The Complainant is County s.r.l. of Milano, Italy, represented by Studio Legale Associato Di Pinto of Musco, Italy.
The Respondents are Patrick Lissone of Taipei, Taiwan, China; Shixiaoyuan, shi xiaoyuan of Changsha, Hunan, China. 2. The Domain Names and Registrars
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR. The disputed domain name is registered with B, Inc. (collectively, the “Registrars”). 3. Procedural History
The Complaint was filed in Italian with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2018. On March 26, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 28, 2018, and on March 30, 2018, the Registrars transmitted by email to the Center verification responses confirming that the Respondents are listed as the registrants and providing the contact details.
On April 25, 2018, the Center sent a communication to the Parties in Italian, English, and Chinese regarding the language of the proceeding and consolidation of Respondents. On May 4, 2018, May 8, 2018, and May 14, 2018, the Center sent reminders to the Parties, but did not receive any reply. On May 16, 2018, the Center sent a communication to the Parties regarding possible termination of the proceeding.
On June 4, 2018, the Complainant requested reinstitution of the proceeding. On June 6, 2018, the Center transmitted by email to the Registrars a further request for registrar verification in connection with the disputed domain names. On June 7, 2018, and on June 11, 2018, the Registrars transmitted by email to the Center verification responses confirming that the Respondents are listed as the registrants and providing the contact details. On June 11, 2018, the Center notified the Parties of the reinstitution of the proceeding. On June 15, 2018, the Complainant submitted an amended Complaint in English.
The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, in English and Chinese, and the proceeding commenced on June 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on July 31, 2018.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on August 2, 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.
On August 16, 2018, the Panel issued a Panel Order requesting the Complainant to provide evidence of the websites to which the disputed domain names previously resolved by August 21, 2018. The Panel Order also allowed for the Respondents to file submissions in reply by August 27, 2017.
On August 16, 2018, the Complainant filed submissions (but no evidence) in response to the Panel Order. The Respondents did not file any submissions in reply. 4. Factual Background A. Complainant
The Complainant is a company incorporated in Italy.
Marcelo Burlon s.r.l is a company incorporated in Italy and the owner of registrations for the trade mark MARCELO BURLON COUNTY OF MILAN (the “Trade Mark”), including European registration No. 011037331, with a registration date of December 10, 2012, and Italian registration No. 302013902171876, with a registration date of February 27, 2014.
The Complainant is the exclusive licensee of the Trade Mark under a licence agreement with Marcelo Burlon s.r.l dated October 15, 2015 (the “Licence Agreement”).
The Complainant has been using the Trade Mark since 2015 in respect of clothing, footwear, and accessories. B. Respondents
The Respondents are individuals apparently with addresses in Taiwan, China, and Hunan, China, respectively. C. The Disputed Domain Names
The disputed domain name was registered on July 1, 2017.
The disputed domain name was registered on August 20, 2017. D. The Websites at the Disputed Domain Names
The Complainant asserts (without any supporting evidence) that the disputed domain names have previously been resolved to websites which offered for sale identical, fake products under the Trade Mark (the “Websites”).
On June 29, 2018 and as at the date of this Decision, the disputed domain names are both resolved to the same, blank web page containing the following wording:
“This account has been suspended.
Either the domain has been overused, or the reseller ran out of resources.” 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Mark, the Respondents have no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names were registered and are being used in bad faith. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
The languages of the Registration Agreements for the disputed domain names are English and Chinese, respectively. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
In light of the Panel’s decision below regarding the Complainant’s consolidation request, and in light of the fact the language of the Registration Agreement for the disputed domain name is English, and in light of the fact that the Complainant submitted an amended Complaint in English, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2 Consolidation of Respondents
Previous UDRP decisions suggest that consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the disputed domain names resolve, where consolidation would be fair and equitable to all parties, and where procedural efficiency supports consolidation (see section 4.11.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present proceeding, the Complainant contends as follows:
(i) Both Respondents’ email addresses are similar by both ending with “123456”;
(ii) The composition of the disputed domain names is similar; and
(iii) The products offered on the Websites are identical.
The Complainant has not submitted any evidence to support its contentions regarding the alleged contents of the Websites, despite having been given a second opportunity to do so in the Panel Order.
There is no clear commonality in the registration dates or other contact information in the WhoIs results for the disputed domain names. The disputed domain names are registered with different Registrars.
The Panel finds that the Complainant has not furnished any concrete evidence to establish that the disputed domain names are subject to common control. For the above reasons, the Complainant’s consolidation request is refused.
The Panel therefore determines, in its discretion, that it will address the disputed domain name in the remainder of this Decision, without prejudice to the Complainant’s right to bring a separate complaint in respect of the disputed domain name . 6.3. Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
In addition to failing to provide any evidence to support its contentions regarding the content of the Websites, the Complainant also failed to submit with the Complaint any evidence of the registrations for the Trade Mark held by Marcelo Burlon s.r.l and exclusively licensed to the Complainant. Notwithstanding this glaring omission, in light of the need to ensure the proceeding is conducted in a timely and cost effective manner, and as the registrations for the Trade Mark are a matter of public record, the Panel undertook limited factual research in order to confirm the existence of the Trade Mark registrations referred to in section 4.A. above (see WIPO Overview 3.0, section 4.8).
The Panel finds that the Complainant has standing to bring the Complaint as the exclusive licensee under Article 3 of the License Agreement (see WIPO Overview 3.0, section 1.4.1).
The disputed domain name incorporates the dominant feature of the Trade Mark, namely the words “marcelo burlon” (see WIPO Overview 3.0, section 1.7). It consists of the dominant feature of the Trade Mark in the plural form, with the addition of the letter “s”.
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(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 trade mark 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 trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the evidence on the record suggests that the disputed domain name has not been used.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lack rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Given the notoriety of the Trade Mark; the fact the disputed domain name comprises (in plural form) the dominant feature of the Trade Mark; the passive use of the disputed domain name; and the Respondent’s failure to file any response, the Panel concludes in all the circumstances that the requisite element of bad faith registration and use has been made out, under the Panel’s general discretion.
The Panel considers it is inconceivable the Respondent was not aware of the Trade Mark at the time the Respondent registered the disputed domain name.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. 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 cancelled.
The Complainant’s request for consolidation of the Respondent Shixiaoyuan, shi xiaoyuan is rejected, without prejudice to the Complainant’s right to file a separate complaint with respect to the disputed domain name .
Sebastian M.W. Hughes
Sole Panelist
Dated: September 3, 2018
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