The Complainant is Sportswear Company S.P.A. of Ravarino, Italy, represented by Crowell & Moring, LLP, Belgium.
The Respondent is zhiming lin of Quanzhou, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2014. On December 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 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 December 19, 2014, the Center transmitted an email to the parties in Chinese and English regarding the language of the proceeding. On December 22, 2014, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit any comments within 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 in Chinese and English, and the proceeding commenced on January 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2015.
The Center appointed Karen Fong as the sole panelist in this matter on February 12, 2015. 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 an Italian clothing manufacturer. One of its designer brands is “Stone Island”. The “Stone Island” name is registered as a trade mark all over the world in conjunction with a star device as well as within a flag device. These registrations include United States of America trade mark registration numbers 2706733 and 1370214 and International trade mark registration number 899955. The earliest trade mark registration dates back to 1984. The STONE ISLAND trade mark (the “Trade Mark”) is known all over the world and is frequently written about in news articles and fashion blogs. The Complainant actively promotes the Trade Mark through its website linked to the domain name . The clothing sold under the Trade Mark includes jackets and one of the collections under the Trade Mark is called “The Shadow Project”.
The Domain Name was registered on March 20, 2014. The Domain Name is connected with a website (the “Website”) that sells what appears to be counterfeit “Stone Island clothing” as they are being sold at prices much lower than those of the genuine goods. The Website also contains the Trade Mark together with the star device identical to that of the Complainant. The Complainant’s legal representatives sent a cease and desist letter to the Respondent on December 4, 2014 but did not receive a response. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and being used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith. B. Language of the Proceeding
The Rules, paragraph 11(a), provide that, unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits in section IV. of the Complaint and in an email to the Center on December 22, 2014 that the language of the proceeding should be English. The Complainant contends that the Respondent has sufficient understanding of the English language demonstrated by the fact that the Website is in English and the Domain Name is in English. The use of English as the language of the proceeding would not be prejudicial to the Respondent whereas it would be disadvantageous for the Complainant to have to translate the Complaint into Chinese.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. It would appear that the Respondent understands English. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Having considered all the circumstances of this case, the Panel is satisfied that the Respondent is familiar with the English language and determines in accordance with paragraph 11(a) of the Rules that English is the language of the proceeding. C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Name includes as its most prominent element the Trade Mark. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain suffix. Further, the addition of the words “shadow” and “jacket” which are descriptive terms referring to a type of product sold under the Trade Mark and a fashion collection of the Complainant do not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Mark in the Domain Name.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. D. Rights or Legitimate Interests
The Complainant alleges that the Respondent is not commonly known by the Domain Name. The Respondent is not a licensee, authorized agent or in any other way authorized to use the Trade Mark in the Domain Name or any other manner. This is contrary to the claim on the Website that the goods sold on the Website are produced by the Complainant’s factory store in China and they are leftover stock for export. The Complainant has no factory store in China. The products offered for sale on the Website are being sold at substantially lower prices than genuine products bearing the Trade Mark. The above is sufficient evidence to show that the goods offered for sale and sold by the Respondent are counterfeit. There can be no legitimate interest in the sale of counterfeits. The Complainant has satisfied its burden of proof of showing that the Respondent lacks rights or legitimate interests in the Domain Name. (see Wellquest International, Inc. v. Nicholas Clark,WIPO Case No. D2005-0552 and Farouk Systems, Inc. v. QYM,WIPO Case No. D2009-1572).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. E. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Trade Mark when it registered the Domain Name. The Complainant has provided sufficient evidence that the registration of the Domain Name post dates the registration and use of the Trade Mark.
Thus, the Panel concludes that the Respondent registered the Domain Name in bad faith.
The Panel also concludes that the actual use of the Domain Name is in bad faith. The products offered for sale on the Website are counterfeit “Stone Island” products for reasons set out in paragraph 6.D. The use by a respondent of a domain name which includes a well-known trade mark to resolve to a website which offers and sells counterfeit products under that trade mark is evidence of bad faith registration and use. (See Burberry Limited v. Jonathan Schefren, WIPO Case No. D2008-1546 and Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019).
From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s Website is and the products sold on it are those of or authorised or endorsed by the Complainant. The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Name are in bad faith. 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 Domain Name be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: February 27, 2015
Full & Egal Universal Law Academy