The Complainants are Karl Lagerfeld B.V. and KL North America B.V. of Amsterdam, the Netherlands, represented by Novagraaf Nederland B.V., Netherlands (the “Complainant”).
The Respondent is Zheng Sunke of Sheboygan, Wisconsin, United States of America. 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 June 28, 2018. On June 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 29, 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 July 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2018.
The Center appointed Carolina Pina-Sánchez as the sole panelist in this matter on August 3, 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 a fashion company and holds many trademark registrations around the word with the element LAGERFELD (i.e. International trademark No. 487964 filed and registered on August 30, 1984) and KARL LAGERFELD (i.e. International trademark No. 420852 filed and registered on February 18, 1976). It also owns the domain names , and at which it maintains a global flagship store which reaches 96 countries.
The Domain Name was created on February 7, 2018. The Domain Name resolves to a fashion online shop that offers products under the trademarks of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns registered trademark rights in the LAGERFELD and KARL LAGERFELD mark as set out above and that the Domain Name is confusingly similar to its trademarks.
The Complainant says that it has not permitted, authorized or licensed the Respondent to use its mark. In addition, the Complainant considers that the registration of the Domain Name in 2018 was in bad faith because the Respondent should have been aware of the Complainant’s famous trademark rights and that the use of the Domain Name by the Respondent is an act of bad faith, because the Domain Name is being used to benefit from the possible raised confusion of the Complainant’s trademark rights by leading Internet users to its Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Domain Name comprises (i) the trademark LAGERFELD, (ii) the word “saldi” and (iii) the generic Top-Level Domain “.com”, which may be ignored for the purposes of assessing identity and confusing similarity under this element of the Policy.
The Domain Name is not identical to any trademark in which the Complainant claims rights, so the issue is whether they are confusingly similar to any trademark in which the Complainant has rights. For this purpose, the Panel considers the Complainant’s LAGERFELD word mark as the basis for the comparison.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains that “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”
Taking that sentence at face value the Panel’s assessment is that the Complainant’s trademark is recognizable in . The additional descriptive word “saldi” does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s LAGERFELD trademark. See, i.e., Stylight GmbH v. Zheng Zebiao,WIPO Case No. D2018-1327.
In Apple Inc. v. Fred Bergstrom / LottaCarlsson / Georges Chaloux and Marina Bianchi,WIPO Case No. D2011-1388, the panel found that the domain names , and were confusingly similar to the trademark APPLE. This is exactly the same circumstance that is presented in this case in which the term “saldi” is added at the end of the word “lagerfeld” which is registered by the Complainant as a trademark.
The Panel finds that the Domain Name is confusingly similar to the word trademark LAGERFELD of the Complainant.
The Panel therefore finds that the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests
In certain circumstances it may be permissible for a reseller to adopt a domain name featuring the brand name of the product being re-sold. It will clearly be permissible, for example, where the trademark owner has given permission.
According to section 2.8 of the WIPO Overview 3.0 a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements, namely the “Oki Data test”. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark.
In this case, and cross-referencing the facts with the Oki Data principles (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903), the Panel finds as follows:
1. Is the Respondent selling the Complainant’s goods? The Complainant has not specified anything about the goods which are sold through the website. This Panel can appreciate in Annex 5 of the Complaint that the Respondent appears to sell products under the trademarks LAGERFELD and KARL LAGEFELD. Those trademarks, as explained above and disclosed in Annexes 3 and 4 of the Complaint are hold by the Complainant.
2. Is the Respondent’s site being used exclusively for the purpose of selling the Complainant’s goods? The Annex 5 of the Complaint contains screenshots of the content of the webpage. Those screenshots only show products marketed under the word trademarks LAGERFELD and KARL LAGERFELD.
3. Do the Respondent’s site accurately states the Respondent’s relationship with the Complainant? No, they give the impression, contrary to fact, that the Respondent is linked to the Complainant’s trademarks.
In order to fulfill this requirement the site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. See, i.e., Doro AB v. Electronic Commerce Organization, S.L,WIPO Case No. D2014-0523; Birkenstock Orthopädie GmbH & Co. KG v. JL Innoways Co. Ltd., Jihao Jiang,WIPO Case No. D2012-1202; Advance Magazine Publishers Inc. / Les Publications Conde Nast S.A. v. Chunhai Zhang,WIPO Case No. D2012-0136.
4. Is the Respondent seeking to “corner the market” in domain names that reflect the Complainant’s trademark? The Panel cannot answer this question with the information provided by the Complainant.
Thus, the Respondent fails to meet at least one of the Oki Data principles and has not sought to persuade the Panel that it has any relevant rights or legitimate interests; nor can the Panel conceive of any basis upon which the Respondent might be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
The Complainant is a fashion company and is the proprietor of the word trademarks LAGERFELD and KARL LAGERFELD. An overview of the Complainant worldwide trademark registration is attached as Annex 3 and Annex 4 of the Complaint. Those trademarks have been used in commerce for almost 40 years and are currently present in 96 countries.
The Domain Name was registered on February 7, 2018 and its website offers products branded with the trademarks of the Complainant. As a result, the Panel finds that the Respondent was aware of Complainant’s trademark rights and targeted the Complainant when it registered the confusingly similar Domain Name.
The Panel notes that the look and feel of the Respondent’s website has been engineered to suggest a direct connection to the Complainant’s without the Complainant’s permission. Taken together, these elements support the conclusion that the Domain Name has been adopted with the purpose of improperly trading on the Complainant’s goodwill in association with the Complainant’s trademarks.
Accordingly, the Panel finds that the Respondent registered and is using the Domain Name in bad faith under the Policy.
Therefore, the Panel finds that Complainant has satisfied the requirements under paragraph 4(a)(iii) 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 Domain Name be transferred to Karl Lagerfeld B.V.
Carolina Pina-Sánchez
Sole Panelist
Date: August 17, 2018
Full & Egal Universal Law Academy