The Complainant is Skorpio Limited of Lugano, Switzerland, represented by IP Skill, Italy.
The Respondent is Li Wenshi of Shanghai, China; Chrome Hearts LLC of Hollywood, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name was registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2014. On November 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 2014, 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 November 19, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On November 20, 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 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 November 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2014.
The Center appointed Jonathan Agmon as the sole panelist in this matter on December 30, 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.
On January 28, 2015, the Center was informed by the Registrar that the disputed domain name was transferred to G LLC (“Godaddy”) due to a court order in the United States District Court for the Northern District of Illinois Easter Division and that the registrant of the disputed domain name now is Chrome Hearts LLC of Hollywood, California, United States of America. The website to which the disputed domain name resolved points to a page referencing to the court order.
On February 3, 2015, Godaddy confirmed to the Center that the disputed domain name was locked and would remain so during the pending administrative proceeding. Under paragraph 18 of the Rules, in the event of any legal proceedings initiated during an administrative proceeding in respect of the disputed domain name, the Panel shall have the discretion to decide whether to proceed to a decision. In this case, the Panel decides to proceed to a decision. 4. Factual Background
The Complainant, Skorpio Limited, is a Swiss company managing the Intellectual Property rights of American fashion designer Rick Owens, who is also a partner in the Complainant. The Complainant, under the RICK OWENS mark markets various fashion goods including apparel, accessories and footwear, which are sold worldwide.
Fashion designer Rick Owens has been active in the fashion industry since 1994 and currently Rick Owens stores are available in various locations worldwide.
The Complainant is the owner of trademark registrations for the mark RICK OWENS around the world. For example: United States trademark registration no. 2857230 RICK OWENS (signature), filed on January 30, 2002 and registered on June 29, 2004, European Community trademark registration no. 8209736 RICK OWENS, filed on April 9, 2009 and registered on November 2, 2009, and International trademark registration no. 1007374 RICK OWENS, registered on April 9, 2009.
The disputed domain name was registered on March 16, 2014.
Until recently, the disputed domain name led Internet users to a website that offered for sale, prima facie counterfeit goods bearing the Complainant’s RICK OWENS mark.
Currently, the disputed domain name resolves to an inactive website. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.
The Complainant further argues that the disputed domain name resolves to a website, which offers for sale identical products to the products of the Complainant.
The Complainant further contends that the website under the disputed domain name displays the Complainant’s trademarks.
The Complainant further argues that the Respondent is not known by the disputed domain name and has no rights in the mark RICK OWENS.
The Complainant further argues that it had never granted, assigned, licensed, sold or transferred the Respondent any rights in the RICK OWENS trademark in any manner.
The Complainant further argues that the Respondent registered and is using the disputed domain name in bad faith. The Complainant further contends that the Respondent uses the disputed domain name for commercial purposes, by creating a false impression that the disputed domain name is associated with the Complainant.
The Complainant further argues that the Respondent’s sale of prima facie counterfeit Rick Owens branded products, under the Complainant’s trademark, amounts to bad faith.
The Complainant further argues that the Respondent was aware of the Complainant’s existence and of the RICK OWENS trademark and products at the time he registered the disputed domain name.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issue – Language of the Proceedings
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 language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of proceedings be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not 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).
In deciding the language of the proceeding, the Panel takes the following into consideration:
a) The disputed domain name consists of English characters, rather than Chinese characters;
b) The disputed domain name includes the English word “shoes”;
c) According to the evidence provided by the Complainant, the disputed domain name used to resolve to a website operating and displaying content in English;
d) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding be English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of trademark registrations for the mark RICK OWENS around the world. For example: United States trademark registration no. 2857230 RICK OWENS (signature), filed on January 30, 2002 and registered on June 29, 2004, European Community trademark registration no. 8209736 RICK OWENS, filed on April 9, 2009 and registered on November 2, 2009, and International trademark registration no. 1007374 RICK OWENS, registered on April 9, 2009.
The disputed domain name differs from the registered RICK OWENS trademark by additional descriptive word “shoes” which is related to the Complainant’s field of business and the goods sold under the RICK OWENS trademark.
The disputed domain name integrates the Complainant’s trademark RICK OWENS in its entirety, as a dominant element, with additional word “shoes” which does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark.
Previous WIPO panels have ruled that the mere addition of a non-significant element does not sufficiently differ the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
“The mere addition of a descriptive term to an identical trademark, has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
Also, the addition of a generic Top-Level Domain (“gTLD”) “.net” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.net” is without legal significance since use of a gTLD is technically required to operate the domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that he has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the RICK OWENS trademark, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.
The Respondent has not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the RICK OWENS trademark since the year 2004. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The Complainant also provided evidence to demonstrate its trademark’s vast goodwill. The Panel cites the following with approval: “The Respondent’s selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence… Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent’s registration and use of the disputed domain name other than that of bad faith” (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the domain name resolved, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved.
The disputed domain name used to lead Internet users to a website that engaged in the marketing of prima facie counterfeit RICK OWENS goods. The Respondent’s use of the trademark RICK OWENS to promote similar or identical goods to the goods being offered by the Complainant is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making in its RICK OWENS trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith".
Furthermore, the disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the use of the Complainant’s trademark in the disputed domain name and the similarity between the disputed domain name and the Complainant’s mark, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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.
Jonathan Agmon
Sole Panelist
Date: January 13, 2015
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