The Complainant is Borbonese S.p.A. of Milan, Italy, represented by Studio Turini, Italy.
The Respondent is Ying Lin of Wuhan, Hubei, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Zhengzhou Zitian Network Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 8, 2018, 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 February 13, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On the same day, the Complainant confirmed its request for English to be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 February 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2018.
The Center appointed Matthew Kennedy as the sole panelist in this matter on March 22, 2018. 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 owns a luxury brand of fashion goods. The Complainant owns international trademark registrations numbers 786357 and 859144, both for BORBONESE, registered on July 12, 2002 and July 13, 2005, respectively, both designating multiple jurisdictions including China, and collectively specifying goods in classes 3, 8, 9, 14, 18, 20, 21, 24 and 25, including leather goods and footwear. The Complainant has also registered domain names, including , that it uses in connection with its official website.
The Respondent is an individual located in China. According to information provided by the Complainant, the Respondent’s name is associated with over 1,000 domain name registrations.
The disputed domain name was registered on September 29, 2017. At the time of filing of the Complaint, the disputed domain name resolved to a website in Italian that offered for sale what were alleged to be the Complainant’s bags, shoes and accessories at discount prices. Prices were displayed in euros. At the time of this decision the disputed domain name does not resolve to any active website. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s BORBONESE trademark. The disputed domain name is composed of the verbal element of that trademark. Neither the addition of suffixes nor of common or geographic terms such as “it” does anything to alleviate the confusion.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Respondent was not authorized, licensed or otherwise allowed by the holder to use the name “Borbonese” nor to apply for any domain name incorporating its trademark under any circumstances. The Respondent uses the disputed domain name in connection with a website that promotes and sells goods and that appears to clone the Complainant’s official website. The Respondent is not an official outsourcing factory or retailer for the Complainant.
The disputed domain name was registered and is being used in bad faith. There is no doubt that the Respondent was aware of the Complainant and its trademark when it registered the disputed domain name given that it has purported to offer for sale the Complainant’s products. The Respondent has deliberately included the well-known BORBONESE trademark in the disputed domain name to create a false impression of an association with the Complainant or to divert Internet users to its website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 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 the language of the proceeding be English. Its main arguments are that the Complainant has no knowledge of Chinese, translation of the Complaint would result in additional expense and unnecessary delay, and the disputed domain name is composed of Latin characters.
Paragraph 10(b) and (c) of the Rules requires 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 was filed in English. The Respondent has not expressed any interest in responding to the Complaint or otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.
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 the BORBONESE trademark.
The disputed domain name wholly incorporates the Complainant’s BORBONESE trademark as its only distinctive element.
The disputed domain name includes additional elements “-it” and the generic Top-Level Domain (“gTLD”) suffix “.com”. The element “-it” can be understood as a geographical term that refers to Italy or simply as a minor element comprising a hyphen and two letters. Either way, it does not dispel confusing similarity between the disputed domain name and the Complainant’s trademark. The gTLD suffix may generally be disregarded for the purposes of assessing confusing similarity under the Policy. 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.
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 Panel has already found that the disputed domain name is confusingly similar to the Complainant’s trademark. The Complainant submits that The Respondent was not authorized, licensed or otherwise allowed by the holder to use the name BORBONESE nor to apply for any domain name incorporating its trademark under any circumstances.
The disputed domain name resolved to a website that prominently displayed the BORBONESE trademark and offered for sale what were alleged to be the Complainant’s bags, shoes and accessories. The website was presented as an online store authorized by, or affiliated with, the Complainant, when in fact it was neither. Regardless of whether the goods offered for sale were genuine or counterfeit, there was nothing on the website that disclosed its lack of relationship to the Complainant. These facts indicate that the Respondent’s use of this disputed domain name is not in connection with a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Further, use of this disputed domain name in connection with an offering of goods for sale is not a legitimate noncommercial or fair use.
According to the information in the Registrar’s WhoIs database, the Respondent’s name is “Ying Lin”, which does not resemble the disputed domain name. There is no evidence on the record that the Respondent has been commonly known by the disputed domain name.
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 failed to rebut that case because he did not respond to the Complaint.
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, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, but these circumstances are not exhaustive. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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 Respondent registered the disputed domain name in 2017, many years after the Complainant obtained its trademark registrations, including in China where the Respondent is located. The disputed domain name wholly incorporates the Complainant’s BORBONESE trademark as its only distinctive element. The website to which it resolved offered for sale what were alleged to be the Complainant’s goods. This gives the Panel reason to find that the Respondent was aware of the Complainant and its BORBONESE trademark at the time that he registered the disputed domain name and that he registered the disputed domain name in bad faith.
The Respondent used the disputed domain name, which is confusingly similar to the Complainant’s BORBONESE trademark, in connection with a website to offer for sale what were alleged to be the Complainant’s bags, shoes and accessories. Given this circumstance and those described in Section 6.2.B above, the Panel considers that this use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products on that website as described in paragraph 4(b)(iv) of the Policy.
The Panel notes the disputed domain name no longer resolves to an active website. The Panel does not consider that this recent change in use alters the findings above; it may, in fact, constitute further evidence of bad faith use.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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.
Matthew Kennedy
Sole Panelist
Date: March 25, 2018
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