The Complainant is Badgley Mischka, LLC of Huntington Beach, California, United States of America (“USA”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Sun Qifeng of Suqian, Jiangsu, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2018. On September 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 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 September 11, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding and the Respondent requested that Chinese be the language of the proceeding on the same day.
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 September 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2018. The Respondent did not submit any substantive response. Accordingly, on October 9, 2018, the Center informed the Parties that it would proceed with panel appointment.
The Center appointed Jonathan Agmon as the sole panelist in this matter on October 16, 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, Badgley Mischka, LLC, was founded in 1988 by American fashion designers Mark Badgley and James Mischka. Over the past 30 years, the Complainant has flourished into a true lifestyle brand recognizable worldwide. To date, the Badgley Mischka brand includes multiple product categories such as eveningwear, day dresses, sportswear, outerwear, bridal, swimwear, footwear, handbags, eyewear, timepieces and jewelry and most recently home furnishing.
Internationally, the Complainant has store locations in over 45 countries worldwide with boutique locations in some of the largest cities in the world including: Hong Kong, Shanghai, Beijing, and London. In the USA, the Complainant’s products are sold in over 46 locations across 26 cities. More specifically, in China, where the Respondent resides, the Complainant’s products are sold at 13 retail locations.
The Complainant is the owner of numerous trademarks for the mark, BADGLEY MISCHKA, including:
- BADGLEY MISCHKA (Registration No. 7027005) registered in China on November 7, 2010;
- BADGLEY MISCHKA (Registration No. 7027009) registered in China on October 7, 2010;
- BADGLEY MISCHKA (Registration No. 7027010) registered in China on June 28, 2010;
- BADGLEY MISCHKA (Registration No. 8449327) registered in China on June 28, 2012;
- BADGLEY MISCHKA (Registration No. 8870788) registered in China on February 21, 2012;
- BADGLEY MISCHKA (Registration No. 13085050) registered in China on January 7, 2015;
- BADGLEY MISCHKA (Registration No. 2939742) registered in the USA on April 12, 2005;
- BADGLEY MISCHKA (Registration No. 3204658) registered in the USA on January 30, 2007.
The disputed domain name was registered on January 17, 2018. The disputed domain name resolves to a parking website with a list of links that when clicked, redirect visitors to other websites of a commercial nature.
The Respondent appears to be an individual living in China. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions include the following:
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s registered mark BADGLEY MISCHKA as the disputed domain name incorporates the BADGLEY MISCHKA mark in its entirely and only differs from the BADGLEY MISCHKA mark by the addition of the generic, descriptive term “beauty”. The Complainant states that it has rights in the trademark through its numerous trademark registrations and that by the Respondent’s use of the disputed domain name, together with the Top-Level Domain (“TLD”) extension which should not be taken into account, there is confusing similarity between the disputed domain name and the Complainant’s BADGLEY MISCHKA mark.
The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name as the Complainant’s numerous registrations of the BADGLEY MISCHKA mark constitute prima facie evidence of the validity of the BADGLEY MISCHKA trademark and of its ownership and exclusive rights to use the trademark in commerce or in connection with the goods and/or services specified in the registration certificates. The Complainant also contends that the Respondent is not sponsored or affiliated with the Complainant and did not give the Respondent permission to use the BADGLEY MISCHKA mark in any manner. The Complainant also argues that the Respondent is offering the disputed domain name for sale in an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the disputed domain name and has requested for payment from the Complainant in exchange of the transfer of the disputed domain name, thereby further showing the Respondent’s lack of rights and legitimate interests.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith. The Complainant argues that the Respondent possessed actual notice and knowledge of its BADGLEY MISCHKA mark due to its fame and the Respondent had acted in bad faith by registering the disputed domain name. The Complainant also argues that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website…by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location of a product or service on [the Respondent’s] website or location,” thereby demonstrating a nefarious intent to capitalize on the Complainant’s fame and goodwill to increase traffic to the disputed domain name’s website for the Respondent’s gain. The Complainant also argues that the disputed domain name resolves to a pay-per-click website and that the Respondent has been engaging in a pattern of cybersquatting/typosquatting which is further evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Paragraph 11 of the Rules provides that:
“(a) 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 language of the Registration Agreement for the disputed domain name is Chinese and the default language of the proceeding should be Chinese.
The Complainant requested that the language of the proceeding be English.
The Respondent requested that the language of the proceeding be Chinese.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006‑0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain name consists of Latin letters, rather than Chinese characters;
(ii) The Respondent had corresponded with the Complainant in English in its response to the Complainant’s cease-and-desist letters and in its attempt to sell the disputed domain name to the Complainant. This indicates that the Respondent understands the English language and would not be unfairly treated by having the proceeding carried out in English;
(iii) To require the Complainant to translate the Complaint and all other supporting documents into Chinese would cause an unnecessary burden to the Complainant and unnecessary delay the proceeding;
(iv) There are prior cases involving the Respondent that were conducted in the English language;
(v) Although the Respondent has requested that the proceeding be in Chinese, the Respondent has not provided any reasons for his request and has elected not to respond to the Complaint.
Upon considering the above, the Panel determines that English be the language of the proceeding. 6.2 Substantive Issues A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has provided evidence of its numerous trademark registrations in the USA and China, where the Respondent is based.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain name integrates the Complainant’s BADGLEY MISCHKA trademark in its entirety (see Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller,WIPO Case No. D2008-1345).
It is well established that the addition of a descriptive term would not prevent a finding of confusing similarity between a disputed domain name and a complainant’s mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. Here, the addition of the descriptive term “beauty” does not avoid confusing similarity.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. (See WIPO Overview 3.0, section 2.1.)
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Complainant has provided evidence that it owns various trademark registrations in China and the USA long before the disputed domain name was registered and that it is not affiliated with nor has it licensed or otherwise permitted the Respondent to use the Complainant’s trademark. (See LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010‑0138.)
The Complainant also provided evidence that the Respondent is not commonly known by the disputed domain name. (See WIPO Overview 3.0, section 2.3). Further, the addition of the term “beauty” to the disputed domain name is within the Complainant’s field of commerce or indicating services related to the BADGLEY MISCHKA mark which likely triggers an inference of affiliation with the Complainant and does not constitute fair use of the disputed domain name. (See WIPO Overview 3.0, section 2.5.1.)
For reasons set out in more detail in the section below, the Panel does not consider the Respondent’s use of the disputed domain name to be bona fide within the meaning of paragraphs 4(c)(i) or 4(c)(iii) of the Policy.
The Respondent did not submit a Response to the Complainant and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must also show that the Respondent registered and is using the disputed domain name in bad faith (see Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned registrations for the BADGLEY MISCHKA trademark since the year 2005. In view of the evidence filed by the Complainant, and the widespread use of the BADGLEY MISCHKA trademark, it is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Furthermore, the disputed domain name includes the Complainant’s trademark in its entirety with the term “beauty”. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). Here, the term “beauty” is closely associated with the Complainant’s brand and trademark which only serves to increase the likelihood of confusion between the disputed domain name and the Complainant’s trademark. To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The disputed domain name resolves to a parked page comprising pay-per-click links. Past UDRP panels have found that the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see WIPO Overview 3.0, section 2.9).
In the present case, the evidence provided by the Complainant demonstrates that the sole purpose of the disputed domain name is to resolve to a parked page with pay-per-click links, said links are all connected with the Complainant goods. Such use demonstrates that the Respondent has used the disputed domain name to obtain a commercial benefit through capitalizing on the Complainant’s mark (see Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258). The Panel is convinced that the Respondent is using the Complainant’s trademark without authorization for the purpose of attracting visitors which may be confused into believing, at least initially, that the website under the disputed domain name is in some form connected or endorsed by the Complainant, when it is not (see Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273). The Respondent’s behavior is yet another indication of bad faith registration and use of the disputed domain name.
Moreover, the evidence provided by the Complainant shows that the Respondent targeted the Complainant and that the ultimate purpose of purchasing and registering the disputed domain name was to sell the disputed domain name to the Complainant, for an amount exceeding the Respondent’s out-of-pocket costs. In pre-Complaint correspondence, in reply to a cease-and-desist letter sent by the Complainant’s representative, the Respondent offered to sell the disputed domain name to the Complainant, first for USD 5,200, then later for USD 2,500.
Targeting of the Complainant is also evident in this case in view of the fact that the Complainant’s trademark is highly distinctive, the disputed domain name comprises the Complainant’s trademark in its entirety, and the website under the disputed domain name offers pay-per-click links to businesses, which compete with the Complainant.
Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant’s marks, the confusing similarity between the disputed domain name and the Complainant’s marks, the Respondent’s use of the disputed domain name, the Respondent’s failure to present any credible rationale for registering the disputed domain name, and the fact that is no plausible good faith use the Respondent can put the disputed domain name to, the Panel finds that the disputed domain name was 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 transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: October 28, 2018
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