The Complainant is The Skullhead Luxembourg, Luxembourg, represented by Atlan & Boksenbaum Avocats, France.
The Respondent is Sun Xin Hai, 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 July 17, 2019. On July 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 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 July 24, 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 July 29, 2019.
On July 24, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On July 29, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 August 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2019.
The Center appointed Sok Ling Moi as the sole panelist in this matter on September 2, 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, a company established in Luxembourg, licenses a French company, The Kooples Production, to create, manufacture and distribute in France and internationally various fashion wear and accessories for men and women under the Complainant’s trade mark THE KOOPLES.
The Complainant is the proprietor of the following trade mark registrations for THE KOOPLES:
Jurisdiction
Trade Mark
Registration No.
Registration Date
Class
International
THE KOOPLES
999463
November 28, 2008
3, 9, 14, 18, 25, 41, 45
International
THE KOOPLES
1119253
March 8, 2012
35
Europe
THE KOOPLES PARIS
17932720
November 13, 2018
14, 18, 25, 35
International
THE KOOPLES
978688
May 28, 2008
14, 18, 25
The disputed domain name was registered by the Respondent on October 31, 2018. The disputed domain name resolved to a website which reproduced the Complainant’s THE KOOPLES trade mark, and purported to offer for sale fashion wear and accessories under the Complainant’s brand. 5. Parties’ Contentions A. Complainant
The Complainant claims that the disputed domain name is confusingly similar to its trade mark.
The Complainant contends that the Respondent has registered the disputed domain name in order to gain an unfair financial benefit on the fame of the Complainant’s trade mark. The Complainant alleges that the Respondent is offering for sale counterfeit fashion wear and accessories under the Complainant’s brand on its website. Hence, the Complainant claims that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant contends that the disputed domain name was registered primarily to disrupt the business of the Complainant, and used to create confusion and mislead Internet users into believing that the Respondent’s website is authorised by the Complainant. Hence, the Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith.
For all of the above reasons, the Complainant requests for the cancellation 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
Pursuant to paragraph 11(a) of the Rules, 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.
Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreements for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.
The Panel notes that:
(a) the disputed domain name is registered in Latin characters, rather than Chinese script;
(b) the contents of the website to which the disputed domain name resolves are in French, rather than Chinese;
(c) the generic Top-Level Domain of the Respondent’s email address (“[...]@”) comprises English words;
(d) the Center has notified the Respondent of the proceeding in both Chinese and English;
(e) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but chose not to do so; and
(f) the Center has informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to all Parties and is not prejudicial to any of the Parties in their ability to articulate the arguments for this case. The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
In view of all the above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English. 6.2 Substantive Finding
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in THE KOOPLES by virtue of its use and registration of the same as a trade mark.
The disputed domain name incorporates the dominant part of the Complainant’s trade mark THE KOOPLES in its entirety. The addition of the words “de” and “style” does not avoid the confusing similarity between the disputed domain name and the Complainant’s trade mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not impact the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark in this case.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of proof to establish that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence in support of its rights or legitimate interests in the disputed domain name. The respondent may establish its rights in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it 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.
See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd,WIPO Case No. D2013-0974.
According to the evidence submitted by the Complainant, the Respondent was using the disputed domain name to publish a website which reproduced the Complainant’s THE KOOPLES and THE KOOPLES PARIS trade mark. The Complainant alleges that the Respondent is offering for sale counterfeit fashion wear and accessories under the Complainant’s brand on its website. This suggests that the Respondent is using the disputed domain name to mislead Internet visitors by creating an affiliation with the Complainant where there is none.
There is no evidence suggesting that the Respondent is commonly known by the disputed domain name or has acquired any trade mark rights in the term “kooples”.
The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to come forward with evidence of its rights or legitimate interests in the disputed domain name. Since the Respondent has failed to respond, the Panel determines that the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The Complainant has registered THE KOOPLES as its trade mark since 2008. There is no doubt that the Respondent was aware of the Complainant’s trade mark when it registered the disputed domain name, given that it has reproduced the Complainant’s THE KOOPLES trade mark and product images and was offering for sale fashion wear and accessories under the Complainant’s brand on its website.
The Panel is satisfied that the Respondent’s purpose of registering the disputed domain name was to trade on the reputation of the Complainant and its trade mark by diverting Internet users seeking the Complainant’s branded products to its own website for financial gain. Irrespective of whether the products offered on the Respondent’s website are in fact counterfeit, the reproduction of the Complainant’s trade mark on the Respondent’s website without also displaying a clear disclaimer of a lack of relationship between the Respondent and the Complainant, is indicative of bad faith.
The Panel therefore determines that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel is satisfied that the Respondent is using the disputed domain name for mala fide purposes and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.
Such use of the disputed domain name not only misleads the public but also causes disruption to the Complainant’s business. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iii) of the Policy are also applicable to the present case.
The Center was not able to reach the Respondent at the facsimile numbers and address recorded with the Registrar, which may suggest that the Respondent had provided false contact details at the time of registering the disputed domain name, and which is a further indication of bad faith.
The Respondent has not denied the Complainant’s allegations of bad faith. In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 disputed domain name be cancelled.
Sok Ling Moi
Sole Panelist
Date: September 25, 2019
Full & Egal Universal Law Academy