The Complainant is Skorpio Limited of Lugano, Switzerland, represented by Keltie LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Fan Jun Liang of Suzhou, Jiangsu, China, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “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 September 19, 2017. On September 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 20, 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 September 23, 2017, the Center sent 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 September 25, 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 October 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2017. On October 13, the Respondent submitted two emails indicating its willingness to settle with the Complainant. Accordingly, the Center informed the Parties if they wish to explore settlement options, the Complainant should submit a request for suspension by October 20, 2017. On October 17, 2017, the Complainant requested to suspend the proceeding and the Center notified the Parties that the proceeding will be suspended until November 16, 2017. On October 20, 2017, the Complainant requested to reinstitute the proceeding, and the Center notified the Parties the proceeding was reinstituted. On October 26, 2017, the Respondent submitted two further emails indicating that it would like to settle with the Complainant. The Complainant indicated that it no longer wished to explore settlement options on November 1, 2017. On November 1, 2017, the Respondent again sent an email requesting settlement. On November 3, 2017, the Center notified the Parties of the commencement of the panel appointment process.
The Center appointed Karen Fong as the sole panelist in this matter on November 8, 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 fashion designer Rick Owens. Rick Owens began his fashion designer career in Los Angeles, United States of America (“US”), in 1994 and moved his production to Italy, starting worldwide distribution, in 2001. In 2002, Rick Owens won the Council of Fashion Designers of America Perry Ellis Emerging Talent Award and, in 2007, he was awarded a Cooper-Hewitt National Design Award, as well as the “Rule Breakers” award, by the Fashion Group International. His clothing designs have been worn by many celebrities, including Courtney Love, Madonna, and Kobe Bryant. Owens has opened up stores in Paris, New York, London, Seoul, Tokyo, and Hong Kong.
Rick Owen’s fashion products are sold under the brand RICK OWENS. The Complainant has a portfolio of trade mark registrations in numerous jurisdictions for the RICK OWENS mark for a broad range of goods including the following:
- European Union (“EU”) Trade Mark Reg. No. 002493294 RICK OWENS, in Classes 3, 9, 14, 18 and 25, registered on May 21, 2003;
- EU Trade Mark Reg. No. 008209736 RICK OWENS, in Classes 20 and 35, registered on November 2, 2009.
- US Trade Mark Reg. No. 2857230 RICK OWENS in Class 25, registered on June 29, 2004; and
- Chinese Trade Mark Reg. No. 6162781 RICK OWENS in Classes 14, 18 and 25, registered on August 7, 2014.
(individually and collectively the “Trade Mark”)
The Respondent registered the Domain Name on August 2, 2017. The Domain Name is not connected to an active website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not file a formal Response. His position as stated in his emails of October 13, 2017, was that after reading the Complaint in detail, he apologises for infringing the Trade Mark and that would actively co-operate with the Complainant’s suggested solutions to resolve the matter.
Noting that settlement discussions have not been successful in this instance, the Panel considers it appropriate to proceed to a decision on the merits. 6. Discussion and Findings 6.1. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith. 6.2. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits in paragraph IV of the Complaint and confirmed in an email of September 25, 2017, that the language of the proceeding should be English. The Complainant contends that the Domain Name is in Latin characters, the reverse WhoIs search submitted in evidence shows that all the domain names owned by the Respondent are also in Latin characters which indicate that the Respondent has a working knowledge of English. The Complainant also submits that English is the language of international relations. If the Complainant has to conduct the proceeding in the Chinese language, it will be subject to disproportionate expense and undue delay caused by the cost of translation services and the inconvenience of having to conduct the proceeding in Chinese.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties' ability to understand and use the proposed language, time and costs.
The Respondent has corresponded with the Complainant’s representatives in part in the English language and said that he had read the Complaint in detail which indicates that he is familiar with the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds that the Respondent would not be prejudiced, should the Decision be rendered in English. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English.
Having considered all the matters above, the Panel determines that English be the language of the proceeding. 6.3 Substantive Analysis A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to establish if the domain name is identical or confusingly similar to the complainant’s trade mark. The trade mark would generally have to be recognizable within the domain name. In this case the Domain Name integrates the Trade Mark in its entirety. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.ltd” as it is viewed as a standard registration requirement.
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of production always remaining on the complainant.
The Complainant contends that it has not given its consent for the Respondent to use the Trade Mark in a domain name registration. The Respondent has not acquired any trade mark rights in the trade mark RICK OWENS nor is he commonly known as “Rick Owens”. Further as the Domain Name is not active there is no bona fide offering of goods or services or noncommercial or fair use of the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. Not only did the Respondent not provide any explanation as to why he considers that he has rights or legitimate interests in the Domain Name, he responds after receipt of the Complaint by apologising and agreeing to co-operate with the Complainant.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s Trade Mark when it registered the Domain Name. It is implausible that it was unaware of the Complainant when it registered the Domain Name given the fame of the fashion designer. In WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The Panel also considers the fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Name (as stated in section 3.1.1 of WIPO Overview 3.0). It is clear that the Domain Name falls into the category stated above and the Panel finds that registration is in bad faith.
The Domain Name is also used in bad faith. Section 3.10 of WIPO Overview 3.0 states that UDRP panels tend to view settlement discussions between the parties as admissible, particularly insofar as such discussions may be relevant to assessing the parties’ respective motivations. In this case, the Respondent indicated that he wanted to cooperate with the Complainant to resolve the matter whereupon the Complainant applied to suspend the proceeding. However instead of transferring the Domain Name to the Complainant without charge, the Respondent offered to transfer the domain name in exchange of either (a) USD 3,000 – USD 5,000 or (b) a selection of the Complainant’s products. In the Panel’s view these are circumstances that indicate that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant for valuable consideration in excess of his out of pocket directly related to the Domain Name which amounts to bad faith under paragraph 4(b)(i) of the Policy. That this offer to sell took place after proceeding commenced should not be a bar to assessing the Respondent’s bad faith motivations.
In addition to the above, the Respondent also registered the following domain names on the same date as the date of registration of the Domain Name which correspond to marks of third-party brandowners:
- - the US rapper with global fame;
- - similar to the trade mark YEEZY, applied on a range of footwear and apparel by the US rapper Kanye West, in partnership with Adidas;
- - similar to registered trade marks for LOCKHEED MARTIN, owned by Lockheed Martin, the US company specialising in aerospace, defence, security and advanced technologies sectors with worldwide interests.
The above is an indication that he is engaged in a pattern of bad faith conduct.
In light of these particular circumstances, the Panel concludes that the Respondent’s registration and use of the Domain Name in this particular case satisfies the requirement that the Domain Name is being used in bad faith by the Respondent. 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 Domain Name be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: November 17, 2017
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