Complainant is Sergio Rossi S.p.A. of San Mauro Pascoli, Italy, represented by Studio Legale Withers, Italy.
Respondent is Li Wei Wei of Weinan, Shaanxi, China; Chenxiaomei of Guangzhou, Guangdong, China; Da Wei Xie, dawei of Guangzhou, Guangdong, China. 2. The Domain Names and Registrars
The disputed domain name is registered with Xin Net Technology Corp., the disputed domain names , , and are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the "Registrars"). 3. Procedural History
The Complaint was in English filed with the WIPO Arbitration and Mediation Center (the "Center") on August 10, 2017. On August 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 11, 2017, the Registrars transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On August 18, 2017, the Center transmitted an email in English and Chinese regarding the language of the proceeding. Complainant requested that English be the language of the proceeding on August 19, 2017. 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on August 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 15, 2017.
The Center appointed Yijun Tian as the sole panelist in this matter on September 21, 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 A. Complainant
Complainant, Sergio Rossi S.p.A, is a company incorporated in San Mauro Pascoli, Italy that manufactures shoes. Complainant has exclusive rights in the internationally known Sergio Rossi marks. Complainant is the exclusive owner of numerous Sergio Rossi trademarks worldwide, including the European Union ("EU") trademark registered on March 20, 2000 (the EU Trademark registration number 000391656) (Annex 3 to the Complaint). Complainant also owns and operates domain names, which contain SERGIO ROSSI mark in its entirety, such as (Annex 4 to the Complaint). B. Respondents
Respondents are Chenxiaomei, apparently a Chinese individual residing in Guangzhou, Guangdong, China; Li Wei Wei, apparently a Chinese individual residing in Weinan, Shaanxi, China; and Da Wei Xie, dawei, apparently a Chinese individual residing in Guangzhou, Guangdong, China. The disputed domain name was registered by Chenxiaomei with Xin Net Technology Corp on April 19, 2017. The disputed domain names and were registered by Li Wei Wei with Alibaba Cloud Computing Ltd. d/b/a HiChina on July 11, 2017 and May 4, 2017 respectively. The disputed domain names and were registered by Da Wei Xie, dawei with Alibaba Cloud Computing Ltd. d/b/a HiChina on April 12, 2017 and April 26, 2017 respectively. All disputed domain names resolved to websites selling products under Complainant's trademark and indicate that the website is the official website of Complainant. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain names , , , and are identical or confusingly similar to Complainant's SERGIO ROSSI trademarks. The disputed domain name includes SERGIO ROSSI mark in its entirety. The addition of the generic term/letter "outlet", "i" and/or "e" to the disputed domain names as well as the generic Top-Level Domain ("gTLD") ".com", "top" or ".store" are not sufficient to eliminate the confusion of similarity.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Complainant contends that the disputed domain names were registered and are being used in bad faith.
Complainant requests that the disputed domain names be transferred to it. B. Respondent
Respondent did not formally reply to Complainant's contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
a) For the most part the disputed domain names where were registered with a Registrar whose registration agreement is made available in English as well;
b) The disputed domain names that include terms other than the trademark of Complainant they are in English language ("outlet"); and
c) The contents of the corresponding websites were in English.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be 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). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") further states:
"Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.
Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant's mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement." (WIPO Overview 3.0, section 4.5.1; see also L'Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company from Italy, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain names include Latin characters ("Sergio", "Rossi", "i", "e") and English terms ("outlet") and are registered in the gTLD space comprising of the Latin characters ".com" and English words "store", "top" (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).
On the record, Respondents appear to be individuals residing in China and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain names are all registered in Latin characters ("Sergio", "Rossi", "i", "e") and English terms ("outlet") respectively, rather than Chinese script; (b) the gTLD of the disputed domain names ".com" is in Latin characters, and ".store", and ".top" are English words; (c) the disputed domain names all resolve to websites which have site contents in English language; (d) the Center has notified Respondent of the proceeding in both Chinese and English; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Substantial Issues
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) The disputed domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
On the basis of the evidence introduced by Complainant and in particular with regards to the content of the relevant provisions of the Policy, (paragraphs 4(a) - (c)), the Panel concludes as follows: A. Preliminary Issue - Consolidation of Respondents
The Panel notes that the present Complaint has been filed against multiple Respondents and Complainant has submitted a request for consolidation. On this subject, paragraph 4.11 of the WIPO Overview 3.0 provides inter alia as follows:
"The WIPO Center may accept, on a preliminary basis, a consolidated complaint where the criteria described below are prima facie met. Any final determination on consolidation would be made by the appointed panel, which may apply its discretion in certain circumstances to order the separation of a filed complaint".
In relation to "Complaint consolidated against multiple respondents", para 4.11.2 of the WIPO Overview 3.0 further provides:
"Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants' identity(ies) including pseudonyms, (ii) the registrants' contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., or ), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s)."
The Panel is satisfied that Complainant has rights in the SERGIO ROSSI mark as set out in the Factual Background section above. The Panel notes that Complainant asserts that, "despite the different ownership recorded on the registries for some of them, all domain names are connected to each other", and "Identities and similarities…have already been considered sufficient to establish a connection among domain names technically owned by different registrants for the purposes of proposing a sole complaint". Respondent has not filed a Response and thus remains silent on this issue.
The Panel finds that Complainant has provided sufficient evidences to establish that the disputed domain names or corresponding websites are subject to common control, such as all websites resolved by the disputed domain names showed the same layout, which was inspired to that of Complainant; the disputed domain names , , and were registered with the same Registrar, and some of them had the same address, and administrative contacts. Moreover, Respondent has not indicated that it would suffer any prejudice from consolidation of the complaints and no potential prejudice is apparent to the Panel. Respondent has not otherwise contested the request for consolidation. In all of these circumstances, the Panel considers that it is procedurally efficient to allow Complainant to proceed with the single Complaint as filed and is content that such consolidation is fair and equitable to all of the Parties. B. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the SERGIO ROSSI marks acquired through registration. The SERGIO ROSSI marks have been registered in the EU since 2000. All disputed domain names comprise the SERGIO ROSSI mark in its entirety. The disputed domain names only differ from Complainant's trademarks by the addition(s) "outlet", "i" or "e" respectively, and the gTLD suffixes ".com", "top" or ".store" to the SERGIO ROSSI marks. This does not eliminate the identity or at least the confusing similarity between Complainant's registered trademarks and the disputed domain names. By contrast, it may increase the confusion. Internet users may believe these are websites are online "store" or online "outlet", which are authorized by Complainant and targeting consumers on the Internet. In relation to the gTLD suffix, WIPO Overview 3.0 further states:
"The applicable Top Level Domain ("TLD") in a domain name (e.g., ".com", ".club", ".nyc") is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test." (WIPO Overview 3.0, section 1.11).
Thus, the Panel finds that disregarding the gTLD suffix ".com", ".top" or ".store" the disputed domain names are identical or confusingly similar to the SERGIO ROSSI marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain names:
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the disputed domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant's trademarks.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant's contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).
According to the Complaint, Complainant has exclusive rights in the internationally known Sergio Rossi marks. Complainant is the exclusive owner of numerous SERGIO ROSSI trademarks worldwide, including the EU trademark registered since March 20, 2000, which precede Respondent's registration of the disputed domain names (2017).
Moreover, Respondent is not an authorized dealer of Sergio Rossi-branded products or services but is rather offering what appears to be the Complainant's products or competing products for sale on its websites. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names and thereby shifts the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain names in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the term "sergio rossi" in the disputed domain names and in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the SERGIO ROSSI marks or to apply for or use any domain name incorporating the SERGIO ROSSI mark and Respondent has, through the use of confusingly similar domain names and their webpage contents, created a likelihood of confusion with the SERGIO ROSSI marks. Potential partners and end users are led to believe that the websites at the disputed domain names are either Complainant's sites or the sites of an official authorized partner of Complainant, which they are not.
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain names. Respondent registered the disputed domain names in 2017 (all disputed domain names were registered in 2017), long after the SERGIO ROSSI marks became internationally known. The disputed domain names are identical or confusingly similar to Complainant's SERGIO ROSSI marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain names. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported SERGIO ROSSI products at the websites resolved by the disputed domain names.
The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain names in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain names; or
(ii) Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on the website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain names in bad faith. a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the SERGIO ROSSI marks with regard to its products and services. Complainant has rights in the SERGIO ROSSI marks in the EU since 2000. It is not conceivable that Respondent would not have been aware of Complainant's trademark rights at the time of the registration of the disputed domain names (in 2017) particularly given that Respondent has used Complainant's marks on its websites.
Thus, the Panel concludes that the disputed domain names were registered in bad faith. b) Used in Bad Faith
Complainant also has adduced evidence to show that by using the confusingly similar disputed domain names, Respondent has "intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites or other online location". To establish an "intention for commercial gain" for the purpose of this Policy, evidence is required to indicate that it is "more likely than not" that such intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Given the widespread reputation of the SERGIO ROSSI marks, the confusingly similar domain names as well as website contents (including website layouts) (mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain names have a connection with Complainant, contrary to fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent's websites. In other words, Respondent has, through the use of confusingly similar domain names and webpage contents, created a likelihood of confusion with the SERGIO ROSSI marks. Potential partners and end users are led to believe that the websites at the disputed domain names are either Complainant's site or sites of official authorized partner(s) of Complainant, which they are not. The Panel therefore concludes that the disputed domain names are being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use domain names which are confusingly similar to Complainant's trademark, intended to ride on the goodwill of Complainant's trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain names and the conduct of Respondent as far as the websites to which the disputed domain names resolve are indicative of registration and use of the disputed domain names in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 7. Decision
For all 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 Complainant.
Yijun Tian
Sole Panelist
Dated: October 13, 2017
Full & Egal Universal Law Academy