The Complainant is L-Fashion Group Oy of Lahti, Finland, represented by Eversheds Attorneys Ltd., Finland.
The Respondent is Hao Meng Yuan of Foshan, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with B, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2017. On May 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 18, 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 May 19, 2017, the 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 19, 2017. 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on May 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2017.
The Center appointed Kar Liang Soh as the sole panelist in this matter on June 27, 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 is L-Fashion Group Oy, a company incorporated in Finland which manufactures sportswear. The Complainant’s brands, including Rukka, are sold around the world, exporting to countries such as Germany, Russia Federation, Sweden, the Netherlands and France.
The Complainant owns many trademark registrations in relation to the word “rukka” in combination with other elements (“the RUKKA Trademarks”), which includes the following:
Jurisdiction
Trademark No
Registration Date
Finland
235071
December 30, 2005
European Union
001506542
August 29, 2002
European Union
010284461
February 1, 2012
European Union
014843271
April 26, 2016
International
1140540
November 21, 2012
International
1319042
May 10, 2016
International
589634
April 22, 1992
International
835271
October 18, 2004
Some of the above (including among others the European Union trademark No. 001506542 and the International trademark No.835271) are in relation to the following logo incorporating the word “rukka” and the design element (“the RUKKA Logo”):
In particular, the international registration for trademark no. 835271 which designated China was granted on September 30, 2010.
The Disputed Domain Name was registered on March 16, 2017. The Disputed Domain Name resolves to a website (“the Respondent’s Website”) that includes several sections in English and features the RUKKA Trademarks prominently on its header and banner. The Respondent’s Website allegedly offers the Complainant’s branded products, including under the “Rukka” and “Sinisalo” brands, for sale, complemented by online shopping cart facilities.
The Respondent appears to be an individual based in Guangzhou, China. Apart from the WhoIs database information and the registrar verification on the Disputed Domain Name, little is known about the Respondent. Attempts to deliver the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent via facsimile and courier have failed. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
a) The Disputed Domain Name is identical or confusingly similar to the Complainant’s registered auxiliary business name and the RUKKA Trademarks in which the Complainant has rights. The RUKKA logo has become established and well-known globally as the trademark of the Complainant. The Disputed Domain Name consists of the distinctive verbal element “rukka” of the Complainant’s trademarks and auxiliary business name, and non-distinctive, common Swedish or Danish word “forhandler”, which can be understood as meaning either to negotiate, bargain or compromise or for sale, for shopping or trader. The sole distinctive element of the Disputed Domain Name is “rukka” which is identical or at least confusingly similar to the RUKKA Trademarks. The RUKKA Trademarks were incorporated in its entirety into the Disputed Domain Name and should be deemed to be confusingly similar. Use to which the content of the Respondent’s website may increase the likelihood of confusion as it is dominated by the use of the Complainant’s RUKKA Trademarks and the product titles begin with “Rukka”;
(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The RUKKA Trademarks were not licensed, authorized or permitted by the Complainant for use or for registration as part of a domain name. The Respondent is not commonly known by the name “Rukka” nor undertakes business identified with such name. The Respondent also does not have any trademark or service mark registration which would entitle it to use the RUKKA Logo. The use of the Disputed Domain Name cannot be considered as bona fide offering goods and services as it uses the Complainant’s RUKKA Trademarks in the Respondent’s Website in a misleading manner and it appears to sell counterfeit Rukka and Sinisalo goods; and
(c) The Disputed Domain Name was registered and is being used in bad faith. The RUKKA Trademarks are well-known and the Respondent knew of both the well-known marks and the registered auxiliary business name of the Complainant. The Respondent was aware of the Complainant’s rights and business at the time of registering the Disputed Domain Name given the date of registration of the Disputed Domain Name and the use to offer counterfeit goods. Accordingly, the Respondent intentionally for commercial gain attempted to attract Internet users to the Respondent’s Website by creating a likelihood of confusion with the RUKKA Trademarks as to the source, sponsorship, affiliation and endorsement of the said website and the products offered for sale. Further, the Respondent’s unauthorized use of the RUKKA Trademarks and pictures of goods sold strengthens the likelihood of confusion. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of Proceedings
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.
The Registrar has affirmed that the language of the Registration Agreement for the Disputed Domain Name is Chinese. However, the Complainant filed its Complaint in English and has requested that English be the language of the proceedings. Having considered the circumstances below, the Panel grants the Complainant’s request:
a) No response was received from the Respondent to having the Complaint filed in English;
b) The Complainant is based in Finland where Chinese is not a common language;
c) The Respondent’s Website includes several sections in English and it thus demonstrates a working knowledge of the English language by the Respondent;
d) The Complaint has already been filed in English, to which the Respondent did not respond. Requiring that the Complaint be translated into Chinese would place an unnecessary burden on the Complainant;
e) The Respondent could not be contacted with the facsimile and postal details provided in the WhoIs database of the Disputed Domain Name and did not respond to email notifications sent to the email address provided in the WhoIs database. No other means of contacting the Respondent was available;
f) Requiring a Chinese translation of the Complaint will lead to unnecessary delay in the proceedings; and
g) No apparent benefit may foreseeably be achieved by requiring the Complaint to be filed in Chinese. 6.2 Substantive Matters
In order to succeed in this proceeding, the following elements of paragraph 4(a) of the Policy must be established:
a) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
c) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the trademark registrations in the evidence tendered, it is established that the Complainant owns rights in the RUKKA Trademarks, in particular, the RUKKA Logo. The word element “rukka” of the RUKKA Trademarks is incorporated entirely and readily recognizable within the Disputed Domain Name. The only differences between the RUKKA Trademarks and the Disputed Domain Name are (1) the design of flags in the RUKKA Trademarks under the word “rukka” and (2) the addition of the suffix “forhandler” in the Disputed Domain Name.
The Panel notes, firstly, that the word element “rukka” is a dominant element of the RUKKA Trademarks. The Disputed Domain Name incorporates this dominant word element entirely. Secondly, the suffix “forhandler” in the Disputed Domain Name is an obvious textual variant of the descriptive Swedish/Danish word “förhandler” which could mean “for sale, for shopping” or “trader”. When used in conjunction with the word “rukka”, it is suggestive of the sale of Rukka products.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides guidance that where at least a dominant feature of a relevant mark is recognizable in a domain name, the domain name will normally be considered confusingly similar. Section 1.8 of WIPO Overview 3.0 goes further to explain that the addition of other terms (whether descriptive) would not remove the confusing similarity where the relevant trademark is recognizable within the domain name. It is the Panel’s view that the dominant word “rukka” in the RUKKA Trademarks is readily recognizable in the Disputed Domain Name and its prominence is not overtaken by the design element in the RUKKA Trademarks.
Accordingly, the Panel holds that the Disputed Domain Name is confusingly similar to the RUKKA Trademarks. The first element of paragraph 4(a) of the Policy is established. B. Rights or Legitimate Interests
The Complainant bears the burden of establishing prima facie that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Once such prima facie case is made out, the burden of production shifts to the Respondent to show otherwise. The Complainant maintained that the Respondent was never authorized, licensed or permitted to use the RUKKA Trademarks, its registered RUKKA auxiliary business name or to register a domain name incorporating the word “rukka” and there is no evidence to contradict this position. There is also no evidence before the Panel to suggest that the Respondent is commonly known by the Disputed Domain Name. The prominent use of the RUKKA Trademarks, in particular, the RUKKA Logo, on the Respondent’s Website does not escape the Panel’s attention. The Respondent’s Website is clearly intended of a commercial nature as it contains online shopping cart facilities, a currency converter and a section on “Shipping and Returns”. It cannot be imagined that any noncommercial use could be envisaged.
Accordingly, the Panel finds that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. In the absence of a response by the Respondent, the prima facie case stands and the Panel holds that the second element of paragraph 4(a) of the Policy is also established. C. Registered and Used in Bad Faith
Given the prior registration of the RUKKA Trademarks including registration no. 835271 designating China and the manner in which the RUKKA Trademarks are prominently displayed on the Respondent’s Website, the Respondent must have been well aware of the RUKKA Trademarks at the time of registering the Disputed Domain Name. The Respondent’s selection of the Disputed Domain Name so associated with the RUKKA Trademarks is unlikely to be coincidence. The commercial nature and the intention for commercial gain are patent on the face of the Respondent’s Website. The Respondent clearly intended to use the Disputed Domain Name to attract Internet users to the Respondent’s Website by creating a likelihood of confusion with the RUKKA Trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website or of the products (the alleged counterfeit products offered on sale) offered.
The facts of the present case is on all fours with the situation of registered and used in bad faith as set out in paragraph 4(b)(iv) of the Policy, which states:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
Further, the Respondent had provided contact details which are invalid and false. It is most unusual for a legitimate commercial enterprise to maintain details which does not allow the world at large, and potential business opportunities, to easily establish contact. The circumstances strongly suggest that the Respondent does not wish to be contacted and has intentionally hidden its identity. Section 3.2.1 of the WIPO Overview 3.0 envisages such a situation as indicative of bad faith registration and use especially when the respondent concerned fails to submit a response.
In the light of the above, the Panel holds that the third element of paragraph 4(a) of the Policy is also established. 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.
Kar Liang Soh
Sole Panelist
Date: July 20, 2017
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