The Complainant is Stuart Weitzman IP, LLC of New York, New York, United States of America, represented by The Gioconda Law Group PLLC, United States of America.
The Respondent is Zhong Ping of Nanning, Guangxi, China; Udomain Privacy Service Co.ltd of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Shanghai Yovole Networks, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2014. On October 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 2014 and November 3, 2014, the Registrar transmitted by email to the Center its verification responses 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 November 3, 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 November 4, 2014.
On November 3, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On November 4, 2014, the Complainant requested 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 in both Chinese and English, and the proceeding commenced on November 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2014.
The Center appointed Douglas Clark as the sole panelist in this matter on December 9, 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
The Complainant is the registered proprietor of the trademark STUART WEITZMAN registered and used for different kinds of goods and services in the United States of America inter alia women’s footwear and handbags.
The disputed domain name was registered on August 17, 2014. The website to which the disputed domain name resolves is written entirely in English and features prominently the trademark STUART WEITZMAN and sells apparently counterfeit Stuart Weitzman products. 5. Parties’ Contentions A. Complainant
Identical or confusingly similar
The Complainant argues that the disputed domain name is made up of the registered trademark STUART WEITZMAN to which the generic or descriptive term “sale” has been added. It is therefore confusingly similar to the Complainant’s registered trademark STUART WEITZMAN.
No rights or legitimate interests
The Complainant submits that the Respondent has not been known by the disputed domain name and the Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for STUART WEITZMAN.
Further the Complainant submits that the website sells products that are most likely counterfeit but which also bear STUART WEITZMAN trademark.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in the STUART WEITZMAN trademark. The unauthorized sale of products by the Respondent on the website at the disputed domain name that gives the impression of being a genuine website is clearly use in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
This is a very simple case of clear domain name hijacking for the purposes of commercial gain which the UDRP was designed to stop. A. Language of the Proceeding
The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:
“Unless 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 Complainant requested the language of the proceeding be English on the grounds that the website under the disputed domain name is written entirely in English; emails sent by the Respondent were in English and that the Respondent had provided an address in the United States of America as its contact address on the website at the disputed domain name.
The Panel determines that English shall be the language of the proceeding. The website under the disputed domain name was written entirely in English and designed to do business worldwide in English. There can be no doubt that the Respondent is able to handle this proceeding in English. B. Identical or Confusingly Similar
The disputed domain name is made up of the registered trademark STUART WEITZMAN and descriptive term, “sale”. The disputed domain name is clearly confusingly similar to the registered trademark STUART WEITZMAN. The first part of the paragraph 4(a) of the Policy is therefore satisfied. C. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests in the disputed domain name.
The use made by the Respondent of the website under the disputed domain name where the Complainant’s trademark features prominently and apparently counterfeit products are sold make it hard to imagine that the Respondent could ever establish any rights or legitimate interests in the disputed domain name.
Clearly, none of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests in a domain name, are present in this case. D. Registered and Used in Bad Faith
For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain name was registered in bad faith and are being used in bad faith.
This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.” 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.
Douglas Clark
Sole Panelist
Dated: December 28, 2014
Full & Egal Universal Law Academy