The Complainant is Sergio Rossi S.P.A., Italy, represented by Demys Limited, United Kingdom.
The Respondents are Liu dexing, China / Name Redacted1 , United Kingdom / Kyu, John Rex, United States of America / Jia Qi Yuan, Yi Wu Shi Yi Yun Dian Zi Shang Wu You Xian Gong Si, China. 2. The Domain Names and Registrars
The disputed domain names The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 26, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 27, 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 in English on September 30, 2019. On September 27, 2019, the Center also transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondents 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 Respondents in English and Chinese of the Complaint, and the proceedings commenced on October 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2019. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on November 1, 2019. The Center appointed Matthew Kennedy as the sole panelist in this matter on November 15, 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 is an Italian company founded in 1935 by Mr. Sergio Rossi. The Complainant designs, manufactures and produces woman’s footwear, handbags and other accessories. The Complainant sells its products through physical stores located around the globe and online at its official website located at the address “www.sergiorossi.com”. The Complainant holds trademark registrations in multiple jurisdictions, including European Union registered trademark number 000391656 for SERGIO ROSSI, registered on March 20, 2000 and specifying goods in classes 3, 18 and 25, including shoes and boots; and European Union registered trademark number 004466314, for SERGIO ROSSI in a fancy script (the “SERGIO ROSSI figurative mark”), registered on June 21, 2007, and specifying services in class 35, including wholesale and retail of footwear. Both trademark registrations remain current. The Respondents are, nominally, three individuals, a British university and a Chinese company. The contact postal addresses listed in the Registrar’s WhoIs database for the individuals Liu dexing and Kyu, John Rex are incomplete. The contact email address listed in the Registrar’s WhoIs database for the university is not in fact an email address of that university and there is no evidence on the record that it was the university that actually registered any of the disputed domain names. However, the contact details for Jia Qi Yuan, an individual, and Yi Wu Shi Yi Yun Dian Zi Shang Wu You Xian Gong Si, which appears to be the name of an e-commerce company, are complete and refer to an address in Yiwu, Zhejiang Province, China. The disputed domain name The disputed domain names are confusingly similar to the Complainant’s SERGIO ROSSI trademarks. The Complainant observes that the disputed domain names only differ from the Complainant’s marks by the additional adornments “mall”, “shop”, “store” and “stock” – all terms closely related to the retail industry in which the Complainant operates. The Respondents have no rights or legitimate interests in respect of the disputed domain names. The Complainant has found no evidence that the Respondents have been commonly known as “Sergio Rossi” with or without any of the other terms featured in the disputed domain names prior to or after the registration of the disputed domain names. The Respondents are not a licensee of the Complainant and has not received any permission or consent from the Complainant to use its trademarks. The Respondents intentionally attempted to attract, for commercial gain, web users to their website by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of its web site in terms of Policy paragraph 4(b)(iv). B. Respondents The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Procedural Issues A. Multiple Domain Name Registrants The amended Complaint initiates disputes in relation to nominally different domain name registrants. The Respondent Liu dexing is named as the registrant of the disputed domain name Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. However, the Panel does not consider that paragraph 3(c) was intended to enable a single person or entity to put a complainant to the unnecessary time, expense and effort of initiating multiple proceedings against technically different domain name registrants, particularly when each registration raises the same issues. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281 and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. As regards common control, the Panel notes that all five disputed domain names resolve to the same website, which displays a single contact email address. Moreover, the disputed domain names follow a pattern in that they all incorporate the same trademark (in some cases, with a typographical error) and they were all registered on the same day or within 48 hours of each other. In these circumstances, the Panel is persuaded that the disputed domain names are under common control. As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding. B. Language of the Proceeding Paragraph 11(a) of the Rules provides that “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 Registrar confirmed that that the Registration Agreement for the disputed domain name The Complainant requests that English be the language of the proceeding. Its main arguments are the disputed domain names all resolve to a website in English and four of the Registration Agreements are in English, which is strongly indicative that the Respondent is able to communicate in English; and that translation of the Complaint into Chinese would put the Complainant to great expense and inconvenience. Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the Parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293. The Panel observes that the Complaint and amended Complaint were filed in English. The Registration Agreements for four out of five of the disputed domain names are in English, and the Panel has found in Section 6.1A above that all five disputed domain names are under common control. Therefore, the Panel sees no reason to conduct the proceeding in different languages as regards different disputed domain names, whereas requiring the Complainant to translate the Complaint from English into Chinese as regards one of the disputed domain names would create an undue burden and delay. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements in respect of each disputed domain name: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (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. A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Complainant has rights in the SERGIO ROSSI trademark. Three of the disputed domain names wholly incorporate the SERGIO ROSSI trademark as their initial element while the other two disputed domain names incorporate that trademark misspelt without the final “i” as their initial element. Each of the disputed domain names also includes a dictionary word, variously “mall”, “shop”, “stock” or “store”, but as mere dictionary words these do not dispel the confusing similarity between the disputed domain names and the Complainant’s trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No.D2001-0110. The SERGIO ROSSI trademark or a misspelling of that mark remains clearly recognizable within each disputed domain name. The disputed domain names also include a generic Top-Level Domain (“gTLD”) suffix, variously “.best”, “.online”, “.site” or “.store”. As a mere technical requirement of registration, a gTLD suffix is disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy unless it has some impact beyond its technical function, which is not the case here. See WIPO Overview 3.0, section 1.11. Therefore, the Panel finds that each of the disputed domain names is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] 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] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark 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 trademark or service mark at issue. As regards the first circumstance set out above, the disputed domain names are now passively held but they each formerly resolved to websites displaying the Complainant’s SERGIO ROSSI figurative mark and offering for sale the Complainant’s products. The Complainant submits that the Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use its trademarks. Regardless of whether the products sold on the Respondent’s website were genuine or counterfeit, the website did not disclose the lack of a relationship between the Respondent and the Complainant. On the contrary, the display of the Complainant’s SERGIO ROSSI figurative mark gave the misleading impression that the website was affiliated with, or approved by, the Complainant. Therefore, the Panel does not find this to be a use of the disputed domain names in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. As regards the second circumstance, none of the names by which the Respondent is identified in the Registrar’s WhoIs database is the disputed domain name, nor even “Sergio Rossi”. There is no evidence indicating that the Respondent has been commonly known by any of the disputed domain names as envisaged by paragraph 4(c)(ii) of the Policy. As regards the third circumstance, the disputed domain names formerly resolved to websites offering products for sale, and they are now passively held. These are not legitimate noncommercial or fair uses of the disputed domain names within the circumstances of paragraph 4(c)(iii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that prima facie case because it did not respond to the Complaint. Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The fourth of these is as follows: (iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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] web site or location or of a product or service on [the respondent’s] website or location. With respect to registration, the disputed domain names were registered in 2019, many years after the registration of the Complainant’s SERGIO ROSSI trademarks. Each disputed domain name incorporates the SERGIO ROSSI trademark, or a misspelling of that mark, as its initial element. The disputed domain names formerly resolved to a website that prominently displayed the Complainant’s SERGIO ROSSI figurative mark and products, which gives the Panel reason to infer that the Respondent was aware of the Complainant, its trademarks and its products at the time of registration of the disputed domain names in August this year. The Panel finds that the Respondent deliberately chose to register the disputed domain names in bad faith. With respect to use, the Respondent formerly used the disputed domain names, which are confusingly similar to the Complainant’s SERGIO ROSSI trademark, to resolve to the same website displaying the Complainant’s SERGIO ROSSI figurative mark and offering for sale the Complainant’s products, giving the misleading impression that it was affiliated with, or approved by, the Complainant. Taking into account the findings in Section 6.2B above, the Panel finds that the Respondent was using the disputed domain names intentionally to attract, for commercial gain, Internet users to its website 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 of a service on the Respondent’s website, within the terms of paragraph 4(b)(iv) of the Policy. The Panel notes that the disputed domain names are now passively held. This change in use does not alter the Panel’s conclusions and may constitute further evidence of bad faith. Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in 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 names Matthew Kennedy 1 One of the Respondents appears to have used the name and some of the contact details of a third party when registering the disputed domain names
Sole Panelist
Date: November 20, 2019
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