The Complainant is Twin Set - Simona Barbieri S.P.A. of Carpi, Italy, represented by Jaumann sas di Paolo Jaumann & C, Italy.
The Respondent is nashan of Shenyang, Liaoning, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2017. On June 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 13, 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 June 13, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on June 16, 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 June 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2017.
The Center appointed Douglas Clark as the sole panelist in this matter on July 14, 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 was founded in Italy in 1987 as a fashion accessories business. As of today, Twin Set collections include a complete range of women’s fashion product.
The Complainant is the registered owner of the International trademark TWIN-SET No. 1284077 in classes 18 and 25 namely for various items for leather goods and clothing. The trademark designates numerous countries, including China.
The Respondent registered the disputed domain names and on April 14, 2017 and April 20, 2017 respectively.
The Respondent is not using the disputed domain names which do not resolve to any active website. The Respondent has been registering many domain names of well-known brands, including , , , and . 5. Parties’ Contentions A. Complainant
Identical or confusingly similar
The Complainant argues that the disputed domain names and are made up of the registered trademark TWIN-SET combined with the generic Top-Level Domains (“gTLD”)“.group” and “.club” and are, therefore, confusingly similar to the Complainant’s registered trademark TWIN-SET.
No Rights or Legitimate interests
The Complainant relies on three grounds to argue the Respondent has no rights or legitimate interests. These are:
(a) The Respondent has no connection with the Complainant and has never sought or obtained any trademark registration for TWIN-SET.
(b) The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.
(c) The Respondent has not been authorized or licensed by the Complainant to register or use the disputed domain names or to use the trademark.
Registered and used in bad faith
The Complainant argues, that there is no doubt that before registration of the disputed domain names, the Respondent knew of the Complainant’s rights in TWIN-SET and could also have by a simple Internet search confirmed this. Further, the Respondent has registered a number of other famous brands as domain names, showing that it is engaged in a pattern of abusive registrations. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceedings
The language of the Registration Agreement is in Chinese. 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 Complainant requested the language of the proceeding be English on the grounds that the disputed domain names are both in Latin script rather than Chinese script and that the disputed domain names are both made of English words TWINSET and of an English gTLD, “.group” and “.club”, evidencing the Respondent’s level of comfort with the English language.
The Respondent has not responded to the proceeding nor to the request that the language of the proceeding to be in English.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
This Panel decided in Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
Further, as set out below, the Panel considers the merits of the case to be in favour of the Complainant. Translating the Complaint would cause unnecessary delay in this matter.
These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English. 6.2 Substantive Matters
The burden for the Complainant under paragraph 4(a) of the Policy is to prove that:
(i) The disputed domain names are 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 names; and
(iii) The disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The disputed domain names and are made up of the registered trademark TWIN-SET combined with gTLD “.group” and “.club”. The Panel finds that the disputed domain names are confusingly similar to the trademark TWIN-SET.
The first part of the paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests.
Section 2.1 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. None of the circumstances in paragraph 4(c) of the Policy are present in this case.
The second part of the paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
This case clearly falls within paragraph 4(b)(ii) of the Policy which provides that it is bad faith to register a domain name so as to prevent a trademark holder from reflecting its mark in a corresponding domain name. The Respondent has registered many other well-known brands as domain names and is clearly engaged in a pattern of doing so.
The fact the disputed domain names resolves to a page with no content related to the Complainant does not preclude a finding that they have been used in bad faith. It is well established that passive holding or non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0 section 3.3). It is highly unlikely that the disputed domain names are intended to be used other than to divert customers of the Complainant.
The third part of the paragraph 4(a) of the Policy is therefore satisfied. 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.
Douglas Clark
Sole Panelist
Date: July 31, 2017
Full & Egal Universal Law Academy