The Complainant is Skorpio Limited of Lugano, Switzerland, represented by Keltie LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Chen Haichao, Guangzhou Zhuo Mai Clothing Co., Ltd of Guangzhou, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is 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 July 20, 2017. On July 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 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 July 26, 2017, the Respondent sent an email communication to the Center regarding this proceeding. On July 27 2017, in response to a request by the Center, the Complainant filed an amended Complaint in English.
The Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding on July 26, 2017. The following day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date but later, on August 22, 2017, requested that the Center communicate with it in Chinese.
The Center verified that 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 proceedings commenced on August 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2017. On August 5, 2017, the Respondent sent two emails to the Center regarding the transfer of the disputed domain name. The Center then transmitted an email in English and Chinese to the Parties on August 21, 2017 regarding the possibility of suspension of the proceeding in order to reach a settlement. The Respondent sent further email communications regarding the transfer of the disputed domain name on August 22, August 30, September 1 and September 2, 2017. The Complainant did not request suspension of the proceeding and, accordingly, the Center proceeded to appoint the panel.
The Center appointed Matthew Kennedy as the sole panelist in this matter on September 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 is a Swiss company that manages the intellectual property rights of American fashion designer Rick Owens. Mr. Owens began his fashion design career in 1994 and started worldwide distribution in 2001. The Complainant owns multiple registrations for the trademark RICK OWENS in a particular script, including European Union trademark registration number 002493294, registered from May 21, 2003; United States trademark registration number 2857230, registered from June 29, 2004; and Chinese trademark registration number 6162781, registered from August 7, 2014. These registrations all specify clothing in class 25, among other goods, and all remain in effect.
The Respondent is an individual and a clothing company located in China. According to a reverse WhoIs report, the Respondent's company has registered multiple domain names that consist of a fashion brand and a Top-Level Domain ("TLD") suffix, including , , , , , , and .
The disputed domain name was registered on June 21, 2017 and does not resolve to any active website; rather, it is passively held. 5. Parties' Contentions A. Complainant
The disputed domain name is identical to the Complainant's RICK OWENS trademark. The disputed domain name takes the whole of that mark and only adds a generic TLD suffix that has no particular distinctive meaning of its own.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. So far as the Complainant is aware, the Respondent does not own any registered trademarks that comprise part or all of the disputed domain name. The term "rick owens" is not descriptive and has no dictionary meaning. The Complainant has not given its consent for the Respondent to use its registered trademarks in a domain name registration. To the best of the Complainant's knowledge, the Respondent is not commonly known as "Rick Owens". The Respondent's business name (Guangzhou Zhuo Mai Clothing Co., Ltd) indicates that the Respondent operates in the fashion industry. According to a Chinese online clothing marketplace, Guangzhou Zhuo Mai Clothing Co., Ltd is an established clothing business. Given the fame of the Complainant's mark in the same industry as that in which the Respondent operates, it is likely that the Respondent was aware of the Complainant's rights prior to registering the disputed domain name and inevitable that visitors to the website to which it resolves would mistakenly believe there to be an association with the Complainant.
The disputed domain name was registered and is being used in bad faith. Given that the Complainant's registered rights date back to 2003 and that it had enjoyed international success, the Respondent – who itself appears to be an established clothing manufacturer – must have been aware of the reputation of the Complainant's business under the RICK OWENS trademark at the time that he registered the disputed domain name. Registration of the disputed domain name by a business in the same industry as that in which the Complainant enjoys a significant reputation can only be used for deception. Passive holding of the disputed domain name is being used as a blocking registration to prevent the Complainant from using the disputed domain name for legitimate commercial purposes. The Respondent's business has registered several other domain names that are virtually identical to third party trademarks with the TLD suffix ".vip" which constitutes a pattern of bad faith conduct. B. Respondent
The Respondent confirms that it registered the disputed domain name and states that the Registrar verified its name. It argues that the disputed domain name was available to everyone to register and wonders why there is a dispute when there are so many different TLD suffixes. Given that domain names are available to everyone to register in the English alphabet, some will inevitably be the same. During this proceeding, the Respondent sent two emails to the Center offering to transfer the disputed domain name for free but later it asked why it would transfer the disputed domain name free of charge when the disputed domain name was its own idea and it had paid for the registration. Subsequently, it asked how to transfer the disputed domain name to the Complainant and expressly confirmed that it would transfer the disputed domain name for free to an account with the Registrar. 6. Discussion and Findings 6.1 Language of the Proceeding
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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that English be the language of the proceeding. Its main arguments are that the disputed domain name is in Latin characters and that translation of the Complaint into Chinese would create unreasonable cost and prevent the administrative proceeding from taking place with due expedition.
The Respondent did not comment on the Complainant's language request by the specified due date. Later, it advised that it was not very familiar with the English language and hoped that the Center would correspond with him in Chinese.
Paragraph 10(b) and (c) of the Rules require the panel to ensure that the parties are treated with equality, that each party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English, the email communications from the Respondent were sent in Chinese, and the Center has corresponded with the Parties in both English and Chinese. The Respondent has evidently understood the Complaint because it has addressed all three substantive elements that the Complaint raises. Moreover, the Respondent has repeatedly offered to transfer the disputed domain name and not expressed any wish to respond to the Complaint further. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay. On the other hand, accepting the communications filed in Chinese would create no unfairness to the Complainant.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that the Panel will accept all communications filed in Chinese without translation. 6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements:
(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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in registered trademarks consisting of the name RICK OWENS in a particular script. The script in which the trademarks are registered can be disregarded in the comparison with the disputed domain name because a particular script cannot be registered in a domain name for technical reasons. See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031.
The disputed domain name incorporates the Complainant's RICK OWENS trademark, but for the space between the words, as its dominant and only distinctive element. The omission of a space can be disregarded in assessing confusing similarity because spaces do not appear in domain names for technical reasons.
The only additional element in the disputed domain name is the TLD suffix ".vip". A TLD suffix is generally disregarded in assessing the confusing similarity of a domain name to a trademark because it is a technical requirement of registration. See Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080.
The Respondent argues that some domain names will inevitably be the same. This is not a denial that the disputed domain name is identical or confusingly similar to the RICK OWENS trademark; if anything, it is an implied acknowledgement that they are the same.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
"(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 trademark 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 trademark or service mark at issue."
The disputed domain name does not resolve to an active website, nor is there any evidence on the record of any preparations to use it in connection with an active website. Accordingly, the Panel does not find that the Respondent's use falls within the first or third circumstances of paragraph 4(c) of the Policy.
The Respondent's name, as shown in the Registrar's WhoIs database, can be transliterated and translated as "Chen Haichao" of "Guangzhou Zhuo Mai Clothing Co., Ltd". There is no evidence that the Respondent has been commonly known as "Rick Owens". Accordingly, the Panel does not find that the Respondent's use falls within the second circumstance of paragraph 4(c) of the Policy.
In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent submits that it has registered the disputed domain name with the Registrar and paid for the registration. However, the Panel does not consider that mere registration of a domain name confers rights or legitimate interests for the purposes of the Policy. Rather, by applying to register the disputed domain name, the Respondent represented that to his knowledge, the registration of the disputed domain name would not infringe upon or otherwise violate the rights of any third party. See paragraph 2 of the Policy as incorporated in the Registration Agreement for the disputed domain name. Accordingly, the Panel finds that the Respondent has failed to rebut the Complainant's prima facie case.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.
With respect to registration, the disputed domain name was registered in 2017, years after the Complainant registered its RICK OWENS trademark, including in China, where the Respondent is located. The disputed domain name incorporates the Complainant's trademark with no additional element besides a TLD suffix, which is a technical requirement of registration. The Complainant's trademark has no dictionary meaning. The Respondent conducts a clothing business and the Complainant has long made use of its trademark in the fashion industry. The Respondent has registered multiple fashion brands as domain names. The Respondent argues that the disputed domain name was his idea and that some domain names will inevitably be the same. However, in the circumstances, the Panel does not consider the confusing similarity between the disputed domain name and the Complainant's trademark to be coincidental. Therefore, the Panel finds that the Respondent deliberately chose to register the disputed domain name incorporating the Complainant's trademark in bad faith.
With respect to use, the Respondent makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the present dispute, the Complainant has developed a reputation in its RICK OWENS trademark in the fashion industry through use in connection with clothing, including in China, where the Respondent is located. The disputed domain name incorporates the Complainant's RICK OWENS trademark with no additional element besides a TLD suffix. The Respondent conducts a clothing business and the Complainant has long made use of its trademark in the fashion industry. The Respondent has registered multiple fashion brands as domain names, like the disputed domain name. The Respondent does not provide any explanation of its intended use of the disputed domain name. Therefore, the Panel finds that the Respondent is using the Complainant's trademark 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 name be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: September 9, 2017
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