indication added. Further, in the opinion of the Panel the use made of the Domain Name is deceptive. It is not at all clear whether the site to which it points is or is not connected with the Complainant. As such the Panel finds that the Domain Name has been used in a way likely to confuse people into believing the Domain Name was registered to or connected to the Complainant. The use of the trade marks on the site and the sale of counterfeit goods similar to the Complainant’s goods, but not originating from the Complainant shows that the Respondent is well aware of the Complainant, its trade marks and goods. In the absence of a Response from the Respondent, considering the fame of the Complainant and the material attached to the Domain Names the Panel is satisfied that the Complainant has shown that the Respondent registered the Domain Name in bad faith and has used the Domain Name to attract Internet traffic to its site for commercial gain by creating a likelihood of confusion that its website and goods sold on its site are connected to the Complainant. As such the Panel finds that the Domain Name has been registered and used in bad faith satisfying the third limb 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.
Dawn Osborne
Sole Panelist
Date: August 19, 2013
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