The Complainant is Golden Lady Company S.P.A. of Castiglione delle Stiviere, Italy, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is Ntrend Global of Gwangju, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Gabia, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2017. On November 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 2017, the Registrar transmitted by email to the Center its verification response indicating that the language of the registration agreement is Korean, confirming that the Respondent is listed as the registrant, and providing the Respondent’s contact details.
On November 15, 2017, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On November 15, 2017, the Complainant requested for English to be the language of the proceeding. The Respondent did not comment.
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 November 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2017.
The Center appointed Andrew J. Park as the sole panelist in this matter on December 22, 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, Golden Lady Company S.P.A., is an Italian company founded in 1967 in Castiglione delle Stiviere, Italy. The Complainant is active in the design, manufacturing, and retail of hosiery and underwear. One of the Complainant’s strategies is to “combine [a] defined Italian style with the opening of new markets through the acquisition of the best national and international brands of hosiery including Philippe Matignon, Filodoro, SiSi and Omsa, as well as the American brands No-Nonsense and Hue”. The Complainant has 12 production sites located in Italy, the United States of America, and Serbia, with an overall production of 400 million tights per year, distributed in 70 countries worldwide.
The SiSi brand joined the Complainant’s company in the 1980s, and the trademark SISI has been used over the last 30 years in relation to high quality stockings and tights as well as lingerie and knitwear.
The Complainant owns numerous trademark registrations for the trademark SISI throughout the world, including the following:
Mark: Jurisdiction/Reg. No.: Reg. Date: International Class:
SISI Korean Reg. No. 40-02183230000 August 6, 1990 025
SISI EU Registration No. 000592048 July 22, 2004 025
SISI International Registration No. 640906 July 26, 1995 025
The Respondent has not responded to the Complaint.
The disputed domain name was registered by the Respondent on August 10, 2012. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name should be transferred to the Complainant because:
1) the disputed domain name is identical and confusingly similar to the Complainant’s trademarks in which the Complainant has rights. In particular, the disputed domain name consists of the well-known SISI mark combined with the geographic term “Korea”, which increases the confusion as all users will perceive the disputed domain name as referring to online points of sale of SISI goods primarily located in the Republic of Korea.
2) the Complainant claims that the Respondent has no rights or legitimate interests in relation to the SISI brand and the SISI trademark which form the disputed domain name. Further, the Complainant claims that the Respondent is not commonly known by the trademark SISI as an individual, business or other organization, since the Respondent’s business name is Ntrand Global. In addition, the Complainant claims that it has never authorized the Respondent to include its well-known trademarks in the disputed domain name, nor to make any other use of its trademarks in any manner whatsoever.
In 2012, the Respondent purchased a very limited quantity of SISI goods from the Complainant. However, the Parties never signed a distribution contract nor any other contract dealing with the use of the Complainant’s trademarks.
The Complainant also claims that the Respondent is not the Complainant’s distributor in the Republic of Korea, but a mere local reseller which did not acknowledge the Complainant’s trademark rights, nor inform Internet users that the Respondent is not affiliated with the Complainant, nor that the website is not sponsored nor endorsed by the Complainant.
3) the disputed domain name was registered and is being used in bad faith. The Complainant’s trademark, SISI, was registered in 1990, which is much prior to the Respondent becoming the owner of the disputed domain name in 2012. The Complainant has a great level of notoriety in the market through the use of the trademark SISI, and it is obvious that the Respondent registered the disputed domain name despite being aware of the Complainant’s exclusive rights to the SISI mark and its global reputation. The Complainant also insists that the Respondent is taking unfair advantage from the reputation of the Complainant’s trademarks to intentionally attract and to lead potential Internet consumers to its website offering for sale alleged SISI goods for commercial gain. Currently, the website that the disputed domain name resolved to is not active, however, before the Complainant sent a cease-and-desist letter, the Respondent used the Complainant’s verbal and figurative trademark prominently, and imagery very similar to that of the Complainant’s website was used in the website of the disputed domain name giving Internet users a clear impression that the website is operated directly by the Complainant or by one of its local subsidiaries. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules. A. Language of the Proceeding
The registration agreement for the disputed domain name is in Korean. Pursuant to paragraph 11 of the Rules, 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, i.e., Korean. Here, the Center preliminarily accepted the Complaint as filed in English, and has indicated that it would accept a response in either English or Korean, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean;
2) The disputed domain name resolved to a website which is in English.
3) The Respondent responded in English to the Complainant’s initial approach. This further shows that the Respondent understands the English language; and
4) The Complainant and the Respondent use different languages, and neither of them presumably understands the language of the other Party. The Complainant is Italian and the Respondent is Korean. Therefore English would be the fair language for both Parties.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English; and (2) issue a decision in English. B. Identical or Confusingly Similar
This element consists of two parts; first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel finds that the Complainant has established registered rights in the mark SISI and that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, and adding a geographic term does nothing to avoid a finding of confusing similarity to the Complainant’s trademark.
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. C. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case.
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. The fact that the Respondent purchased some quantity of SISI items in 2012 does not give the Respondent the right to register a domain name that incorporates the entirety of the Complainant’s trademark.
The Respondent would not be able to claim any rights or legitimate interests in the disputed domain name in any event should it have argued it was acting as a reseller of the Complainant’s goods because, as discussed under the third element, the Panel finds that, the Respondent fails to accurately and prominently disclose the registrant’s relationship with the trademark holder. See WIPO Overview 3.0, section 2.8.1.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(iv).
As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to rebut the Complainant’s allegations of the Respondent’s bad faith registration and use of the disputed domain name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University,WIPO Case No. D2000‑0944).
The Panel finds that the Complainant’s registered trademark, SISI, is well known, that it was registered in 1990 and has been used for almost 27 years, and that it was registered much before the Respondent registered the disputed domain name. The disputed domain name is identical and confusingly similar to the Complainant’s trademark and even though the website at the disputed domain name resolved to a website that displayed a company called “Ntrand Global”, it was clear that the Respondent, by using the website of the disputed domain name using the look and feel of the Complainant's official website, was attempting to appear that it had a connection with the Complainant. Bad faith can be inferred from the fact that the Respondent was aware of the Complainant’s mark and the rights thereto. The Panel reasonably finds that the Respondent registered the disputed domain name with the knowledge of the Complainant’s exclusive rights to the SISI mark for the purpose of commercial gain by taking unfair advantage of the Complainant’s international name recognition and reputation.
Accordingly, the evidence shows that the Respondent likely knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s SISI trademark in violation of paragraph 4(b)(iv) of the Policy.
As the conduct described above falls squarely within paragraph 4(b)(iv) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii). 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.
Andrew J. Park
Sole Panelist
Date: January 8, 2018
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