The Complainant is ECCO Sko A/S of Bredebro, Denmark, represented by Bech-Bruun Law Firm, Denmark.
The Respondent is ShiHua Ren / RenShiHua of Xiamen, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the "Registrar"). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 6, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 2017, 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 February 14, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On February 15, 2017, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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, and the proceedings commenced on February 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 21, 2017.
The Center appointed Matthew Kennedy as the sole panelist in this matter on March 30, 2017. 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 manufactures and sells footwear under the brand ECCO. ECCO shoes are sold online and in stores in more than 90 countries around the world, including China. The Complainant has registered trademarks in multiple jurisdictions including Chinese trademark registrations numbers 208743, 7694395 and 9678975 for ECCO, and Chinese trademark registrations numbers 7694394 and 9678976 for ECCO in a stylized form, registered from May 30, 1984; August 7, 2013; May 14, 2014, October 7, 2012 and May 14, 2014, respectively. These registrations specify goods in class 25, including shoes, or services in class 35, including sales promotion. All these registrations remain current. The Complainant has also registered the domain name that it uses in connection with its official website where it provides information about itself and its products.
The Respondent is an individual located in China and the registrant of the disputed domain name. The disputed domain name was created on February 17, 2016. It resolves to a website in Romanian that offers for sale what are alleged to be the Complainant's shoes. The website prominently displays the Complainant's registered trademark consisting of ECCO in a stylized form and it also displays photographs from the Complainant's 2010 autumn/winter catalogue. Prices are displayed in currencies including Romanian New Lei and euro.
The Respondent was found by a panel in a previous proceeding under the Policy to have registered and used two other domain names in bad faith. Specifically, the Respondent had registered two domain names that wholly incorporated a third-party trademark and was using them in connection with websites that appeared to sell counterfeits of the relevant trademark owner's products, in that case, fashion goods. See IM Production v. ShiHua Ren, RenShiHua,WIPO Case No. D2016-0048, regarding the domain names and . 5. Parties' Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant's ECCO trademark. The disputed domain name wholly incorporates that trademark, merely combining it with the geographical indicator "romania" and the generic Top-Level Domain ("gTLD") suffix ".com".
The Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence to conclude that the Respondent owns any service marks or trademarks that reflect the disputed domain name. The disputed domain name is used in connection with a website that sells counterfeit products. The Complainant has not licensed or otherwise authorised the Respondent to use its ECCO trademarks or to apply for or register any domain name incorporating the said trademarks. Neither the Respondent nor so-called "Ecco Shoes Romania" is an official manufacturer, distributor or retailer of ECCO products or in any way related to the Complainant.
The disputed domain name was registered and is being used in bad faith. The Complainant's trademark was registered many years before the disputed domain name, including in China. It is highly unlikely that the Respondent was unaware of the Complainant and its ECCO trademarks at the time of registration of the disputed domain name because the Respondent's website sells counterfeit shoes under that trademark. By using the Complainant's trademark, the Respondent is likely to divert Internet traffic and deceive Internet users into believing that his website is connected to the Complainant. The use of the disputed domain name for the promotion and sale of counterfeit goods is strong evidence of bad faith. Further, the Respondent has been subjected to other proceedings related to websites where he has been selling counterfeit goods under a third party's registered trademark. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that its trademark is fully incorporated in the disputed domain name, that the disputed domain name is in ASCII format, that the Respondent's website uses fragments of English and that translation of the Complaint into Chinese would cause substantial additional expense and delay. The Respondent did not comment on the language request.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English. Having received notice of the Complaint in Chinese and English, the Respondent has not expressed any wish to respond to it or otherwise participate in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the ECCO trademark.
The disputed domain name incorporates the Complainant's ECCO trademark in its entirety as its only distinctive element.
The disputed domain name contains the additional element "romania" which is a country name. As a mere geographical term, this additional element is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant's trademark. See Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768.
The disputed domain name also contains the gTLD suffix ".com" but a gTLD suffix is generally disregarded in the comparison between a domain name with a trademark for the purposes of assessing confusing similarity. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [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; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As regards the first circumstance above, the disputed domain name is being used in connection with an online store that offers for sale what are alleged to be the Complainant's shoes. The Complainant submits that it has not licensed or otherwise authorised the Respondent to use its ECCO trademarks or to apply for or register any domain name incorporating the said trademarks, and that the Respondent is not in any way related to the Complainant. Whether or not the shoes offered for sale on the Respondent's website are counterfeit or genuine, the Panel notes that the website does not accurately disclose the Respondent's lack of any relationship to the Complainant. Given that the disputed domain name is confusingly similar to the Complainant's trademark, the Panel considers that the Respondent's website is very likely to misleadingly divert Internet users to the site with intent for commercial gain. These facts show that the Respondent's use of the disputed domain name is not in connection with a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
As regards the second circumstance above, the Respondent's name is recorded in the Registrar's WhoIs database as "ShiHua Ren / RenShiHua", not "Eccoromania" or even "Ecco". There is a notice in a footer on the home page that the Respondent's website is powered by "Ecco Shoes Romania" but there is no evidence that the Respondent is known by that name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
As regards the third circumstance above, the disputed domain name resolves to an online store. That is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because it did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
"(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] 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 [the Respondent's] web site or location or of a product or service on [the Respondent's] web site or location."
The disputed domain name was registered in 2016, many years after the Complainant obtained its trademark registrations, including in China where the Respondent is located. The disputed domain name incorporates the Complainant's ECCO trademark in its entirety as its only distinctive element. The addition of the word "romania" gives the impression that it resolves to the Complainant's Romanian website or a website connected with the Complainant. The content of the website to which the disputed domain name resolves confirms that impression, by displaying the Complainant's ECCO trademark in the registered stylized form, displaying photographs from an old catalogue of the Complainant and offering what are alleged to be the Complainant's shoes. This all indicates to the Panel that the Respondent was aware of the Complainant and its ECCO trademark at the time that it registered the disputed domain name and deliberately chose to register it as part of the disputed domain name in bad faith.
The Respondent uses the disputed domain name, which is confusingly similar to the Complainant's ECCO trademark, in connection with a website that is an online store falsely presented as if it were the Complainant's Romanian website or a website connected with the Complainant. The disputed domain name operates by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the website. This use is intentional and for commercial gain as contemplated by paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in 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 the disputed domain name be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: April 10, 2017
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