The Complainant is Valentino S.p.A. of Milan, Italy, represented by Studio Barbero, Italy.
The Respondents are Qiu Yufeng of Anhui, China, Li Lianye of Quanzhou, Fujian, China. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , and are 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 August 25, 2016. On August 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 29, 2016 and August 31, 2016, the Registrar transmitted by email to the Center its verification responses confirming that the Respondents are listed as the registrants and providing the contact details.
On August 30, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On the same day, 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 and 4, the Center formally notified the Respondents in both Chinese and English of the Complaint, and the proceedings commenced on September 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2016.
The Center appointed Sok Ling MOI as the sole panelist in this matter on October 7, 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. 4. Factual Background
The Complainant is a luxury fashion house founded in Italy in 1960 by fashion designer Valentino Garavani and his business partner Giancarlo Giammetti. It offers an extensive product collection ranging from luxury clothing to accessories such as bags, shoes, small leather products, jewellery, eyewear and perfumes. Its products are available in more than 90 countries through its more than 160 directly-operated retail stores. It has several stores located in China where the Respondents are presumably based.
The Complainant has used the trade mark VALENTINO in connection with its products for more than 50 years. The Complainant also sells its products under the brands and marks “V” logo, RED VALENTINO, VALENTINO GARAVANI and ROCKSTUD.
The Complainant is the owner of numerous trade mark registrations for VALENTINO and its other brands in a number of jurisdictions, including the following:
Jurisdiction
Mark
Registration No.
Class No.
Registration Date
International designating China
VALENTINO
570593
3, 14, 18 & 25
April 24, 1991
United States of America
VALENTINO
910,955
25
April 6, 1971
European Union
VALENTINO
1990407
3, 9, 14, 16, 18, 19, 20, 21, 24, 25, 27, 34 & 35
September 18, 2008
International
979223
3, 8, 9, 11, 14, 16, 18, 19, 20, 21, 23, 24, 25, 27, 35, 36 & 43
July 22, 2008
International
ROCKSTUD
1130628
25
July 31, 2012
International
VALENTINO GARAVANI
969844
8, 11, 19, 20, 21, 27, 36, 42 & 43
July 2, 2008
The Complainant is also the owner of more than 300 domain names comprising the trade mark VALENTINO, including the following:
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The Complainant offers its products for sale through an online store on its websites at “www.” and “www.red” which provides information about the Complainant’s activity and products.
The disputed domain names were registered between October 21, 2014 and July 25, 2016, long after the Complainant had used and registered its trade mark VALENTINO.
The disputed domain name does not resolve to any active website. The other thirteen disputed domain names all resolve to active websites which reproduce the Complainant’s various trade marks and purport to offer for sale products under the VALENTINO brand. 5. Parties’ Contentions A. Complainant
The Complainant contended that the disputed domain names are confusingly similar to its trade mark VALENTINO, the Respondents have no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names have been registered and are being used in bad faith.
The Complainant claimed that its trade mark VALENTINO is well-known throughout the world, and enjoys a worldwide reputation and goodwill as one of the leading manufacturers of luxury products. It also claims that it enjoys a strong online presence and operates an online store at its main website “www.” since 1998.
The Complainant furnished evidence of screenshots to show that the websites to which the disputed domain names (with the exception of ) resolve reproduced the Complainant’s trade marks to offer for sale identical goods to those offered by the Complainant, without displaying a clear disclaimer of a lack of a relationship between the Complainant and the website operators. The Complainant confirmed that these websites are all unauthorised and that the Complainant has not licensed or permitted the Respondent to use the Complainant’s trade marks or to register the disputed domain names or to resell its products. The Complainant alleged that the goods offered for sale by the Respondent may be counterfeit.
The Complainant requested for the transfer of the disputed domain names. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issues A. Consolidation of the Respondents
According to the WhoIs information, the disputed domain names , , , , , , , , , , , and are registered in the name of “Qiu Yufeng” while the disputed domain name is registered in the name of “Li Lianye”.
The Complainant has submitted a request to have the Complaint filed against multiple respondents.
Although neither the Policy nor the Rules explicitly provides for the consolidation of multiple respondents, the issue has been considered by various prior UDRP panels who have reached a general consensus. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16.
In order to file a single complaint against multiple respondents, the complaint must typically meet the following criteria:
(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.
In this regard, the Complainant cited the following reasons, inter alia, to support its allegation that the fourteen disputed domain names are subject to common control or at least reflective of a group of individuals acting in concert:
(a) the same email address was indicated for the respective registrant, administrative and technical contact for all fourteen disputed domain names;
(b) all fourteen disputed domain names were registered with the same registrar, Xin Net Technology Corporation;
(c) the same email address was displayed on the respective websites to which the disputed domain names , and resolve; and
(d) the respective websites to which the disputed domain names and resolve have almost identical structure and contents.
In view of the common contact details of the registrants and commonalities in the websites to which the disputed domain names resolve, the Panel is satisfied that all fourteen disputed domain names are subject to common control. The Panel therefore allows the Complainant’s request to consolidate the proceedings involving the fourteen disputed domain names registered by both Respondents. B. Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, 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.
Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreements for the disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondents regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.
The Panel finds persuasive evidence in the present proceeding to suggest that the Respondents have sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain names are all registered in Latin characters, rather than Chinese script;
(b) according to the evidence submitted by the Complainant, the contents of thirteen out of fourteen of the websites to which the disputed domain names resolved were entirely in English; and
(c) at least eleven out of the fourteen disputed domain names each comprises the Complainant’s trade mark VALENTINO coupled with a generic English term, namely, “by”, “cheap”, “buy”, “official”, “real”, “red” “dress”, “dresses”, “sale”, “shop”, “cloth” and “website”.
Additionally, the Panel notes that:
(a) the Center has notified the Respondents of the proceeding in both Chinese and English;
(b) the Respondents have been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but failed to do so; and
(b) the Center has informed the Respondents that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.
The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English. 6.2 Substantive Issues
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain names to be cancelled or transferred:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in VALENTINO by virtue of its use and registration of the same as a trade mark.
The disputed domain names each incorporates the Complainant’s trade mark VALENTINO in its entirety, as a dominant and distinctive element. The addition of the respective generic English words “by”, “cheap”, “buy”, “official”, “real”, “red” “dress”, “dresses”, “sale”, “shop”, “cloth” and “website” or the letters “e” and u” or the number “2”, does not sufficiently differentiate the disputed domain names from the Complainant’s trade mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not impact the analysis of whether the disputed domain names are identical or confusingly similar to the Complainant’s trade mark.
Consequently, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondents lack rights or legitimate interests in the disputed domain names. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the Respondents to establish its rights or legitimate interests in the disputed domain names by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to them of the dispute, the Respondents’ use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondents have been commonly known by the disputed domain names, even if they have acquired no trade mark or service mark rights; or
(iii) the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd,WIPO Case No. D2013-0974)
The Complainant has clearly established that the Respondents are not in any way affiliated with the Complainant or otherwise authorized or licensed to use the Complainant’s trade mark VALENTINO or to register the disputed domain names or to resell its products. There is also no evidence suggesting that the Respondents are commonly known by the disputed domain names or that the Respondents have any rights in the name “Valentino”.
The disputed domain name does not resolve to any active website and appears never to have in the past. There is no evidence of any use or preparations to use that disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose.
The other thirteen disputed domain names all resolve to active websites which reproduce the Complainants’ various trade marks and purport to offer for sale VALENTINO products at prices significantly lower than those of the original products. According to the Complainant, the websites at “www.”, “www.” and “www.” even explicitly mention that the Valentino products offered for sale are “replica” products. The Panel accepts this as prima facie evidence that the products advertised and offered for sale are counterfeit. There can be no right or legitimate interest in the sale of counterfeit products.
The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondents lack rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondents to establish their rights or legitimate interests in the disputed domain names. Since the Respondents has failed to respond, the prima facie case has not been rebutted.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain names in bad faith, namely:
(i) circumstances indicating that the Respondents have registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondents’ documented out-of-pocket costs directly related to the disputed domain names; or
(ii) the Respondents have registered the disputed domain names in order to prevent the owner of the trade mark or service mark from reflecting the mark in corresponding domain names, provided that the Respondents have engaged in a pattern of such conduct; or
(iii) the Respondents have registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ websites or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ websites or location or of a product or service on the Respondents’ websites or location.
The Panel notes that, as of the date of this decision, the disputed domain name does not resolve to any active website. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. See WIPO Overview 2.0, paragraph 3.2.
By virtue of its extensive use and advertising since the 1960s, the Complainant and its trade mark VALENTINO enjoy a significant reputation worldwide and a strong online presence. There is no doubt that that the Respondents were aware of the Complainant and its trade mark when they registered the disputed domain names, given that they have reproduced the Complainant’s trade marks and have listed VALENTINO products for sale on their websites. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith. The Panel determines that the Respondents’ purpose of registering the disputed domain names was to trade on the reputation of the Complainant and its trade mark by diverting Internet users seeking the Complainant’s branded products to their own websites for financial gain.
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 Valentino S.p.A. v. hong chen, chen hong, WIPO Case No. D2014-2129). Irrespective of whether the goods offered on the Respondents’ websites are in fact counterfeit, the reproduction of the Complainant’s trade marks on the Respondents’ websites corresponding to the other thirteen disputed domain names without also displaying a clear disclaimer of a lack of relationship between the Respondents and the Complainant, is indication of bad faith.
The Panel is satisfied that the Respondent intended to take advantage of the fame of the Complainant’s trade mark to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s websites. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are also applicable to the present case.
That the Respondents registered a total of fourteen domain names incorporating the Complainant’s trade mark suggests that the Respondents have registered the disputed domain names in order to prevent the Complainant from reflecting its trade mark VALENTINO in corresponding domain names. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(ii) of the Policy are also applicable to the present case.
Taking into account all the circumstances, it is appropriate to conclude that the Respondents have registered and used the disputed domain names in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 all the fourteen disputed domain names, , , , , , , , , , , , , and be transferred to the Complainant.
Sok Ling MOI
Sole Panelist
Date: October 21, 2016
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