The Complainant is AARON Sarl of Signes, France, represented by Birketts LLP, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is Song Qiuxiang of Luohe, Henan, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domian Name”) is 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 July 12, 2017. On July 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 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.
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 of the Complaint, and the proceedings commenced on July 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2017.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 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 American Vintage brand was created in the year 2005 in France. The Complainant sells clothing and accessories for men and women with 50 own-brand stores around the world, and around 1,500 stockists, almost 100 of which are located in the United Kingdom including well established department stores such as Harvey Nichols.
The Complainant is the owner of several trademarks incorporating the term “American Vintage” including several European Union trademark registrations dating from the years 2009 and 2010.
At the time of filing of the Complaint, the Disputed Domain Name is being used for a website designed to look like a Complainant online store without authorization of the Complainant.
The disputed domain name was registered on September 4, 2016. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Disputed Domain Name is identical or confusingly similar to trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Name, the Complainant must prove each of the following, namely that:
(i) The Disputed Domain Name is 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 Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
In assessing identity or confusing similarity for the purposes of paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) suffix. Absent the gTLD suffix, the Disputed Domain Name comprises the Complainant’s trademark with the addition of the term “UK”.
The Disputed Domain Name is confusingly similar to the Complainant’s mark AMERICAN VINTAGE. The addition of the geographical term “UK” and the gTLDsuffix “.com” does not change this finding. These elements are insufficient to distinguish the Disputed Domain Name from the Complainant’s trademark.
The Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), rights or legitimate interests in a domain name may be demonstrated by showing that:
(i) before any notice of this dispute, the Respondent used, or demonstrably prepared 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;
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if no trademark or service mark rights have been acquired; 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 customers or to tarnish the trademark at issue.
The Complainant contends that the Respondent has no rights in the AMERICAN VINTAGE trademarks, is not commonly known by the Disputed Domain Name, and is not making a legitimate commercial use or a noncommercial or fair use of the Disputed Domain Name.
The Complainant has alleged, and the Respondent has not denied, that the Respondent is not commonly known by the Disputed Domain Name.
In addition, the Complainant has supported its contention that the Respondent is using the Disputed Domain Name with an intent to trade off the Complainant’s goodwill. Specifically, the Complainant has stated that the Respondent is using the Complainant’s trademark in the Disputed Domain Name and offering for sale look-alike clothing to that of the Complainant, being allegedly counterfeited goods as shown in Annex 6 of the Complaint.
In this case, the Panel sees no plausible legitimate explanation for the Respondent’s adoption and use of the term “American Vintage” in the Disputed Domain Name and, accordingly, concludes that the Disputed Domain Name was selected and used by the Respondent to take advantage of the notoriety associated with the “American Vintage” name, with the intent to attract Internet users for commercial gain.
For all of the foregoing reasons, this Panel finds that the Complainant has proven that the Respondent lacks rights to, or legitimate interests in, the Disputed Domain Name. Therefore, the Panel finds that the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Following from the above findings, the Panel also concludes that the registration and use of the Disputed Domain Name have been in bad faith.
The Respondent was clearly familiar with the Complainant’s trademarks and products. Its intention in registering the Disputed Domain Name comprising a copy of the Complainant’s registered mark AMERICAN VINTAGE in combination with the geographic term “UK” was clearly to capitalize on the reputation and popularity of the Complainant’s products and brand name and to attract customers by misleading them.
The Panel also notes that the Disputed Domain Name contains a website designed to look like a Complainant’s online store, where its trademark appears prominently (including an identical design of the Complainant´s stylized design of AMERICAN VINTAGE trademark) together with allegedly counterfeited Complainant’s products.
The Panel finds that the Respondent has, by using the Disputed Domain Name, “intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] web site or location or of a product or service on [its] web site or location” (paragraph 4(b)(iv) of the Policy).
In addition, the Panel notes as further evidence of bad faith that there have been five (5) other domain name disputes filed against the same Respondent where panelists ordered the transfer of the disputed domain names (see Filippa K Aktiebolag v. Song Qiuxiang,WIPO Case No. D2017-0578; Calzados Hergar, S.A. v. Song Qiuxiang,WIPO Case No. D2017-0245; Björn Borg Brands AB v. Song Qiuxiang,WIPO Case No. D2017-0236; SKECHERS U.S.A., INC. II c. Song Qiuxiang,WIPO Case No. DES2017-0002 and Calzados Hergar, S.A. c. Song Qiuxiang, WIPO caseo No. DES2016-0044). The Panel notes that, as in this case, all mentioned cases involved clothing companies.
The third element of paragraph 4(a) of the Policy has therefore been 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 Name, be transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Date: August 24, 2017
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