Complainant is Strellson AG of Kreuzlingen, Switzerland, represented by SKW Schwarz Rechtsanwälte, Germany.
Respondent is Liu Xuemei of Zhoukou, China. 2. The Domain Names and Registrar
The disputed domain names and (the “Disputed Domain Names”) are registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2017. On March 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 18, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on March 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 11, 2017.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on April 26, 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.
Respondent sent an email to the Center on May 22, 2017. 4. Factual Background
Complainant owns European Union and International Registrations for its mark STRELLSON, the earliest of which is 486977, registered July 12, 1984 for “clothing, shoe wear, head gear”. Complainant also owns European Union and International Registrations for its mark JOOP!, the earliest of which is 518735, registered August 17, 1987 for, inter alia, “glasses, jewelry, watches, bags, clothing, footwear, headgear”.
The Disputed Domain Names were registered on August 25, 2016. The Disputed Domain Names used to resolve to websites seemingly offering Complainant’s products at a discounted price. The Disputed Domain Names are currently inactive. 5. Parties’ Contentions A. Complainant
Complainant asserts that it is a leading international fashion and lifestyle label, and it designs and markets fashion and lifestyle products worldwide for men and women. Complainant asserts that two of its brands known worldwide under which it markets its products are “Strellson” and “Joop!”. Complainant owns European Union and International registrations for its STRELLSON mark registered since as early as 1984, and European Union and International registrations for JOOP!, registered since 1987. Complainant asserts that it uses these trademarks in particular for sunglasses, jewelry, handbags, clothing, footwear and headgear worldwide.
Complainant asserts that the Disputed Domain Names are identical or at least confusingly similar to Complainant’s trademarks since they combine the trademark STRELLSON with the purely descriptive term “boots” and the trademark JOOP! with the purely descriptive term “for women”. Complainant asserts that its trademarks are clearly the dominant and principal component of both Disputed Domain Names. Complainant asserts that the additional descriptive terms “boots” and “for women” refer clearly to Complainant’s products, the goods for which Complainant’s trademarks are protected and used.
Complainant asserts that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because Respondent is not known by the names or designations “Strellson” and or “Joop”, Respondent has not applied for any trademarks or other intellectual property rights containing Complainant’s marks; Complainant has not given license to Respondent in respect of any trademarks containing Complainant’s marks, and Respondent’s websites linked to the Disputed Domain Names do not disclose any information regarding Respondent’s relationship with Complainant and could not accurately do so. Further, Complainant asserts that Respondent is not commonly known by either Disputed Domain Name.
Complainant asserts that Respondent used Complainant’s marks within the Disputed Domain Names. Complainant asserts that on the websites available under the Disputed Domain Names the Respondent creates the impression to offer discounted products of the brands “Strellson” and “Joop!” of Complainant. However, Complainant asserts that it seems highly likely that Respondent does not in fact operate an online shop but rather a phishing website operated in order to attract Internet users looking for Complainant’s widely-known products under Complainant’s marks and to provide the Respondent with contact and payment details. The Complainant asserts that neither of Respondent’s websites carries any characteristics of a reputable or regular online shop. In particular, Complainant asserts that the operator of the website is not identified, and that they carry no imprint or other identifying information. The “contact us” link for each website provides only an anonymous contact form which Complainant asserts is neither a bona fide use nor a noncommercial or fair use of the Disputed Domain Names.
Complainant asserts that the Disputed Domain Names were registered and are being used in bad faith, as the Disputed Domain Names are used by Respondent to attract Internet users looking for Complainant’s products under Complainant’s marks to the websites and to provide Respondent with their contact and payment details. Complainant asserts that Respondent has registered the Disputed Domain Names containing Complainant’s marks to create the impression that these websites are online shops offering Complainant’s products at highly reduced prices. Therefore, Complainant asserts that Respondent intentionally attempts to attract for commercial gain, Internet users to Respondent’s websites by creating the false impression to offer products of Complainant’s trademarks and therefore the false impression as to the source of products seemingly offered via Respondent’s websites and an alleged affiliation to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. In an email communication sent on May 22, 2017, Respondent asserted, “all items are in stock and authentic, you can buy by confidence”. A. Applicable Policy Provisions
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has 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.
The Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [Respondent has] registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [Respondent has] registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.
Policy, paragraph 4(b). These circumstances are non-exclusive, and a UDRP panel may consider other circumstances as constituting registration and use of a domain name in bad faith.
A respondent may demonstrate rights in or legitimate interests to the domain name by any of the following, without limitation:
“(i) Before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.” Policy, paragraph 4(c).
Where a respondent is in default, a UDRP panel may draw such inferences as it considers appropriate. Rules, paragraph 14(b). B. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Names and are confusingly similar to Complainant’s registered STRELLSON and JOOP! trademarks, respectively. The Panel agrees with Complainant that adding the descriptive terms “boots” and “for women” to Complainant’s trademarks will not avoid a finding of confusing similarity. See Mou Limited v. Debra Nelis,WIPO Case No. D2016-2031 (addition of “boots” and “sale” insufficient to distinguish the domain names from complainant’s trademark); Ralph Maltby Enterprises, Inc. v. Women With Balls (W.W.B. Accessories),WIPO Case No. D2004-0917 ( confusingly similar to GOLFWORKS).
The omission of an exclamation mark in the Disputed Domain Name is irrelevant as it is not possible to include punctuation marks in domain names, and the Disputed Domain Name reproduces the dominant feature of Complainant’s mark JOOP!. See Brett Habenicht v. Plantation Coffee Roasters, Inc.,WIPO Case No. D2003-0770.
The Panel finds that Complainant has provided sufficient evidence to establish paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Complainant has made a prima facie case, namely by showing that Respondent is not commonly known by the Disputed Domain Names and Respondent has not applied for any trademarks or other intellectual property rights containing the marks.; Respondent has no rights in respect of Complainant’s trademarks, and Respondent is not commonly known by either Disputed Domain Name. Complainant has not authorized Respondent to use Complainant’s marks, Complainant has no relationship with Respondent, Complainant has not licensed Respondent to use its marks and Respondent is not making a bona fide or fair use of the Disputed Domain Names.
Once Complainant makes its prima facie case, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Names. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 2.1. Respondent failed to come forward with allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Names. As Respondent failed to file a response, it may be presumed that Respondent has no rights or legitimate interests in the Disputed Domain Names. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse.,WIPO Case No. D2000-1221. The Panel finds that the allegation that the products are authentic is not sufficient to establish rights or legitimate interests in this regard. As a result, Complainant has established paragraph 4(a)(ii) of the Policy.
Complainant asserted that the clothing and accessories depicted on Respondent’s websites as captured in the annexes to the Complaint are not legitimate, claiming that Respondent seems not to operating online shops but phishing websites. When the Panel attempted independently to access the two websites (as Panels are permitted to do; see, e.g., Sahibinden Bilgi Teknolojileri P Tic. v. Registrant [3431648]: Kemal Demircioglu / Moniker Privacy Services, WIPOCase No. D2010-2033), neither was active. As a result, the Panel could not assess the website. However, based on the evidence provided by Complainant, Respondent appears to have used the Disputed Domain Names for purported retail sites offering goods under Complainant’s marks with no indication that it is not Complainant or that it is unrelated to Complainant. Such use cannot be said to be bona fide offering of goods.
Under the circumstances, and in view of the unproven allegation of the products’ authenticity, and Complainant’s uncontested assertions that Respondent is not authorized to use Complainant’s marks, and that Respondent’s websites appear to have been optimized for phishing purposes, the Panel draws the inference that Respondent was not making a legitimate commercial use of Complainant’s marks, Furthermore, the Panel makes the presumption that a legitimate retailer would not have deactivated its websites simply because it received a complaint from one of its vendors.
Accordingly, Complainant has satisfied the second element of the Policy. D. Registered and Used in Bad Faith
The Panel finds that Complainant has provided sufficient evidence to satisfy paragraph 4(b)(iv) of the Policy, namely that by registered and using the Disputed Domain Names in the way described in Section 6.C above, Respondent intentionally intended to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s websites.
It is obvious from the facts that Respondent targeted Complainant’s marks when registering the Disputed Domain Names. Respondent’s website appeared to offer for sale clothing and accessories under Complainant’s trademarks. Moreover, for the reasons discussed above, this Panel infers that Respondent’s websites were not legitimate offers for sale of Complainant’s authorized products, but were more likely than not presented for phishing purposes to obtain credit card and contact information from unsuspecting Internet users. These facts evidence the registration and use of the Disputed Domain Names in bad faith as outlined in paragraph 4(b)(iv) of the Policy.
As a result, the Panel finds that the Disputed Domain Names were registered and are being used in bad faith. 6. 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.
Jordan S. Weinstein
Sole Panelist
Date: May 22, 2017
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