Complainants are Gabrielle Studio, Inc. and The Donna Karan Company LLC ("Complainant") of New York, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
Respondent is Liu Yang of Zhengzhou, Henan Province, China. 2. The Domain Name and Registrar
The disputed domain name is registered with 35 Technology Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 2, 2014. On October 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 3, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On October 8, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, Complainant requested that English be the language of the proceeding. 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 Respondent of the Complaint in both Chinese and English, and the proceeding commenced on October 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 4, 2014.
The Center appointed Yijun Tian as the sole panelist in this matter on November 14, 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. 4. Factual Background A. Complainant
Complainants, Gabrielle Studio, Inc. and The Donna Karan Company LLC are companies incorporated in New York, New York, United States of America (the United States). Gabrielle Studio, Inc. is the owner of the DKNY family of trademarks in the United States and around the world. The Donna Karan Company LLC is the operating company and licensee authorized by Gabrielle Studio, Inc. to utilize the DKNY trademarks on clothing, accessories and other products and to use the DKNY trademark online and with domain names. There are now over two hundred company-owned and licensed free standing DKNY and DKNY Jeans stores worldwide, including over fifty stores in China.
Complainant has exclusive rights in the DKNY marks. Complainant is the exclusive owner of famous and well-known registered trademarks globally, including the DKNY mark registration in China since 1990. Complainant now owns 51 trademark registrations for such marks in China, and seven applications have been filed. Complainant also owns dozens of domain names incorporating its DKNY trademarks, including its main domain name for the brand . B. Respondent
Respondent is Liu Yang of Zhengzhou, Henan Province, China. The disputed domain name was registered on March 19, 2014, long after the DKNY marks became internationally famous. 5. Parties' Contentions A. Complainant
The disputed domain name is identical or confusingly similar to the DKNY marks.
The disputed domain name incorporates, in its entirety, Complainant's registered DKNY trademark.
Respondent's decision to add the generic term "shop" does nothing to distinguish the disputed domain name from Complainant's marks. In fact, this term only exacerbates confusion as Complainant's own website allows customers to shop for its products.
That the disputed domain name is intended to relate to Complainant is further evidenced by the fact that the website at the disputed domain name clearly displays Complainant's DKNY trademarks, the moniker Donna Karan New York, and pictures of what are, on information and belief, counterfeit versions of DKNY products.
Just as in past cases where UDRP panels held that the addition of the words "jeans" or "party" to the DKNY marks did not alleviate any confusion, similarly, the addition of the generic word "shop" does not accomplish this goal.
Respondent has no rights or legitimate interests in the disputed domain name.
Since Complainant's adoption and extensive use of the DKNY marks predates the registration of the disputed domain name, the burden is on Respondent to establish its rights or legitimate interests in the disputed domain name.
There is no evidence that Respondent has rights or legitimate interests in the disputed domain name. Registration of the disputed domain name occurred after Complainant had made extensive use of the DKNY marks and after Complainant had obtained registrations for DKNY worldwide, including in China, where Complainant first registered its mark many years before Respondent registered the disputed domain name.
Respondent was on actual, or at a minimum, constructive notice of Complainant's rights before it adopted Complainant's trademark as the disputed domain name.
The fact that Respondent is using the disputed domain name to sell, on information and belief, counterfeit DKNY branded products establishes that Respondent is fully aware of Complainant and the exclusive association between the DKNY marks and Complainant.
There exists no relationship between Complainant and Respondent that would give rise to any license, permission or authorization by which Respondent could own or use the disputed domain name, which incorporates in whole Complainant's registered DKNY marks and which refers specifically to Complainant's line of fashions and accessories.
Complainant has never authorized Respondent to use the DKNY marks, or any mark confusingly similar thereto, for any purpose, including as a domain name.
There is no evidence to suggest that Respondent has been or is commonly known by the disputed domain name. It is using the website at the disputed domain name exclusively to identify the goods – presumably counterfeit DKNY clothing and accessories – that Respondent is selling and to associate itself with Complainant.
Respondent's admission that "the website is a test one, and we haven't started stocking yet" proves that it has failed to make a legitimate use of the disputed domain name. Respondents' use of the DKNY marks in connection with what are presumably counterfeit products cannot constitute a bona fide use of the mark under paragraph 4(c)(i) of the Policy.
Neither the disputed domain name nor the associated website discloses the lack of any relationship between Complainant and Respondent. To the contrary, Respondent's website is clearly designed to create the false impression that the items sold at the site are genuine DKNY products being offered at sale prices: "Welcome to our DKNY Bags UK Shop! 70%OFF! Fast and Free Delivery! Order Now!" and "Copyright © 2011-2012 Dkny Sale."
These statements, combined with the repeated use of Complainant's mark throughout the website and the display of presumably counterfeit products labeled with Complainant's mark create a false impression of an affiliation with or endorsement by Complainant. Such a false impression, trading as it does on the fame of the DKNY marks, cannot support a finding of legitimate use.
Respondent's use of the disputed domain name suggests that Complainant is or may be authorizing or sponsoring a website associated with the disputed domain name when that is not accurate.
Respondent is aware of the fame of the DKNY marks used in the disputed domain name and displayed on the website. The disputed domain name itself is obviously intended to refer to Complainant's very business.
This shows that Respondent, who has no relationship with Complainant, is seeking to benefit from the fame of Complainant's products by using Complainant's mark to attract Internet users who are interested in DKNY branded product to Respondent's website.
Respondent registered and used the disputed domain name in bad faith.
The disputed domain name incorporates Complainant's registered DKNY marks and is confusingly similar to Complainant's DKNY trademark. Given the fame of Complainant's DKNY trademark, consumers are likely to believe that the disputed domain name is related to or associated with Complainant.
The only reason for Respondent's use of Complainant's marks is to intentionally confuse consumers, to trade on Complainant's rights and reputation, and to drive traffic to its website all for its own commercial benefit.
Because the ultimate effect of any use of the disputed domain name will be to cause confusion with DKNY, the use and registration of the disputed domain name must be considered to be in bad faith.
Respondent's activity is in direct violation of paragraph 4(b)(iv) of the Policy, which prohibits use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the site.
There can be no dispute that DKNY is an immediately recognizable and famous mark that exclusively identifies Complainant. Respondent's adoption and use of DKNY shows both Respondent's familiarity with the mark and Respondent's recognition of the fame of the mark.
Given that Respondent has no connection with Complainant and has never been authorized by Complainant to use or register the disputed domain name, the very fact that Respondent has registered the disputed domain name establishes opportunistic bad faith use and registration.
Respondent is clearly acting in bad faith, using a disputed domain name incorporating Complainant's trademark to sell unauthorized or non-genuine products and to falsely suggest a connection with Complainant.
In this case Respondent has gone to lengths to fuel consumer confusion making prominent use of Complainant's marks and product images. The only reason for Respondent's use of Complainant's marks is to intentionally confuse consumers and to trade on Complainant's rights and reputation. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) The disputed domain name is in the English language ("Shop" is an English word).
(b) The content of the website resolved by the disputed domain name is entirely in English and the items are priced in US Dollars and British Pounds.
(c) Respondent has entered into a contract with an American hosting and content provider, Nobis Technology Group, LLC, concerning the content of the website.
(d) All communications with Complainant's undercover investigator were in English.
(e) Together, these circumstances present strong evidence that Respondent is adept in the English language and warrant that the proceeding be conducted in English.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) allows 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; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593). 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", paragraph 4.3) 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 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 also L'Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company from the United States, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the disputed domain name includes Latin characters "dkny" and English word "shop" (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047) and the website at the dispute domain names is entirely in English.
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name is registered in Latin characters and particularly in English language, rather than Chinese script; (b) the website at the disputed domain name is an English-based website and Respondent is apparently doing business in English through this website; (c) the website appears to have been directed to users worldwide (particularly English speakers) rather than Chinese speakers; (d) the Center has notified Respondent of the proceeding in both Chinese and English, and Respondent has indicated no objection to Complainant's request that English be the language of the proceeding; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, 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. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the DKNY marks acquired through registration. The DKNY marks have been registered worldwide including in China, and Complainant has a widespread reputation as a world leading producer of clothing and accessories. According to the information provided by Complainant, the DKNY line of clothing and accessories has been very successful. There are now over two hundred company-owned and licensed free standing DKNY and DKNY Jeans stores worldwide, including over fifty stores in China where Respondent appears to be located.
The disputed domain name comprises the DKNY mark in its entirety. The disputed domain name only differs from Complainant's trademark by the addition of the word "shop" to the mark DKNY. This does not seem to eliminate the identity or at least the similarity between Complainant's registered trademarks and the disputed domain name.
Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy "when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
Generally a respondent "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it". (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087).
The mere addition of the descriptive term "shop" as prefix to Complainant's mark fails to distinguish to this Panel the disputed domain name from Complainant's trademark. By contrast, it may increase the likelihood of confusion. "Shop" is a store that sells the goods of a particular manufacturer or wholesaler. Internet users who visit are likely to be confused and may falsely believe that is an online shop operated by Complainant for selling DKNY-branded products, particularly shoes. Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the DKNY marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, 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) Respondent (as an individual, business, or other organization) have been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) 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 overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant's contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG , DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
As mentioned above, Complainant has rights in the DKNY marks globally, including registration in China since 1990 which long precedes Respondent's registration of the disputed domain name (March 19, 2014). According to Complainant, Complainant is one of the world's leading producers of clothing, accessories and other products and to use the DKNY trademark online and with domain names. The DKNY line of clothing and accessories has been very successful. There are now over two hundred company-owned and licensed free standing DKNY and DKNY Jeans stores worldwide, including over fifty stores in China. In 2013, the most recent year for which such numbers are available, Complainant sold hundreds of millions worth of merchandise worldwide at the wholesale level.
Moreover, Respondent is not an authorized dealer of DKNY branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word "dkny" in its business operation or the use of the DKNY marks and design on its website (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the DKNY marks or to apply for or use any domain name incorporating the DKNY marks.
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name on March 19, 2014. The disputed domain name is confusingly similar to Complainant's DKNY marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported DKNY products at the website at the disputed domain name.
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites or location or of a product or service on Respondent's website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith. a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the DKNY marks with regard to its products. Complainant has registered its DKNY marks internationally, including registration in China (since 1990). Moreover, the website to which the disputed domain name resolves advertises for sale various purported DKNY products. Respondent would likely not have advertised products purporting to be DKNY products on the website to which the disputed domain name resolves if it was unaware of Complainant's reputation. In the other words, it is not conceivable to the Panel that Respondent would not have had actual notice of Complainant's trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the DKNY mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondent has chosen not to formally respond to Complainant's allegations. According to the panel's decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, "the failure of the Respondent to respond to the Complaint further supports an inference of bad faith". (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant's DKNY branded products. b) Used in Bad Faith
Complainant claimed that Respondent's activity is in direct violation of paragraph 4(b)(iv) of the Policy, which prohibits use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the site. Indeed, Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has "intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites" offering purportedly Complainant's DKNY branded products and services without authorization.
To establish an "intention for commercial gain" for the purpose of this Policy, evidence is required to indicate that it is "more likely than not" that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Swarovski Aktiengesellschaft v. Yuenan, WIPO Case No. D2012-1477).
Given the widespread reputation of the DKNY marks (as well as the content on the website to which the disputed domain name resolves mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. In other words, Respondent has through the use of a confusingly similar domain name and webpage contents created a likelihood of confusion with the DKNY marks. Noting also that apparently no clarification as to Respondent's relationship to Complainant is made on the webpage at the disputed domain name, potential Internet users are led to believe that the website at the disputed domain name is either Complainant's site or the site of official authorized agent of Complainant, which it is not. The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant's trademark, intended to ride on the goodwill of Complainant's trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 7. Decision
For all 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, The Donna Karan Company LLC.
Yijun Tian
Sole Panelist
Dated: December 19, 2014
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