The Complainant is Roraj Trade, LLC of Los Angeles, California, United States of America ("United States" or "U.S."), represented by Barack Ferrazzano Kirschbaum & Nagelberg, LLP, United States.
The Respondent is lishijie of Beijing, China / Domain Admin, Information Privacy Protection Services Limited of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with 22net, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 16, 2016. On June 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 2016, the Registrar transmitted by email to the Center its verification response 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 June 20, 2016 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 June 22, 2016.
On June 20, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceedings. On June 22, 2016, the Complainant submitted a request that English be the language of the proceedings. On June 23, 2016, the Respondent submitted a request that Chinese be the language of the proceedings.
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 and 4, the Center formally notified the Respondent in both Chinese and English of the Complaint, and the proceedings commenced on June 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2016. The Response in Chinese was filed with the Center on July 8, 2016.
The Center appointed Jonathan Agmon as the sole panelist in this matter on July 22, 2016. 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 July 27, 2016, the Center received an unsolicited Supplemental Filing from the Complainant. The Panel finds there are no exceptional circumstances present in this case to allow such Supplemental Filing. Accordingly, the Panel has decided not to accept it in accordance with paragraph 10 of the Rules. 4. Factual Background
The Complainant is Roraj Trade, LLC, a U.S. based company. The Complainant is the exclusive owner of a global portfolio of RIHANNA, RIHANNA-formative and FENTY-formative trademarks used in connection with products and services offered by, or in connection with, the Grammy-winning, music icon Rihanna, nee Robyn Rihanna Fenty.
The Complainant is the owner of numerous trademark registrations for the RIHANNA mark around the world. For example: United Stated Registration no. 3,621,108 – RIHANNA, with the registration date of May 31, 2016; United Stated Registration no. 3,730,038 – RIHANNA, with the registration date of December 22, 2009; United Stated Registration no. 4,526,011– RIHANNA, with the registration date of May 6, 2014; and many more.
The Complainant also owns trademark registrations for FENTY-formative trademarks. For example: Community trademark registration no. 13,039,532– FENTYCORP, with the registration date of November 20, 2014 and Community trademark registration no. 12133641 – FENTY88, with the registration date of February 5, 2013.
The Complainant also owns intent-to-use trademark applications for the trademark FENTY BEAUTY BY RIHANNA in the United States.
The Complainant also registered the domain name containing its trademarks.
The disputed domain name was registered on April 15, 2016.
The disputed domain name currently resolves to a landing webpage of the Registrar. 5. Parties' Contentions A. Complainant
The Complainant argues that the Respondent seeks to capitalize on Fenty's fame and the impending launch of Fenty's cosmetics brand - "Fenty Beauty By Rihanna" by cybersquatting on the disputed domain name .
The Complainant further argues that the Respondent has registered the disputed domain name one day after a press release publicly announcing, for the first time, the launch of the Fenty Beauty by Rihanna cosmetics line.
The Complainant further argues that the disputed domain name wholly incorporates the RIHANNA trademark and uses the dominant portion, "fenty", of the FENTY-formative trademarks.
The Complainant further argues that the disputed domain name is confusingly similar to the Complainant's trademarks and the use made by the Respondent of an entire trademark in the disputed domain name causes the average Internet user to assume, wrongly, that the Respondent is affiliated with, sponsored by, or otherwise related to the Complainant.
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant further argues that the Complainant has not granted any license or consent, express or implied, to the Respondent to use the RIHANNA or FENTY-formative trademarks, or the Fenty surname, in a domain name or in any other manner.
The Complainant further argues that the Respondent does not appear to have any legitimate business, or other, use for the disputed domain name. Fenty Beauty By Rihanna is the name of a soon-to-be-launched global cosmetics brand.
The Complainant further asserts that the launch of the Fenty Beauty By Rihanna cosmetics line has been extensively covered by the media and certainly, consumers have already come to associate the name "Fenty Beauty by Rihanna" with the Complainant, even in advance of the product launch.
The Complainant further argues that the Respondent's registration of the disputed domain name may be solely in hopes of selling the disputed domain name and profiting from and exploiting the Complainant's goodwill in the RIHANNA trademarks.
The Complainant further argues that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant further argues that the Respondent appears to have registered the disputed domain name the day after the announcement of the launch of the brand in an attempt to capitalize on the impending launch which indicates opportunistic bad faith.
The Complainant further argues that the Respondent's bad faith is demonstrated by the incorporation of the famous trademark RIHANNA in the disputed domain name.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent argues that the disputed domain name is comprised of a random combination of letters. The Respondent further argues that the Complainant's alleged FENTY or RIHANNA marks are not the same as the disputed domain name.
The Respondent further argues that if only because the disputed domain name contains the words "Fenty" or "Rihanna", the determination should not be for the Complainant. The Respondent further asks whether likewise, would the existence of the words such as "apple" or "kfc" in a domain name mean that these domain names are owned by APPLE Inc or KFC Inc?
The Respondent further argues that the Complainant did not register the trademarks which appear in the disputed domain name in China, and thus the Complainant does not have relevant prior rights to the disputed domain name.
The Respondent further argues that he is not a "Star chaser", and that Rihanna does not have a high degree of fame in China and certainly not in the area where the Respondent resides.
The Respondent further argues that he is holding the disputed domain name for personal use, does not intend to sell or rent the disputed domain name and there is no evidence of malicious cybersquatting activities by him.
The Respondent further argues that the rules of registration of domain names is on a first come first served basis, and that he enjoys priority, ownership and use of the disputed domain name. 6. Discussion and Findings A. 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 the proceedings should be English.
The Respondent requested that the language of the proceedings should be Chinese.
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 in deciding on the language of the proceedings:
a) The disputed domain name consists of Latin letters, rather than Chinese letters;
b) The disputed domain name includes the English words and brands "fenty", "beauty" and "Rihanna";
c) The burden and expense the Complainant would bear in translating the Complaint documents;
d) The Respondent has responded cogently to an English version of the Complaint, and therefore the Panel considers the Respondent to have an actual and working knowledge of English.
Upon considering the above, the Panel rules that English be the language of the proceedings (noting however that the Panel will consider the Respondent's Chinese-language Response). 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.
As discussed above, the Complainant is the owner of numerous trademark registrations for the RIHANNA mark around the world.
The Panel finds the disputed domain name integrates the Complainant's RIHANNA trademark in its entirety, as a dominant element.
The additional terms "fenty", "beauty" and "by" do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's trademark, on the contrary they even increase the connection with the Complainant's registered trademark, especially since "Fenty Beauty By Rihanna" was publicly announced as Rihanna's new cosmetics line, and it is identical to the disputed domain name.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate a domain name from the relevant registered trademark: "[t]he Panel agrees that with the wholesale incorporation of the YAHOO sign (which is the primary word element in the Complainant's YAHOO! mark), the addition of the descriptive word 'page' does not at all serve to remove the confusing similarity with the Complainant's mark, all the more in the context of webpages or websites". (See Yahoo! Inc. v. Blue Q Ltd., Romain Barissat,WIPO Case No. D2011-0702).
The addition of the generic Top-Level Domain ("gTLD") ".com" to the disputed domain name does not avoid a finding of 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 the use of a TLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark 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 of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
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 Complainant's trademark RIHANNA, 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 failed to rebut this prima facie case by adequately evidencing his rights or legitimate interests. Merely stating that the disputed domain name is for "personal use" is clearly insufficient in the Panel's view to demonstrate such a right. The Panel need not address the Complainant's argument that it has a right to the disputed domain name on the basis that common dictionary words or acronyms are generally registrable as domain names by the public except to say that the disputed domain name, , is not of these categories.
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 evidence bad faith under paragraph 4(a)(iii) of the Policy.
It would have been pertinent for the Respondent to provide a plausible good faith explanation for his choice of the disputed domain name. Instead, the Respondent has chosen to respond to the Complainant's allegations with the argument that the disputed domain name has no meaning and is just a random combination of letters. This argument, and the argument that Rihanna (as a celebrity) is unknown in China, are not supported by any evidence. If anything, the evidence provided by the Complainant (and the Panel's own search) shows that Rihanna, as well as her full name, which includes the words "Rihanna" and "Fenty", are well known on social media in China.
The above, combined with the fact that the Respondent's registration of the of disputed domain name, which corresponds exactly to the Complainant's soon-to-be launched product line, took place the day after that product line was announced, leads the Panel to conclude that the disputed domain name was registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and profit therefrom. In these circumstances, the current passive holding of the disputed domain name does not prevent a finding of bad faith use.
Based on the evidence that was presented to the Panel, including the use of the Complainant's trademark in the disputed domain name, the recent launch of the Fenty Beauty By Rihanna cosmetics line and the fact it has been extensively covered by the media, the passive holding of the disputed domain name and the Respondent's failure to demonstrate legitimate explanation in to use the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is being 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: August 5, 2016
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