The Complainant is Maggie Sottero Designs, L.L.C. of Salt Lake City, Utah, United States of America (“USA”), represented by Sparke Helmore, Australia.
The Respondent is Fengkun of Fushun, 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 March 21, 2019. On March 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 2019, 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 March 26, 2019 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 March 31, 2019.
On March 26, 2019, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on March 29, 2019. 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 in English and Chinese of the Complaint, and the proceedings commenced on April 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2019.
The Center appointed Jonathan Agmon as the sole panelist in this matter on May 3, 2019. 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, Maggie Sottero Designs L.L.C., is a well-known designer, manufacturer and wholesaler of distinctive bridal gowns (Maggie Sottero Gowns), each of which is manufactured in China and sold worldwide under the Maggie Sottero brand. The Complainant was established in 1997 and to-date, has designed more than 3,000 styles of Maggie Sottero Gowns, manufactured and sold in excess of 1.5 million Maggie Sottero Gowns and launched more than 50 collections of Maggie Sottero Gowns.
The Complainant is the owner of at least 46 registered trademarks worldwide for the mark MAGGIE SOTTERO (or equivalent transliteration), including but not limited to:
- MAGGIE SOTTERO (Trademark No. 2415876) registered in USA on December 26, 2000;
- MAGGIE SOTTERO (Trademark No. 2281954) registered in United Kingdom on March 15, 2002;
- MAGGIE SOTTERO (International Registration No. 942290) registered on October 17, 2007;
- MAGGIE SOTTERO (Trademark No. 301946278) registered in Hong Kong, China on June 15, 2011;
- MAGGIE SOTTERO (Trademark No. 22909149) registered in China on April 21, 2018;
The Complainant (or its licensees) is also the holder of at least 15 domain names that incorporate the MAGGIE SOTTERO mark, including but not limited to:
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The disputed domain name was registered on November 28, 2018 and resolves to an active website with pornography content. 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 MAGGIE SOTTERO mark as the disputed domain name wholly incorporate the MAGGIE SOTTERO trademark and only differ from the MAGGIE SOTTERO trademark by deliberate misspelling of a substitution of “a” in the mark as “maggiasottero”. The Complainant asserts that it has rights in the trademark through numerous trademark registrations and that the Respondent’s use of its mark in the disputed domain name and website is intended to mislead Internet users to the Respondent’s website by making a typographical error in keying in the Complainant’s MAGGIE SOTTERO mark.
The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name as it has not licensed or permitted the Respondent to use any its trademark or register the disputed domain name.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith as the Respondent is using the disputed domain name with the intention to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. 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.
The Complainant requested that the language of the proceeding be English.
The Respondent did not comment on the language of the proceeding.
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.” (See 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 Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language;
(iii) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.
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 worldwide and in China, where the Respondent is based and registered the disputed domain name.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. It is well established that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by UDRP panels to be confusingly similar to the complainant’s mark.
Consequently, the Panel finds the Complainant has shown that the disputed domain name is confusingly similar to the Complainant’s MAGGIE SOTTERO mark in which the Complainant has rights as the substitution of “e” for “a” is not sufficient to avoid confusing similarity (see Schneider Electric S.A. v. Domain Whois Protect Service / Cyber Domain Services Pvt. Ltd.,WIPO Case No. D2015-2333). 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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 worldwide and in China 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 Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name which is 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 registration for the MAGGIE SOTTERO trademark since the year 2000. In view of the evidence filed by the Complainant, and the widespread use of the MAGGIE SOTTERO trademark globally, 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 (see Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Furthermore, the disputed domain name appears to be an intentional misspelling of the Complainant’s trademark which the Panel finds is an attempt by the Respondent to confuse and/or mislead Internet users seeking or expecting the Complainant. 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). 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 Complainant has submitted evidence that the disputed domain name resolves to an active website with pornographic content with pay-per-click services. Past UDRP panels have found that the use of a domain name to host pay-per-click links does not represent a bona fide offering where such links 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 this instance, the bottom of the Respondent’s website hosts a parked page of pay-per-click services associated with pornography that can only tarnish the Complainant’s goodwill and reputation. Under the circumstances of this case, such use does not represent a bona fide offering of goods or services and would therefore serve to indicate that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant also submitted evidence that its trademark MAGGIE SOTTERO is not a descriptive term that is made up of various names and does not have any specific meaning. The Complainant’s MAGGIE SOTTERO mark is comprised of “Maggie” is short for “Margaret”, being the middle name of Lesley Margaret “Maggie” Webster, the original Design Director of Maggie Sottero and wife of the CEO, Wayne Webster. Margaret is also the middle name of Lesley’s mother, Dorothy Margaret Steiner (also a former Designer of Maggie Sottero), and the first name of Lesley’s grandmother. Sottero is the family name of Lesley’s great‑grandmother. As such, the Panel is of the view that the Respondent could not have registered the disputed domain name without actual prior knowledge of the Complainant’s highly distinctive mark which is further indication of the Respondent’s bad faith in registering the disputed domain name.
In the present case, the evidence submitted by the Complainant demonstrates that the purpose of the disputed domain name is to target the Complainant and ride on the reputation of the Complainant to misdirect unsuspecting Internet users to the Respondent’s website by mistakenly keying in the Complainant’s mark and increase Internet traffic to the Respondent’s website (see E, Inc v. Triple E Holdings Limited, supra).
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 draws the inference 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: May 14, 2019
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