The Complainant is Arena Distribution S.A. of Lugano, Switzerland, represented by Jacobacci & Associati, Italy.
The Respondent is LinYuanQuan of Xiamen, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Century Oriental International Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2015. On October 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 2015, 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 October 13, 2015, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. On October 13, 2015, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not submit any comments on the language of proceeding 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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on October 22, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on November 19, 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 a Swiss company belonging to Group Arena, an international brand of swimwear apparel created in 1973. The Complainant is the registered proprietor of the word mark and other marks containing the word ARENA, possessing, inter alia, International registrations dating from 1973 and United States of America registrations dating from 1971 and 1978.
The disputed domain name was registered on December 12, 2013. 5. Parties’ Contentions A. Complainant
The Complainant asserts that:
(i) The disputed domain name is confusingly similar to the Complainant’s ARENA trade mark, the only difference with the ARENA trade mark being the addition of the non-distinctive words “swimwear” and the country name, “USA”.
(ii) The Respondent has no rights or legitimate interests in the disputed domain name since (a) there is no evidence of the 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; (b) the Respondent has never been commonly known in the normal course of business by the trade mark or domain name “arena”; and (c) there is no noncommercial fair use of the disputed domain name. The Respondent has used the disputed domain name in a commercial manner.
(iii) The disputed domain name was registered and is being used in bad faith. There is no way that the Respondent was not aware of the Complainant’s ARENA trade mark and registration of the disputed domain name could only have been done in bad faith. The Respondent has been using the disputed domain name for a website entirely devoted to selling counterfeit ARENA products. By using the disputed domain name, the Respondent has attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade mark. Several of the products have been examined by the Complainant and found to be counterfeit. The use of the ARENA logo on the website gives the misleading impression that the Respondent is associated with the Complainant. The copying of original images of the Complainant’s publicity pages for ARENA is a breach of the Complainant’s copyright. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
Paragraph 11(a) of the Rules states that: “[u]nless 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.”
Further, paragraph 10(b) and (c) of the Rules stipulate, respectively, that:
“(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.”
The language of the Registration Agreement in respect of the disputed domain name is Chinese but the Complaint was filed in English. The Complainant requested that English be the language of the proceeding for the reason that the disputed domain name resolves to a website which is tailored for American customers and the website is in English.
The Respondent did not respond on the issue of the language of the proceeding.
The Panel notes that the disputed domain name consists of a combination of the English words “arena”, “swimwear” and the abbreviation for the United States of America, “USA”. Further, the Respondent’s website, including instructions on “Shipping & Returns”, is presented entirely in English. This demonstrates that the Respondent has a good understanding of the English language.
As provided for in the above-mentioned Rules, the Panel has to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their case. In the circumstances of this case, the Panel believes that the Respondent would not be prejudiced if English is adopted as the language of the proceeding. If the Respondent had a valid objection in regard to this issue, it could have raised the issue and was in fact given the opportunity to. A fair opportunity has therefore been accorded to the Respondent.
The Panel therefore determines that English should be the language of the proceeding in this case. B. Identical or Confusingly Similar
The Complainant has established it has rights in the trade mark ARENA.
The next question to be addressed is whether the addition of the words “swimwear” and “usa” is sufficient to remove the confusing similarity with the Complainant’s trade mark. In this regard, the Panel refers to paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) which states the consensus view of panelists, namely that in order to satisfy the threshold test for confusing similarity under the UDRP, “the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion”.
The Panel is of the view that the ARENA trade mark is immediately recognizable within the disputed domain name, especially since it is the first word which features therein. The addition of the terms “swimwear” and “usa” does not alter the essential characteristic of the disputed domain name in a manner that is sufficient to remove the confusion with the Complainant’s ARENA trade mark.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trade mark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. C. Rights or Legitimate Interests
The Panel finds that the Complainant has satisfied its burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The ARENA trade mark has been in use for many years and is a widely-recognized brand of swimwear. There is no business relationship between the Complainant and the Respondent and there is no evidence that the Respondent has been known by a name corresponding to the disputed domain name or to ARENA. The consensus view that has been established in previous panel decisions under the UDRP is that:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” (See paragraph 2.1 of the WIPO Overview 2.0.)
The Respondent has not responded in this proceeding nor offered a rebuttal to the Complainant’s assertions. In the circumstances, the Panel concludes on the basis of the prima facie evidence submitted that the Respondent has no rights or legitimate interests in the disputed domain name.
The requirements of paragraph 4(a)(ii) of the Policy have therefore been satisfied. D. Registered and Used in Bad Faith
The Panel finds that the most damaging to the Respondent’s position is the blatant copying of the Complainant’s trade marks on its website. The intention is quite evidently to give the false impression that the Respondent’s website is a legitimate and authorized website selling ARENA swimwear. The words in the disputed domain name may suggest to Internet users that the site is targeted specifically to the United States of America market. Whilst the Complainant has stated that the items sold from the Respondent’s website have been found to be counterfeit, no affidavit to that effect with evidence has been entered into evidence. Nevertheless, the Panel has noted the observations made by the Complainant on this issue and draws an adverse inference against the Respondent. The Respondent has not responded and proved otherwise.
In the light of the evidence submitted including the apparent copying of proprietary material and images, the Panel concludes that the Respondent’s registration and use of the disputed domain name which incorporates the Complainant’s ARENA trade mark in its entirety and which suggests to Internet users that the Respondent is perhaps an authorized distributor of ARENA swimwear was in bad faith. It is rather apparent that the Respondent was well aware of the Complainant and of its products, and the intention in registering the disputed domain name must have been to profit from the diversion of Internet traffic and customers looking to purchase ARENA swimwear.
The Panel finds, in the circumstances, that the Respondent “by using the [disputed] domain name, [has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] web site or location or of a product or service on [its] web site or location (paragraph 4(b)(iv) of the Policy).”
The requirements of paragraph 4(a)(iii) of the Policy has been established by the Complainant. 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.
Francine Tan
Sole Panelist
Date: November 27, 2015
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