The Complainant is Stefano Ricci S.p.A. of Firenze, Italy, represented by Convey Srl, Italy.
The Respondents are Honghai Zhou of Laixi, Shandong, China; Zhou Hong Hai of Laixi, Shandong, China; and Li Fanglin of Hangzhou, Zhejiang, China. 2. The Domain Names and Registrars
The disputed domain names , and are registered with B, Inc., PDR Ltd. d/b/a PublicDomainR and Crazy Domains FZ-LLC, respectively. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2015. On January 21, 2015, the Center transmitted by email to the concerned registrars a request for registrar verification in connection with the disputed domain names. On January 22, 2015 and February 3, 2015, the concerned registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants and providing the contact details.
On February 3, 2015, the Center transmitted an email in both English and Chinese regarding the language of the proceeding to the parties. On February 3, 2015, the Complainant submitted its request that English be the language of the proceeding. The Respondents did not submit their 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, and the proceeding commenced on February 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2015. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 2, 2015.
The Center appointed Jonathan Agmon as the sole panelist in this matter on March 9, 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 Stefano Ricci S.p.A. of Firenze, Italy, an international luxury fashion and lifestyle company that engaged its business in 1972. The Stefano Ricci brand consist of a wide range of menswear, suits, dress shirts, jeans, polo shirts, shoes, casual wear and neckties, exclusive cufflinks, leather goods and more.
The Complainant is the owner of numerous trademark registrations for the mark STEFANO RICCI around the world. For example: STEFANO RICCI, International Trademark No. 407525 dated May 27, 1974; International Trademark No. 767523, registered date September, 17, 2001; International Trademark No. 1192240, registered date August, 5, 2013 and more.
Through extensive and prolonged use and advertising around the world, the STEFANO RICCI trademark has generated vast good will.
The Complainant also developed a formidable presence on the Internet and is the owner of multiple domain names, which contain the mark STEFANO RICCI, for example: , , and many more.
The disputed domain name was registered on July 5, 2014.
The disputed domain name was registered on November 12, 2014.
The disputed domain name was registered on January 12, 2015.
The disputed domain names currently resolve to Chinese ecommerce webpages, offering for sale branded clothes and accessories, including items purportedly manufactured by the Complainant, as well as its competitors.
The Complainant sent the Respondents cease and desist letters, to which no response was received. 5. Parties’ Contentions A. Complainant
The Complainant argues that all the Respondents operate practically exact replicas of the same website: the entire content, images, offer, banners and menus are identical. The Complainant argues that the layouts and graphical template are also identical.
The Complainant further argues that the disputed domain names are confusingly similar to the Complainant’s distinctive and famous STEFANO RICCI mark.
The Complainant further argues that the disputed domain names incorporate entirely, the registered and famous trademark STEFANO RICCI, and merely add numbers and time identifiers and a geographical acronym.
The Complainant further argues that it has priority rights in the STEFANO RICCI mark since it has been using it before the Respondents registered the disputed domain names.
The Complainant further argues that it is the only owner of STEFANO RICCI trademarks. The Complainant further contends that the Respondent has no connection with the STEFANO RICCI brand.
The Complainant further argues that the Respondents are using the disputed domain names in order to sell numerous counterfeit products bearing the Complainant’s trademarks.
The Complainant further argues that the Respondents have neither rights nor legitimate interests in respect of the disputed domain names. The Complainant further contends that the Respondents have no rights or legitimate interests arising from a bona fide offering of goods or services or from legitimate noncommercial or fair use of the disputed domain names. The Complainant further contends that the Respondents are not commonly known by the disputed domain names, and do not hold trademark or service mark rights in the STEFANO RICCI mark.
The Complainant further argues that the Respondents have registered and are using the disputed domain names in bad faith.
The Complainant further argues that the Respondents registered the disputed domain names well after the Complainant registered its domain name.
The Complainant sent the Respondents cease and desist letters on November 3, 2014, requesting them to stop all illegitimate sales of products with the STEFANO RICCI mark and any similar trademarks. The Complainant further contends that the Respondents did not disable the disputed domain names and the illegitimate business in association with the STEFANO RICCI mark is still operating.
The Complainant further argues that it conducted a WhoIs search and found the one of the Respondents, “Zhou Honghai”, has registered tens of other domain names using the same technique, which are identical or confusingly similar to established trademark rights of third parties. The Complainant argues that this behavior demonstrates the Respondents’ bad faith in registering the disputed domain names.
For all of the above reasons, the Complainant requests the transfer of the disputed domain names. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
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 language of the Registration Agreements for the two other disputed domain names is English.
The Complainant requested that the language of proceeding should 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).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceeding:
a) The disputed domain names consist of Latin letters, rather than Chinese letters;
b) The disputed domain names consist of English words;
c) The Respondents did not object to the Complainant’s request that English be the language of proceeding;
d) The Registration Agreements of two of the three disputed domain names are in English, and as discussed below, there is evidence that all three of the disputed domain names are under common control. This indicates to the Panel that all the Respondents understand English.
Upon considering the above, the Panel decides to grant the Complainant’s request and rules that English be the language of proceeding. B. Consolidation of Multiple Respondents
Past UDRP panels have articulated principles governing whether a complaint may be brought against multiple respondents. These principles are recorded in paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and include whether “(i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.” The Complainant has submitted evidence of common control of the disputed domain names, including that the disputed domain names resolve to extremely similar websites offering the same goods for sale. In light of this evidence, the Panel finds consolidation appropriate in this case. C. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are 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 numerous trademark registrations for the mark STEFANO RICCI around the world. For example: STEFANO RICCI, International Trademark No. 407525 dated May 27, 1974; International Trademark No. 767523, registered date September, 17, 2001; International Trademark No. 1192240, registered date August, 5, 2013 and more.
The disputed domain names integrate the Complainant’s trademark STEFANO RICCI in them entirely, as a dominant element, with additional numbers “2900”, “2015” and “2015” with a geographical indicator “hk” which stands for Hong Kong, China. The number 2015 seems to indicate a year and the number 2900 seems to be nonsensical, but neither serve sufficiently to distinguish or differentiate the disputed domain names from the Complainant’s well-known STEFANO RICCI trademark and refer to the Complainant’s goods offered under the mark. The geographical indicator “hk” also does not sufficiently distinguish.
Previous UDRP 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 addition of a generic Top-Level Domain (gTLD) “.com” to the disputed domain names 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 “.com” is without legal significance since use of a gTLD is technically required to operate a domain name and it does not serve to identify the source of the goods or services provided by the registrant of a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to the trademarks in which the Complainant has rights. D. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names, the burden shifts to the Respondents to show that they have rights or legitimate interests in respect to the disputed domain names (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondents have no rights or legitimate interests in respect of the disputed domain names and the Respondents failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondents to use its STEFANO RICCI trademark or a variation of it. The Respondents did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain names. Thus, the Respondents did not rebut the Complainant’s prima facie case.
Further, any (potential) argument that the Respondents’ use of the disputed domain names to sell purportedly authentic items of the Complainant’s merchandise amounts to a bona fide offering of goods and therefore give rise to rights or legitimate interests would fail. Even if the Complainant’s goods for sale at the disputed domain names are authentic, if one were to apply the principles laid down in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, to this case they would not be satisfied because, for example, the Respondents have used the disputed domain names to sell items other than the Complainant’s trademarked goods (as indicated in the Factual Background).
Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in respect of the disputed domain names. E. Registered and Used in Bad Faith
The Complainant must show that the Respondents registered and are using the disputed domain names 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 Respondents registered the disputed domain names 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 has owned a registration for the STEFANO RICCI trademark since the year 1974. It is suggestive of the Respondents’ bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names (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 in the context of commercial websites that are using the disputed domain names to sell counterfeit products, as contrasted with a noncommercial website that makes only fair uses: “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).
Indeed, in the context of commercial websites that cannot claim fair use “when a domain name is so obviously connected with a Complainant, it’s very use by a registrant with no connection to the Complainant suggests ‘opportunistic’ bad faith.” (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
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 disputed domain name is resolved to, 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 to.
The disputed domain names also include the numbers “2900”, “2015” and “2015” and “hk”, which add no additional meaning to the Complainant’s mark but a geographical indicator, a year and a meaningless number. This is clear evidence that the Respondents registered and are using the disputed domain names with knowledge of the Complainant and of the use the Complainant is making of its STEFANO RICCI trademark, and indicates that the Respondents’ primary intent with respect to the disputed domain names is to trade off the value of these. The Respondents’ 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 names are confusingly similar to the Complainant’s famous trademark. Previous UDRP panels ruled, in the context of commercial websites as contrasted with noncommercial fair use only websites 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 to a commercial website 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. The circumstances of this case, and the evidence shows that the Respondents have been engaged in the systematic activity of registering domain names comprising trademarks of known brands and companies. Such systematic behavior is further evidence of bad faith registration and use of the disputed domain names.
The Respondents’ lack of response to the cease and desist letters sent by the Complainant, is a further indication of the Respondents’ bad faith registration and use of the disputed domain names.
Based on the evidence presented to the Panel, including the late registration of the disputed domain names, the use of the Complainant’s trademark in the disputed domain names and the similarity between the disputed domain names and the Complainant’s mark, the failure to answer the cease and desist letters, the Panel draws the inference that the disputed domain names were 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 names , and be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: March 22, 2015
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