The Complainant is Latimo S.A. of Luxembourg, represented by Pointer Brand Protection and Research, Netherlands.
The Respondent is Xinnet Whois Privacy Pro Service of Beijing, China / Li Xin Jun of Lianyungang, Jiangsu, China. 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 October 19, 2018. On October 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 24, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 25, 2018.
On October 24, 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 on October 25, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.
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 Respondent of the Complaint, and the proceedings commenced on October 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2018.
The Center appointed Joseph Simone as the sole panelist in this matter on November 28, 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
Vivienne Westwood is a brand of luxury clothing, shoes and accessories, founded by British fashion designer, Dame Vivienne Westwood. The Complainant, Latimo S.A., is the holder of Vivienne Westwood’s portfolio of intellectual property rights. The brand operates its main website under the domain name which contains the VIVIENNE WESTWOOD trademark.
The Complainant owns numerous trademark registrations for VIVIENNE WESTWOOD in China, the European Union and the United States of America. In China, they include the following:
- Chinese Trademark Registration No. 8724107 for the VIVIENNE WESTWOOD word mark in Class 25, registered on November 21, 2011;
- International Trademark Registration No. 896338 for the VIVIENNE WESTWOOD word mark in Classes 3, 9, 14, 18, 24, 25, including designation China, registered on June 22, 2006;
- International Trademark Registration No. 581088 for the VIVIENNE WESTWOOD logo with the Orb in Classes 3, 14, 18, including designation China, registered on January 3, 1992.
The disputed domain name, , was registered on May 11, 2017 by the Respondent, Li Xin Jun of Lianyungang, Jiangsu, China. From at least May 15, 2017, the disputed domain name resolves to a website offering Vivienne Westwood products for sale including shoes, jewelry, purses and wallets. The website also displays the trademarked Vivienne Westwood logo on the homepage and throughout the website. In the “About us” and “Blog” webpages, the Respondent claims affiliation with the Vivienne Westwood brand stating: “official Vivienne Westwood sale store”, “authorized by Vivienne Westwood Ltd, all the products are 100% authentic”, “as a dealer of Vivienne Westwood, all the products are from factory directly”.
On February 1, 2018, the Complainant received a complaint from a customer who ordered an item on the website and got a confirmation from the bank that the transaction was related to Beijing, China.
On March 16, 2018, the Complainant’s legal representatives contacted the Respondent requesting to stop trademark infringement and transfer the disputed domain name, but received no response.
The Complainant’s legal representatives also contacted the Respondent (using a third party’s name) to make a test purchase regarding a few items from the website in order to confirm their authenticity. They were asked by the Respondent to change their order multiple times, after being informed that the goods they chose were out of stock. Ultimately, the Respondent never shipped the items and refunded the money. 5. Parties’ Contentions A. Complainant
With respect to the first element, the Complainant submits that the disputed domain name is identical or confusingly similar to the mark VIVIENNE WESTWOOD in which it has rights. After disregarding the generic Top-Level Domain (“gTLD”) “.com”, the Complainant submits that the disputed domain name incorporates the trademark in its entirety and the addition of the descriptive term “sale” is insufficient to prevent confusing similarity.
In terms of the second element, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds. The Complainant has not authorized, licensed or otherwise permitted the Respondent to use the VIVIENNE WESTWOOD trademark in the disputed domain name or for any other purpose. The Respondent, before it had notice of the dispute, was not using the disputed domain name in connection with a bona fide offering of goods or services, nor is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The disputed domain name is used to offer Vivienne Westwood products for sale without authorization and does not accurately and prominently disclose the Respondent’s (lack of a) relationship with the Complainant. To the contrary, it offers the products under the VIVIENNE WESTWOOD trademark; copies copyright protected images of the Complainant’s products; displays the Complainant’s logo prominently on the homepage and throughout the website; contains a website footer “© 2018 Powered by Vivienne Westwood™. All Rights Reserved.”; and falsely claims (in the “About us” section of the website), to be “an official Vivienne Westwood products online sale store, authorized by Vivienne Westwood Ltd”. This all creates a likelihood of confusion that the website is a distributor or agent authorized or endorsed by Vivienne Westwood and prior UDRP panels have held that such use cannot be considered bona fide.
In further support of the second element, the Complainant submits that the Respondent has been engaged in illegal counterfeit activity on the following grounds. The goods are offered disproportionately below market value as compared to the prices charged by the Complainant on its official website or by its authorized distributors. The Respondent has misappropriated copyrighted images from the Complainant’s website. The Complainant received a consumer complaint that the product was never received. The Respondent improperly masked its identity to avoid being contactable and the test purchase made by the Complainant’s legal representatives never arrived.
With respect to the third element, the Complainant submits that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered on May 11, 2017, long after the registration of the VIVIENNE WESTWOOD trademarks. Because the Vivienne Westwood brand has been well-known internationally for many years in the fashion industry, it is unlikely that the Respondent was unaware of the Complainant at the time of registration. To the contrary, the Respondent intended to take advantage of the VIVIENNE WESTWOOD trademarks by using the website to sell Vivienne Westwood products. Thus, the Respondent, by registering and using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent’s bad faith is further indicated by its use of a privacy service to delay disclosure of identity, the failure to respond to the Complainant’s request for transfer of the disputed domain name and the use of the website to offer presumptively counterfeit products. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of Proceeding
The Complainant filed the Complaint in English and requested that English be the language of proceedings on the grounds that the Respondent has sufficient knowledge of English to be able to understand and reply to the Complaint, and that requiring the Complainant to translate the Complaint into Chinese would result in an undue burden on the Complainant and delay of proceedings. The Complainant submits that the Respondent is using English as the language of the website to which the disputed domain name resolves, the active webpages are in English and the disputed domain name contains the Latin script word “sale”. The Complainant also gives evidence that the Respondent replied in English to the Complainant’s legal representatives’ English emails. The Complainant has no objection to the proceeding being conducted in both English and Chinese.
In accordance with paragraph 11 of the Rules:
“…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.”
Given the foregoing, prima facie, the language of the proceeding should be Chinese. However, noting the aim of conducting proceedings with due expedition while also ensuring that each party is given a fair opportunity to present its case, section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides for certain scenarios which may warrant proceeding in a language other than that of the registration agreement. These include (i) evidence that the Respondent understands the language of the complaint and (ii) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint.
The Panel has reviewed the website to which the disputed domain name resolves and the English language correspondence referred to by the Complainant, and concludes that the Respondent is capable of understanding and responding in English. Furthermore, the Respondent was notified in both English and Chinese regarding the nature of the proceeding and issue of language, and failed to express a language preference or submit a formal response, therefore the Panel believes there will be no prejudice caused by proceeding in English. In keeping with the Policy’s aim of facilitating a time-and-cost-efficient procedure for the resolution of domain name disputes, the Panel accordingly determines that it would be appropriate for English to be the language of the proceeding. 6.2 Substantive Issues A. Identical or Confusingly Similar
Under the first element of the Policy, a complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainant has given evidence of its numerous trademark registrations for VIVIENNE WESTWOOD, including in China, where the Respondent is located. The Complainant must then demonstrate that the disputed domain name is identical or confusingly similar to the trademark. Per section 1.7 of WIPO Overview 3.0, the test for whether the domain name is identical or confusingly similar to the trademark is a relatively straightforward comparison. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold test (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies,WIPO Case No. D2004-0962).
When comparing the domain name with the trademark, the gTLD “.com” may be disregarded (section 1.11 of WIPO Overview 3.0; F. Hoffmann-La Roche AG v. Domain Admin/xcite,WIPO Case No. DCC2007-0003).
In this case, the disputed domain name is obviously recognizable as containing the trademark VIVIENNE WESTWOOD with the addition of the term “sale”. It is well established that the addition of a merely descriptive term to a trademark does not prevent a finding of confusing similarity under the first element (section 1.8 of WIPO Overview 3.0; VKR Holding A/S v. Li Pinglong,WIPO Case No. D2016-2269; Pfizer inc. v. Blue Viagra,WIPO Case No. D2004-0732).
Therefore, the Panel is satisfied the disputed domain name is confusingly similar to the Complainant’s mark and the first requirement of the UDRP is satisfied. B. Rights or Legitimate Interests
A complainant must then demonstrate that the respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name that is the subject of the complaint (paragraph 4(a)(ii) of the Policy).
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the panel, will demonstrate a respondent’s rights or legitimate interests in the disputed domain name. The Panel accepts that there is no relationship between the Complainant and the Respondent that would give rise to authorization to use the trademark in the disputed domain name nor is there anything to suggest the Respondent is commonly known by the disputed domain name. The use of the disputed domain name to mimic an authorized “sale” version of the official Vivienne Westwood website is clearly not bona fide or a legitimate use within the meaning of paragraph 4(c) of the Policy.
As the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests, the burden of production shifts to the Respondent (section 2.1 of WIPO Overview 3.0). As the Respondent did not submit a response, it has failed to present any evidence to establish rights or legitimate interests, and given the above analysis, the Panel believes it has none.
The second requirement of the UDRP is therefore satisfied. C. Registered and Used in Bad Faith
Under the third element of the Policy, a complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
A strong inference for bad faith arises where the Respondent knew or should have known of the Complainant’s trademark rights, particularly where the trademark is “so obviously connected with such a well-known name and products” (Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226). Given the fame and distinctive character of the Vivienne Westwood trademark, the fact that the disputed domain name exactly incorporates the trademark with the addition of the word “sale”, and the ultimate end use of the disputed domain name to sell Vivienne Westwood products, it is clear that the Respondent was well aware of the Complainant’s rights when it registered the disputed domain name.
In addition, the Respondent intended to ride on the reputation of the Complainant’s trademark by using the website to sell what are likely Vivienne Westwood counterfeit products under the pretense of an affiliation with the Complainant. This constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy. To that effect, the Respondent uses copyrighted images, trademarks and logos, claims to be an “official Vivienne Westwood sale store, authorized by Vivienne Westwood Ltd”, and claims its products are “100% authentic” directly from the factory. The fact that a consumer contacted the Complainant regarding the legitimacy of the website after making a purchase clearly indicates the likelihood of confusion and deceit arising from the use of the disputed domain name.
Accordingly, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith and the third requirement of the UDRP is 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 disputed domain name be transferred to the Complainant.
Joseph Simone
Sole Panelist
Date: November 30, 2018
Full & Egal Universal Law Academy