The Complainant is Skorpio Limited of Lugano, Switzerland, represented by Keltie LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Robert Pascal of Marblehead, Massachusetts, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2017. On May 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 9 and May 10, 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. The Complainant filed an amended Complaint on May 25, 2017.
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 of the Complaint, and the proceedings commenced on May 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2017.
The Center appointed Charles Gielen as the sole panelist in this matter on July 4, 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 owns European Union Trade Mark Registration No. 002493294 for RICK OWENS, registered on May 21, 2003 for goods in classes 3, 9, 14, 18 and 25, such as clothing, footwear, headgear. Furthermore the Complainant owns United States Trade Mark Registration No. 2857230 for RICK OWENS registered on June 29, 2004 for goods in classes 3, 9, 14, 18 and 25, such as clothing, footwear, headgear.
The disputed domain name was created on February 18, 2017. 5. Parties’ Contentions A. Complainant
The Complainant is a Swiss company that manages the intellectual property rights of American fashion designer Rick Owens. Rick Owens began his fashion designer career in Los Angeles, United States, in 1994 and moved his production to Italy, starting worldwide distribution, in 2001. In 2002, Rick Owens won the Council of Fashion Designers of America Perry Ellis Emerging Talent Award and, in 2007, he was awarded a Cooper-Hewitt National Design Award, as well as the “Rule Breakers” award, by the Fashion Group International. His clothing designs have been worn by many celebrities, including Courtney Love, Madonna, and Kobe Bryant. The Complainant has opened up stores in Paris, New York, London, Seoul, Tokyo, and Hong Kong, China.
The disputed domain name resolves to a website that reproduces on the top of each page a sign which is identical to the trademark of the Complainant consisting of a stylization of the name “Rick Owens”. On this website clothing and footwear items are offered for sale. These goods fall directly within the scope of the Complainant’s trademark registrations.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark RICK OWENS. The disputed domain name takes the whole of the mark RICK OWENS and the only added word (“shoes”) is descriptive of the goods for which the Complainant’s trademark is registered.
Furthermore the Complainant argues that the Respondent does not have any rights or legitimate interests in the disputed domain name which was registered long after the Complainant established rights in the trademark RICK OWENS. The Respondent does not own any registered rights in any trademarks which comprise part or all of the disputed domain name. The term “Rick Owens” is not descriptive in any way, nor does it have any generic meaning. The Complainant has not given its consent for the Respondent to use its registered trademarks in any way whatsoever. Furthermore, the Complainant contends that the Respondent is not commonly known as “Rick Owens” or “Rick Owens Shoes”.
Finally the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent must have been aware of the reputation of the Complainant’s business under the trademark RICK OWENS at the time the Respondent registered the disputed domain name, at which stage the Complainant already enjoyed international success. Referring to the website of the Respondent that uses a sign identical to the trademark of the Complainant in connection with the sale of goods identical to those for which the trademarks are registered, the Complainant contends that the disputed domain name is used in bad faith.
The Complainant ordered shoes offered on the Respondent’ s website and received a delivery from an unknown entity in China containing a pair of sneakers bearing the trademark NIKE and a T-shirt bearing the trademark EMPORIO ARMANI. The Complainant contends that this shows that the Respondent uses the disputed domain name to attract consumers for commercial gain, in respect of goods protected by the Complainant’s trademarks. According to the Complainant, in doing so the Respondent disrupts the Complainant’s business and deceives customers into believing that there may be a connection between the disputed domain name and the Complainant’s business. Customers might believe that they are purchasing genuine Rick Owens shoes originating from the Complainant when they are not. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel is of the opinion that the Complainant’s contentions are reasoned and that the disputed domain name should be transferred to the Complainant pursuant to the Policy. The Panel gives the following reasons for its decision. A. Identical or Confusingly Similar
The Complainant proves that it has rights in the trademark RICK OWENS. The term “rickowens” in the disputed domain name is identical to this trademark. The fact that the disputed domain name contains the term “shoes” does not alter the conclusion that the disputed domain name is confusingly similar to the trademark RICK OWENS. The reason is twofold. First of all, the term “shoes” is purely descriptive for the products offered for sale by the Complainant and secondly the term “rickowens” in the disputed domain name is the first word and therefore the dominant element. The added suffix “.com” does not change the finding that the disputed domain name is confusingly similar, since the “.com” is understood to be a technical requirement. In making the comparison between the trademark and the disputed domain name, the generic Top-Level Domain (“gTLD”) “.com” is disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name is confusingly similar to the trademark.
Therefore, the requirement under paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The first reason is that the Complainant’s trademark is not a term one would choose as a domain name without having specific reasons to choose such a term and this word certainly is not a descriptive term serving to indicate specific characteristics of any goods or services. Furthermore, the disputed domain name was registered long after the Complainant started to use the trademark RICK OWENS. The Panel is convinced that the term “rickowens” in the disputed domain name has no other meaning except to refer to the Complainant and its business. In view of the reputation of the trademark RICK OWENS, the Respondent must have been aware of the prior existence of this trademark. Finally, the Respondent has not come forward claiming any rights or legitimate interests and the Panel does not find so in the present record.
In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
The Panel is of the opinion that the disputed domain name was registered and is being used in bad faith. The bad faith of the Respondent follows from the fact that the Respondent’s website offers the same type of goods as offered by the Complainant under its trademark. By using a domain name that incorporates the trademark RICK OWENS which is a reputed trademark for shoes, the Respondent suggests that it belongs or is connected to the company that has rights in the trademark RICK OWENS which in fact is not the case. The trademark RICK OWENS was already known for shoes before the disputed domain name was registered. Under paragraph 4(b)(iii) of the Policy registration and use of the disputed domain name for the purpose of disrupting the business of a competitor is a clear indication of bad faith. The Panel is of the opinion that this applies in this case, since consumers looking for shoes and visiting the website of the Respondent will be misled and confused by thinking that the Respondent’s website in fact belongs to or is affiliated with the Complainant. Also, the Panel is of the opinion that the registration and use of the disputed domain name should be considered as bad faith registration and use under paragraph 4(b)(iv) of the Policy since the Respondent, by using the disputed domain name that is confusingly similar to the reputed trademark of the Complainant for identical goods tries to intentionally attract customers by creating a likelihood of confusion with the trademark of the Complainant.
The Panel therefore considers the requirement of paragraph 4(a)(iii) to be met. 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.
Charles Gielen
Sole Panelist
Date: July 14, 2017
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