The Complainant is Sportswear Company S.p.A. of Bologna, Italy, represented by Barzanò & Zanardo Roma SpA, Italy.
The Respondents are Nexperian Holding Limited of Hangzhou, Zhejiang, China; PAN SHUANGQUAN, panshuangquan, pan shuangquan of Fuzhou, Fujian, China; shuangquan pan of Sichuan, China; Liu Chen / Nexperian Holding Limited of Beijing, China; chen wei of Hangzhou, Zhejiang, China; chen wei, guo shao of China; chen wei, bei fang of Shenzhen, Guangdong, China; chen wei, yu yun of Shenzhen, Guangdong, China; Gao Chao Tian, chaotian gao, gaochaotian / Nexperian Holding Limited of Putian, Fujian, China; wenxin huang, Online Store Co., Ltd of Shanghai, China; chen yue / Nexperian Holding Limited of Shanghai, China; qian huang, chen wei of Hangzhou, Zhejiang, China. 2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with PDR Ltd. d/b/a PublicDomainR; the disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , ,
, , , , , , and are registered with HiChina Zhicheng Technology Ltd.; the disputed domain names , , , , , , and are registered with B, Inc.; the disputed domain names , , and are registered with GoD, LLC; the disputed domain names , and are registered with Shanghai Meicheng Technology Information Development Co., Ltd.; the disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd.; the disputed domain name is registered with eNom, Inc.; the disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (collectively, the "Registrars"). 3. Procedural History
The Complaint was filed in English and Chinese with the WIPO Arbitration and Mediation Center (the "Center") on April 28, 2017. On May 1, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. From May 1, 2017 to May 10, 2017, the Registrars transmitted by email to the Center their verification response providing registrant and contact information for the disputed domain names. On May 11, 2017, Center transmitted an email in English and Chinese regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on May 12, 2017. The Respondent did not comment on the language of the proceeding by the specified due date.
On May 11, 2017, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar which differed from the named Respondent and contact information in the Complaint. On the same day, the Center sent the Complaint Deficiency Notification to the Parties. The Complainant filed an amended Complaint on May 31, 2017, removing 62 domain names from the Complaint and adding two domain names.
On June 1, 2017, the Center transmitted by email to the Registrar of the two newly added domain names a request for registrar verification. On June 2, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent in the amended Complaint is the current registrant of the two newly added domain names. On June 6, 2017, the Center transmitted an email in English and Chinese regarding the language of the proceeding in connection with the two newly added domain names. The Complainant requested that English be the language of the proceeding on June 9, 2017. The Respondent did not comment on the language of the proceeding by the specified due date.
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 English and Chinese of the Complaint, and the proceeding commenced on June 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 4, 2017.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on July 10, 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 A. Complainant
The Complainant is a company incorporated in Italy and the owner of numerous registrations in jurisdictions worldwide for the word and device trade mark STONE ISLAND (the "Trade Mark"), including International registration No. 899955, registered on June 1, 2006 (and designating China); and European Union registration No. 3785953, registered on September 2, 2005.
The Complainant has used the Trade Mark since 1982 in respect of clothing.
In 2016, the Complainant generated revenue of more than EUR 100 million. In China, the Complainant operates through shops in Hangzhou, Beijing, Wuhan, Shanghai, Changchun, Changsha and Chengdu. B. Respondent
The Respondent is apparently an individual resident in China. C. The Disputed Domain Names
The disputed domain name was registered on July 13, 2016.
The disputed domain name was registered on July 22, 2016.
The disputed domain names , , and were all registered on July 24, 2016.
The disputed domain name was registered on July 25, 2016.
The disputed domain names and were both registered on August 23, 2016.
The disputed domain name was registered on August 28, 2016.
The disputed domain name was registered on August 31, 2016.
The disputed domain name was registered on September 1, 2016.
The disputed domain names and were both registered on September 3, 2016.
The disputed domain name was registered on September 9, 2016.
The disputed domain name was registered on September 10, 2016.
The disputed domain names and were both registered on September 13, 2016.
The disputed domain names , , , and were all registered on September 15, 2016.
The disputed domain names , , , , , , , , and were all registered on September 16, 2016.
The disputed domain name was registered on September 27, 2016.
The disputed domain names and were registered on October 6, 2016.
The disputed domain names , , and were all registered on October 9, 2016.
The disputed domain name was registered on October 14, 2016.
The disputed domain name was registered on October 21, 2016.
The disputed domain names , , , , , , , , , and were all registered on October 24, 2016.
The disputed domain names , , and were all registered on October 27, 2016.
The disputed domain names and were both registered on October 28, 2016.
The disputed domain names and were both registered on November 10, 2016.
The disputed domain names , , were all registered on November 11, 2016.
The disputed domain name was registered on November 12, 2016.
The disputed domain name was registered on November 14, 2016.
The disputed domain name was registered on November 16, 2016.
The disputed domain name was registered on November 21, 2016.
The disputed domain names , and were all registered on November 18, 2016.
The disputed domain names , , , and were all registered on November 22, 2016.
The disputed domain names and were both registered on November 23, 2016.
The disputed domain names , and were all registered on November 24, 2016.
The disputed domain name was registered on November 26, 2016.
The disputed domain names , , , , , , , , and were all registered on November 30, 2016.
The disputed domain names and were both registered on December 1, 2016.
The disputed domain names and were both registered on December 9, 2016.
The disputed domain name was registered on December 19, 2016. D. The Websites at the Disputed Domain Names (the "Websites")
At the time of filing of the Complaint, the disputed domain names , , , , , , , , and were resolved to English language websites offering for sale goods unrelated to the Complainant. These disputed domain names were previously resolved to English language websites offering for sale heavily discounted counterfeit STONE ISLAND clothing.
The disputed domain names , , , , , , , and have not been used.
All of the remaining disputed domain names are resolved to English language websites which offer for sale heavily discounted counterfeit STONE ISLAND clothing. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Marks, the Respondent has 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. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The language of the registration agreements for the disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and is English.
The language of the registration agreements for all of the other disputed domain names is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. However, paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding be English, on grounds including:
1. The language of the registration agreements for the above listed disputed domain names is English;
2. The disputed domain names are English language domain names; and
3. The Websites are all English language websites.
The Respondent, having received the Center's communication regarding the language of the proceeding in both Chinese and English, did not make any submissions regarding the language of the proceeding. Having received notice of the proceeding in both Chinese and English, the Respondent chose not to file a response.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all the relevant circumstances of the case, including matters such as the Parties' ability to understand and use the proposed language, time and costs.
The Panel considers there is sufficient evidence for the conclusion that the Respondent is proficient in English. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should the language of the proceeding be English.
In all the circumstances, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2 Consolidation of Respondents
Past UDRP decisions suggest that consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, if the domain names or corresponding websites are subject to common control, and the consolidation would be fair and equitable to all parties. Procedural efficiency is a further consideration. See section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
In the present proceeding:
1. The WhoIs information for the disputed domain names and in the name of the Respondent Qian Huang, indicates as Registrant Organization the Respondent Chen Wei;
2. The addresses for some of the registrations in the name of the Respondents Chen Wei and Qian Huang are the same;
3. The Respondents Gao Chao Tian and Chaotian gao appear to be the same person. It is common practice in China for persons to use both the traditional Chinese language naming convention of the surname coming first, and also the western naming convention of the surname coming last. Furthermore, the disputed domain names registered in the names of Gao Chao Tian and Chaotian gao share the same email address;
4. The disputed domain names and the Websites share common ISPs, servers and Registrars;
5. The content and layout of many of the Websites are the same or are otherwise strikingly similar;
6. The content of the disputed domain names is similar and there is a pattern of similar content between registrations which are nominally registered by different Respondents;
7. The WhoIs information for many of the disputed domain names shares the same or similar email addresses and addresses;
8. The disputed domain names were all registered within the months of July, August, September, October, November and December 2016. Many of the disputed domain names were registered on the same day; and
9. Some of the disputed domain names have been passively held.
The Respondent has taken no part in this proceeding and has made no submissions on the question of consolidation. In all the circumstances, the Panel concludes sufficient evidence has been adduced to enable the conclusion to be drawn that common control is being exercised over the disputed domain names. In all the circumstances, the Panel determines, under paragraph 10(e) of the Rules, that consolidation of the Respondents is procedurally efficient and equitable to all the Parties, is consistent with the Policy and Rules, and comports with prior relevant UDRP decisions in respect of this issue1.
6.3 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain names and comprise the Trade Mark in its entirety and are, excluding the generic Top-Level Domains ("gTLDs") (in accordance with previous UDRP decisions), identical to the Trade Mark.
All of the other disputed domain names contain the Trade Mark in its entirety, together with descriptive and/or generic words, or letters with no apparent meaning. The Panel finds the addition of such generic and/or descriptive words, or letters with no apparent meaning, does not serve to distinguish the disputed domain names from the Trade Mark in any significant way.
The Panel therefore finds that the disputed domain names are identical or confusingly similar to the Trade Mark. Accordingly, the first element under paragraph 4(a) of the Policy has been made out. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(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 trade mark 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 trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain names have been used in respect of the Websites, which offer for sale heavily discounted counterfeits of the Complainant's clothing products under and by reference to the Trade Mark, and some of which (more recently) offer for sale unrelated third party products. In addition, some of the disputed domain names have not been used.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant's prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and therefore finds that the requirements of paragraph 4(a)(ii) are met. C. Registered and Used in Bad Faith
In light of the manner of use of the disputed domain names, the Panel concludes that bad faith has been made out under paragraph 4(b)(iv) of the Policy.
In the case of the disputed domain names that have not been used, in all the circumstances (including the use by the Respondent of the Websites); and given the notoriety of the Complainant and of its Trade Mark (including in China, where the Respondent is based), and the lack of any explanation from the Respondent, the Panel has no hesitation in concluding the requisite element of bad faith has also been made out. The Panel considers it is inconceivable the Respondent was not aware of the Complainant's Trade Mark at the time of registration of the disputed domain names.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. 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 names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Date: July 24, 2017
1 The Panel refers to the Respondents in the singular throughout this Decision.
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