The Complainant is Wolford Aktiengesellschaft of Bregenz, Austria, represented by Bardehle Pagenberg, Germany.
The Respondent is Chenxiaomei, Chen Xiao Mei of Guangzhou, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on July 25, 2017. On July 25, 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 27, 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 July 28, 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 August 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 25, 2017.
The Center appointed Jonathan Agmon as the sole panelist in this matter on August 31, 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, Wolford Aktiengesellschaft of Bregenz, Austria, is a well-known top price segment textiles manufacturer.
The Complainant was founded in 1950. Today, the Complainant main focus is tights, bodysuits and underwear as well as woman's clothing and accessories.
The Complainant is the owner of numerous trademark registrations for the WOLFORD trademark around the world. For example: European Union trademark registration No. 008890221, with the registration date of August 2, 2010; European Union trademark registration No. 005762067, with the registration date of February 19, 2008; International trademark registration No. 213776, with the registration date of October 16, 1958 and more.
The Complainant has also developed a formidable presence on the Internet and is the owner of several domain names consisting of the trademark WOLFORD. For example: and .
The disputed domain name was registered on April 1, 2017.
Currently, the disputed domain name directs users to a website offering for sale the Complainant's counterfeit products. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the Complainant's trademark, as it fully incorporates the Complainant's marks and tradename and combines it with a generic term "shop".
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that it did not find that the Respondent has any registered trademark or tradename or even personal name corresponding to the designation "Wolford" or the disputed domain name.
The Complainant further argues that the mere registration of a domain name does not give the owner rights or legitimate interests in respect of the disputed domain name, especially where counterfeits of the Complainant's original products are offered for sale.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith.
The Complainant argues that there can be no reasonable doubt that the Respondent, when registering the disputed domain name and offering counterfeits, was aware of the Complainant's rights.
The Complainant further argues that it is unaware whether the Respondent is actually selling/delivering any products, but can determine the products offered on the website under the disputed domain name are counterfeit.
The Complainant further argues that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark.
The Complainant further notes that it has successfully challenged the domain names and under URS proceedings.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A.1. Procedural Issue – Language of the Proceedings
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 language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of proceedings be English.
The Panel cites the following with approval:
"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case." (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
In deciding the language of the proceeding, the Panel takes the following into consideration:
a) The Complainant's trademarks and the disputed domain name are composed of words which are only recognized in the English language;
b) The disputed domain name used to resolve to a website which displayed content in the English language and no content in Chinese;
c) The Respondent did not object to the Complainant's request that English be the language of the proceeding.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding be English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant is the owner of numerous trademark registrations for the WOLFORD trademark around the world. For example: European Union trademark registration No. 008890221, with the registration date of August 2, 2010; European Union trademark registration No. 005762067, with the registration date of February 19, 2008; International trademark registration No. 213776, with the registration date of October 16, 1958 and more.
The disputed domain name integrates the Complainant's WOLFORD trademark in its entirety, as a dominant element.
The disputed domain name differs from the registered WOLFORD trademark by the additional letter "e" and the term "shop" and the generic Top-Level Domain ("gTLD") ".com".
The additional letter "e" and term "shop" does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's trademark, as it is a purely descriptive term for an online store – eshop. Previous UDRP panels have ruled that the mere addition of a descriptive element does not sufficiently differentiate the domain name from the registered trademark: "The only difference between the Disputed Domain Name and the trademark JACK WOLFSKIN is the addition of a suffix 'jackets'. This is directly descriptive of the goods of the Complainant. In line with established practice of past UDRP panels, the Panel accepts the Complainant's submission that the additional word "jackets" does not assist to distinguish the Disputed Domain Name from the Complainant's trademark JACK WOLFSKIN" (Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Huang Yan Jin, WIPO Case No. D2012-0128, Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. lin feifang,WIPO Case No. D2012-1042).
The addition of the gTLD ".com" to the disputed domain name does not avoid confusing similarity (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The gTLD ".com" iswithout legal significance in the present case since the use of a TLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Section 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its WOLFORD trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the WOLFORD trademark at least since the year 1958. It is suggestive of the Respondent's bad faith in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Furthermore, the disputed domain name includes the Complainant's trademark in its entirety with the term "eshop". Previous UDRP panels ruled that "a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (See E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Respondent has been using the disputed domain name to promote the sale of goods bearing the Complainant's mark, while using the Complainant's name and logo mark on the website under the disputed domain name. Using the disputed domain name to promote similar or identical goods to the goods being offered by the Complainant is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant's trademark, and indicates that the Respondent's primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent's actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that "the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith". The Panel also finds that the Respondent's attempt to attract, for commercial gain, Internet users to its website with the intent to creating a likelihood of confusion with the Complainant's trademarks and its affiliation with the Respondent's website falls under paragraph 4(b) of the Policy.
Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant's marks, the confusing similarity between the disputed domain name and the Complainant's mark and the Respondent's use of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 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.
Jonathan Agmon
Sole Panelist
Date: September 14, 2017
Full & Egal Universal Law Academy