The Complainant is Skorpio Limited of Lugano, Switzerland, represented by IP Skill, Italy.
The Respondent is YinSi BaoHu Yi KaiQi (hidden by Whois Privacy Protection Service) of Beijing, China / zhou Eaysu of Fuzhou, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with HiChina Zhicheng Technology Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 10, 2014. On September 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 11, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 19, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on the same day. On September 19, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On September 19, 2014, 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 together with the amended 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 September 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 20, 2014.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on October 29, 2014. 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.
Based on the available record, the Disputed Domain Name was set to expire on November 9, 2014. As a result, by email dated September 19, 2014, the Center drew the attention of the Registrar to the provisions of paragraph 3.7.5.7 of the Expired Domain Deletion Policy of the Internet Corporation for Assigned Names and Numbers ("ICANN"), under which either party is entitled to renew a domain name registration which expires during the course of a proceeding under the Policy. In this email, the Center further requested the Registrar to confirm that the Disputed Domain Name shall be placed in registrar lock status and that the Disputed Domain Name shall remain in such status until the UDRP proceedings are concluded.
The Registrar replied by an email dated September 22, 2014. The Registrar confirmed that the Disputed Domain Name shall remain under registrar lock for 30 days after November 9, 2014, but if the Disputed Domain Name has not been renewed during the registrar lock period, it will be deleted automatically.
By another email dated September 22, 2014, the Center advised the Parties in Chinese and English to renew the Disputed Domain Name, which has been locked, to remain registered pending the outcome of the current proceedings. No answer was given to the Center by the Parties. 4. Factual Background
The Complainant is a Swiss company managing the intellectual property rights of a well-known American fashion designer Rick Owens. The Complainant has produced registration information of several trademarks, inter alia: RICK OWENS, International trademark, Registration No. 1026597, registered on December 30, 2009; RICK OWENS, Community trademark, Registration No. 2493294, registered on May 21, 2003.
According to the WhoIs data and the Registrar's verification response, the Respondent is YinSi BaoHu Yi KaiQi (hidden by Whois Privacy Protection Service) / zhou Eaysu. The Disputed Domain Name was registered on November 9, 2013 and its registration expired on November 9, 2014. However, based on the exchange of emails between the Center and the Registrar, the Disputed Domain Name has been put on registrar lock for 30 days after November 9, 2014.
The Registrar confirmed, in its email of September 11, 2014, that the Registration Agreement for the Disputed Domain Name is in Chinese. 5. Parties' Contentions A. Complainant
The Complainant requests the Disputed Domain Name be transferred to the Complainant based on the following grounds:
(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 reproduces the word "Owens" contained in the Complainant's well-known trademark as well as the generic English word "sneakers" referring to the kind of goods which are made available to the public by the Respondent at the website to which the Disputed Domain Name directs. The Disputed Domain Name is confusingly similar to the Complainant's trademark, which gives consumers the impression of official affiliation to the Complainant's business.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Respondent has never acquired any trademark or service mark rights to the Disputed Domain Name, nor was it ever commonly known by it. The Complainant has never authorized the Respondent to use the RICK OWENS trademark in any way.
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
At the time when the Respondent registered the Disputed Domain Name, the Complainant's trademarks were already registered, well-known and internationally established, and therefore the Respondent could not be unaware of the existence of the Complainant's earlier rights. The Respondent registered the Disputed Domain Name in bad faith.
The Disputed Domain Name is used by the Respondent to sell goods which do not originate from the Complainant under a prominent display of the Complainant's RICK OWENS trademark. The items displayed in the website linked to the Disputed Domain Name are counterfeits of the Complainant's original goods. The general setup in the Respondent's homepage linked to the Disputed Domain Name misleads consumers into assuming that there is an official connection of the Complaint's business. The Disputed Domain Name is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Language of the 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".
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 applicance 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 registration agreement is in Chinese. Therefore, the language of the administrative proceeding should generally be Chinese according to paragraph 11(a) of the Rules. However, the Complainant requests the language of the proceeding should be English. For the following reasons, the Panel decides that the language of the proceeding shall be English.
1. The website to which the Disputed Domain Name resolves contains a great deal of content in English, which indicates that the Respondent has an ability to understand English;
2. The Panel finds that the Complainant is not in a position to conduct these proceedings in Chinese without additional expense and delay due to the need for translation of the Complaint and supporting evidence into Chinese.
3. The Center has notified the Parties of the potential language issue in both Chinese and English on September 19, 2014. The Respondent did not make any comment on or object to the language requested by the Complainant before the specified deadline of September 24, 2014 indicated in the Center's notification. 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[.]"
The Complaint has established that it is the owner of the RICK OWENS trademark. The Complaint registered the RICK OWENS trademark in class 25, footwear.
The Disputed Domain Name, , incorporates part of the RICK OWENS trademark with a generic word "sneakers" and the generic Top-Level Domain ("gTLD") ".com". The word "sneakers" is a generic term and the ".com" is a commonly used gTLD, neither of which can distinguish the Disputed Domain Name from the Complainant's RICK OWENS trademark. The only distinctive part of the Disputed Domain Name is "Owens", which is part of the Complainant's trademark.
The Disputed Domain Name does not contain the entire RICK OWENS trademark. However, "owens", the salient feature of the Disputed Domain Name, is reproduced from the Complaint's RICK OWENS trademark. The Panel finds the Disputed Domain Name is confusingly similar to the RICK OWENS trademark owned by the Complainant as the Disputed Domain Name contains the "Owens" element as its sole distinctive portion (see Louis Vuitton Malletier v. Somsak Sooksripanich,WIPO Case No. D2000-0866; Design Sportswears v. Shan Hu/Hu Shan, stephanie petit/petit stephani,WIPO Case No. D2012-2541). The addition of the generic term, "sneakers" is not a distinguishing feature, and in this case appears to increase the likelihood of confusion because it is a term that is commonly used to refer to products on which the Complaint uses its RICK OWENS trademark (see Chanel, Inc. v. Cologne Zone,WIPO Case No. D2000-1809; Burberry Limited v. Misson Tom aka Tom Misson aka Mission Tom,WIPO Case No. D2010-0440).
The Panel finds that disputed domain name is confusingly similar to the trademark in which the Complainant has rights so as to meet the first element's requirement of identical or confusingly similar, and the Panel proceeds to review the second and third elements under the Policy. 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 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 it is the owner of the RICK OWENS trademark and confirmed that it has no connection or affiliation with the Respondent. The Complaint also states that no authorization was granted to the Respondent to use the trademark.
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 thus 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 submit any evidence or allegation to show that it has rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy in respect of the Disputed Domain Name. The Respondent did not allege nor provide evidence to establish that it is a legally authorized reseller of the Complainant. Even if the Respondent were to allege that it was a legitimate reseller of the Complainant's products, the website to which the Disputed Domain Name resolves does not accurately and prominently disclose the Respondent's relationship with the Complainant. Therefore, the Respondent cannot claim that this provides the Respondent with rights or legitimate interests in the Disputed Domain Name.
According to the record in the WhoIs database, there is no evidence showing that the Disputed Domain Name has any connection with the Respondent's name or the Respondent is commonly known by the Disputed Domain Name. The Disputed Domain Name is used to sell the Complainant's (allegedly counterfeit) products, which is a commercial use.
Based on the above, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been fulfilled. 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 RICK OWENS trademark has been registered in many countries in the world. The Respondent chose "Owens" from RICK OWENS trademark as the only distinctive part of the Disputed Domain Name. No allegation or evidence suggesting that the Respondent selected "Owens" from the RICK OWENS trademark as used in the Disputed Domain Name for any reason other than the reputation of the Complainant's trademark. The screenshot of the website under the Disputed Domain Name shows that the Respondent evidently knows of the Complainant's trademark. The Panel finds that the evidence shows that the Disputed Domain Name was registered in bad faith.
The Respondent uses the RICK OWENS trademarks on the website under the Disputed Domain Name. The screenshots of the website indicate that the website sells footwear under the Rick Owens trademark. On the top left-hand side of the home page of the website to which the Disputed Domain Name resolves, the Respondent uses the RICK OWENS trademark. At the very bottom of the website to which the Disputed Domain Name resolves, the Respondent has posted a statement: "Copyright © 2014 Rick Owens Shoes. Powered by Rick Owens Sneakers." The Respondent's use of the Complainant's RICK OWENS trademark on the website and the incorporation of this reference to the copyright ownership etc., are likely to cause Internet users to believe that the Disputed Domain Name is an official website of the Complainant or otherwise sponsored or endorsed by the Complainant. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion. The Disputed Domain Name was used in bad faith. As the Disputed Domain Name has been registered and is being used in bad faith, the condition of paragraph 4(a)(iii) of the Policy has been fulfilled. 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: November 10, 2014
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