Complainant is Skorpio Limited of Lugano, Switzerland, represented by Keltie LLP, United Kingdom of Great Britain and Northern Ireland.
Respondent is Milen Radumilo of Bucharest, Romania. 2. The Domain Name and Registrar
The disputed domain name (the “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 19, 2018. On February 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 20, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 22, 2018.
The Center appointed Ingrīda Kariņa-Bērziņa 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
Complainant is a Swiss company that manages the intellectual property rights of American fashion designer Rick Owens. Rick Owens launched his fashion line in 1994 in the United States of America. In 2001, Rick Owens sought international expansion and relocated to Italy. 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 Kate Moss, Courtney Love, Madonna, and Kobe Bryant. Owens has opened up stores around the world including in Paris, New York, London, Seoul, Tokyo, and Hong Kong.
Rick Owens’ fashion products are sold under the brand RICK OWENS. Complainant owns a number of trademark registrations for the mark RICK OWENS, including the following:
- European Union Trade Mark (“EUTM”) Registration No. 8209736 RICK OWENS (word mark) in Classes 20 and 35, filed on April 9, 2009 and registered on November 2, 2009;
- EUTM Registration No. 2493294 RICK OWENS (figurative mark) in Classes 03, 09, 14, 18 and 25, filed on December 7, 2001 and registered on May 21, 2003.
Respondent registered the Domain Name on November 27, 2017. The Domain Name resolves to a website displaying pay-per-click links. 5. Parties’ Contentions A. Complainant
Complainant’s contentions can be summarized as follows:
Complainant asserts that the Domain Name is formed by Complainant’s RICK OWENS mark in its entirety and is therefore identical to Complainant’s registered and unregistered trademark rights. Complainant states the addition of the domain suffix “.biz” does not form part of the assessment of identity or similarity.
Complainant further maintains that Respondent has no rights or legitimate interests in the Domain Name. To the best of Complainant’s knowledge, there is no evidence that Respondent has ever used, nor made any demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. According to Complainant, the website at “www.” is not active, but pay-per-click links appear on the web page. Such links feature the words “Rick Owen(s)” alongside words such as “denim”, “dress”, “sneaker”, “coat”, “jacket” and “shoe.” Such use by Respondent is neither fair nor noncommercial.
Complainant also indicates that, to the best of its knowledge, Respondent does not own any registered or unregistered rights in any trademarks which consist of or contain “Rick Owens”. To the best of Complainant’s knowledge, Respondent is not commonly known as “Rick Owens.” Complainant has not granted permission to Respondent to use its mark in a domain name registration.
With respect to the issue of bad faith registration and use, Complainant states that, at the time the Domain Name was registered, the RICK OWENS mark was already registered and had enjoyed a global reputation for at least 17 years, which Respondent could have ascertained; the Domain Name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the Domain Name for an amount in excess of Respondent’s costs directly related to the Domain Name; the Domain Name is being used to prevent Complainant from reflecting the mark in a corresponding domain name and that Respondent intentionally attempted to attract for commercial gain Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s mark. In addition, Complainant has provided evidence that the Domain Name is being offered for sale through Sedo for USD 688. Finally, Complainant notes that Respondent has engaged in a pattern of bad faith registrations. Respondent has registered and is using the Domain Name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the RICK OWENS mark. Such rights are established by the registrations issued by the European Union Intellectual Property Office and by use of the mark.
The Panel further finds that the Domain Name is confusingly similar to the RICK OWENS mark. The Domain Name incorporates the mark in its entirety, adding only the generic Top-Level Domain (“gTLD”) “.biz.” A gTLD is generally disregarded in assessing the confusing similarity of a domain name to a trademark because it is a technical requirement of registration. 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.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel holds that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Respondent has not filed a Response. There is no evidence that Respondent is using, or preparing to use, the Domain Name in connection with a bona fide offering of goods or services, that Respondent is commonly known by the Domain Name, that Respondent is making a legitimate noncommercial or fair use of the Domain Name, or that Respondent has consent from Complainant.
For these reasons, the Panel finds that none of the circumstances of paragraph 4(c) of the Policy are present, and that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b)(i) of the Policy sets out one of four nonexclusive criteria as evidence of the registration and use of a domain name in bad faith including:
“circumstances indicating that you have registered or you have 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 complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”
The evidence establishes that the Domain Name is being offered for sale through Sedo for USD 688, which is an amount in excess of the direct costs of maintaining the Domain Name.
Further, the Panel also finds that the circumstances set forth in paragraph 4(b)(iv) of the Policy have been established. As noted above, the Domain Name is confusingly similar to the RICK OWENS mark and resolves to a website containing links that are identical or confusingly similar to Complainant’s mark and references the types of products sold under this mark by Complainant. The Panel finds that the Domain Name has been used in a way that is likely to confuse people into believing the Domain Name was registered to or connected to Complainant. Respondent has not provided any explanation as to why it would be entitled to register a domain name containing Complainant’s mark.
The evidence establishes Rick Owens’ fame in the fashion world. The Panel is satisfied that Complainant has shown that Respondent registered the Domain Name in bad faith and has used the Domain Name to attract Internet traffic to its site for commercial gain by creating a likelihood of confusion with Complainant’s marks.
The Panel concludes that the Domain Name was registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy has been satisfied. 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 Complainant.
Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: April 2, 2018
Full & Egal Universal Law Academy