The Complainant is Liu.Jo S.p.A. of Carpi, Italy, represented by Studio Legale SIB, Italy.
The Respondent is Zhao Huazheng of Shandong Province, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2018. On February 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 9, 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.
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 February 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2018.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on March 27, 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 is Liu.Jo S.p.A., an Italian company whose main activity consists of manufacturing, marketing and selling clothing and accessories.
The Complainant is the owner of the following trademark registrations, among others:
Trademark
Registration Number
Registration date
Classes
Jurisdiction
LIU.JO
000234351
August 17, 1999
25
European Union
LIU.JO
000747923
July 19, 1999
9, 18, 19
European Union
The Complainant is also the owner of the following domain names:
Domain name
Registration date
July 30, 1997
June 28, 2009
The Respondent, Zhao Huazheng, registered the disputed domain name on November 6, 2017.
The disputed domain name is being used to operate a website that appears to offer the Complainant’s clothes and accessories. 5. Parties’ Contentions A. Complainant
The Complainant argues the following:
i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
That the disputed domain name is confusingly similar to the Complainant’s LIU.JO trademark.
That the addition of the term “it” to the disputed domain name could be perceived as a reference to the Italian origins of the Complainant’s brand, LIU.JO.
That the addition of the generic Top-Level domain (“gTLD”) “.com” is insufficient to differentiate the disputed domain name from the Complainant’s LIU.JO trademark.
ii) The Respondent has no rights to or legitimate interests in the disputed domain name.
That the Respondent is not affiliated to the Complainant and does not own any applications or registrations for the trademark LIU.JO.
That the Complainant has not licensed or otherwise authorized the Respondent to use its LIU.JO trademark or to register any domain name incorporating such trademark.
That the Respondent has not been commonly known by the disputed domain name.
That the Respondent has not used the disputed domain name in relation to any bona fide offering of goods or services.
That to the best of the Complainant’s knowledge, the goods offered for sale on the Respondent’s website, are counterfeits of the Complainant’s goods.
iii) The disputed domain name was registered and is being used in bad faith.
That the Respondent uses images of the Complainant’s actual products, to offer his counterfeited products.
That the Respondent’s unauthorized use of the Complainant’s official advertising images and logos in connection with the website to which the disputed domain name resolves, is evidence of the Respondent’s bad faith registration and use of the disputed domain name.
That the disputed domain name may lead potential customers to believe that there is an affiliation with the Complainant.
That besides having registered the disputed domain name, the Respondent is also the owner of domain names and which include trademarks of third parties. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant is required to prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants 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 was registered and is being used in bad faith.
As the Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true the Complainant’s reasonable assertions (see Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487). A. Identical or Confusingly Similar
The Complainant has proven to hold several registrations for the trademark LIU.JO around the world, including China, where the Respondent appears to be domiciled.
The disputed domain name is confusingly similar to the Complainant’s LIU.JO trademark, as it comprises said trademark in its entirety.
The disputed domain name consists of exactly the same alphabetic characters as those of the Complainant’s trademark LIU.JO (see EFG Bank European Financial Group SA v. Jacob Foundation,WIPO Case No. D2000-0036). The fact that the disputed domain name does not reproduce the period (“.”) comprised in the LIU.JO trademarks is irrelevant when conducting a confusing similarity analysis, because this kind of non-alphanumeric characters need not necessarily be considered for the purpose of assessing confusing similarity (see, mutatis mutandi, Liu.Jo S.p.A. v. Liu Xuemei,WIPO Case No. D2017-0808, “The Panel concludes that the deletion of the period from the Complainant’s Mark coupled with the descriptive word ‘jeans’ and a hyphen do not differentiate the Domain Name from the Complainant’s Mark”; The Coca-Cola Company v. Ariel Fuggini, A.F., / Domains By Proxy, LLC,WIPO Case No. D2014-1671, “The omission of the hyphen between the words ‘coca’ and ‘cola’ does not serve to distinguish from the Complainant’s COCA-COLA LIFE trademark and as such this domain name is confusingly similar to the Complainant COCA-COLA LIFE registered mark for the purposes of the Policy”; and Liu.Jo S.p.A. v. Chang Qing Lu,WIPO Case No. D2018-0113).
The addition of the gTLD “.com” holds no relevance to this case, as it does not diminish the confusing similarity existing between the trademark LIU.JO and the disputed domain name (see G4S Plc v. Noman Burki,WIPO Case No. D2016-1383).
Moreover, the term “it” could be perceived to be associated with Italy. Considering that the Complainant is an Italian company, and that its products are luxury goods originated in Italy, the addition of said term “it” increases the confusing similarity between the disputed domain name and the Complainant’s trademark LIU.JO, as it may suggest that the website to which the disputed domain name resolves is somehow related to the Complainant (see, mutatis mutandi, Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768; and Koninklijke Philips Electronics NV v. Gopan P.K.,WIPO Case No. D2001-0171).
The first element of the Policy is fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights to, or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent 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 (as an individual, business, or other organization) has been commonly known by the domain name, even if you have 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 trademark or service mark at issue.
The Complainant argued that it did not license or otherwise authorize the Respondent to use its LIU.JO trademark, or to register a domain name incorporating its trademark. The Respondent did not contest this argument.
There is no evidence that suggests that the Respondent has been commonly known by the disputed domain name.
The Complainant alleged that the use of the disputed domain name by the Respondent does not constitute a bona fide offering of goods.
The website to which the disputed domain name resolves, prominently displays the trademark LIU.JO. The Respondent’s website also displays images of LIU.JO products (clothing and accessories) alongside their prices.
The Complainant claims that the products offered for sale in the Respondent’s website are counterfeits. The Complainant has not provided any direct evidence to support this claim. The Panel may not accept merely conclusory or wholly unsupported allegations of illegal activity, including counterfeiting. However, previous Panelists have found that circumstantial evidence can support a Complainant’s otherwise credible claim of illegal respondent activity (see section 2.13.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). This case presents the following circumstances:
a) Upon inspection of the Complainant’s official website (to which the Complainant’s domain name resolves), the Panel found that the products shown on the website to which the disputed domain name resolves are offered at a price that is disproportionately below the market value of genuine products sold under the Complainant’s LIU.JO trademark (see Oakley, Inc. v. Victoriaclassic.Inc,WIPO Case No. D2012-1968).
b) The Respondent has had an opportunity to rebut the assertions made by the Complainant and challenge the circumstantial evidence submitted by the Complainant. Yet, the Respondent did not provide any explanation for the content displayed on his website, or the reason for the disproportionate discounts to the prices displayed therein (see Belstaff S.R.L. v. jiangzheng ying,WIPO Case No. D2012-0793).
c) There is no evidence of a connection or affiliation between the Complainant and the Respondent that could suggest that the products offered on the Respondent’s website are genuine.
The Panel finds the above to constitute circumstantial evidence to conclude that the products sold on the Respondent’s website are likely counterfeit. Such use of the disputed domain name by the Respondent cannot establish rights to, or legitimate interests in the disputed domain name (see section 2.13.1 of the WIPO Overview 3.0; and Oakley, Inc., supra).
In light of the above, it is possible to infer that the Respondent is deliberately using the disputed domain name to impersonate the Complainant, by replicating in the website to which the disputed domain name resolves, the general layout, look and feel of the Complainant’s website. The registration and use of the disputed domain name for the purpose of such impersonation does not provide rights to, or legitimate interest in the disputed domain name under the Policy (see Jupiter Investment Management Group Limited v. N/A, Robert Johnson,WIPO Case No. D2010-0260; and Educational Testing Service v. Sameh Abd Elmonem, Infc,WIPO Case No. D2017-1745).
The second element of the Policy is fulfilled. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed 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 your documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to their website or other on-line 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 its website or location.
The Complainant is the owner of several trademark registrations for LIU.JO around the world, including China, where the Respondent appears to be domiciled. For example, European trademark registration number 000747923 granted on July 19, 1999, and Chinese trademark registration number 5462400, granted on September 14, 2009, both predate the registration date (November 6, 2017) of the disputed domain name.
The Complainant claims to be well-known and to have achieved a worldwide reputation through its use of the trademark LIU.JO. Previous Panelists have recognized the notorious status, success in the fashion industry, and extensive use of the LIU.JO trademark worldwide, as well as the Complainant’s well-established rights to said trademark (see Liu.Jo S.p.A. v. Anita Kreft,WIPO Case No. D2015-0522; and Liu.Jo S.p.A. v. Liu Xuemei,WIPO Case No. D2017-0808).
Considering that (i) the Complainant’s trademark registrations predate the registration date of the disputed domain name, (ii) the content of the Respondent’s website replicates that of the Complainant’s website, and (iii) previous Panelists have recognized that the Complainant holds well-established rights to a notorious, successful and extensively used trademark, it is reasonable to deduct that the Respondent was fully aware of the existence of the Complainant and its trademark LIU.JO at the moment of registration of the disputed domain name.
According to the consensus reached by previous Panelists, knowingly registering a domain name that entirely comprises a trademark of a third party constitutes bad faith (see Façonnable SAS v. Names4sale,WIPO Case No. D2001-1365; and The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113).
As stated above, there is enough circumstantial evidence in this case to conclude that the products sold on the Respondent’s website are counterfeit. The Panel finds this to be evidence of bad faith registration and use of the disputed domain name (see Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019; and Belstaff S.R.L. v. jiangzheng ying,WIPO Case No. D2012-0793).
As discussed above, the Respondent’s actions show that the Respondent is using the disputed domain name to impersonate the Complainant (see Jupiter Investment Management Group Limited, supra; Educational Testing Service, supra; and Bridgestone Brands, LLC v. Inc. Services,WIPO Case No. D2017-0957). By using the disputed domain name, 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 trademark LIU.JO as to the source, sponsorship, affiliation, or endorsement of his website, constituting bad faith under paragraph 4(b)(iv) of the Policy.
Finally, the Complainant has brought to the Panel’s attention that the Respondent has also registered the domain names and , which entirely comprise third party trademarks such as EASTPAK and FJALLRAVEN. According to the evidence attached to the Complaint, the websites to which both of the referenced domain names resolve, display the trademarks EASTPAK and FJALLRAVEN alongside the offer and sale of products similar to those covered by said marks. This shows that the Respondent has engaged in a pattern of abusive registration preventing the owners of such trademarks from reflecting them in corresponding domain names, constituting bad faith under paragraph 4(b)(ii) of the Policy (see section 3.1.2 of the WIPO Overview 3.0).
The third element of the Policy is fulfilled. 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.
Kiyoshi Tsuru
Sole Panelist
Date: April 9, 2018
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