The Complainant is Harmont & Blaine S.P.A., Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondent is Song Chao, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2019. On November 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 2019, the Registrar transmitted by email to the Center its verification response disclosing the registrant and contact information for the disputed domain name which differed from the named Respondent and contact information therefor in the Complaint. The Center sent an email communication to the Complainant on November 18, 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 November 19, 2019. On November 18, 2019, the Center transmitted 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 November 19, 2019. 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 November 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2019. Given an oversight in the first notification, the Center re-notified the Respondent of the Complaint on December 4, 2019, and the new due date for Response was therefore December 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2019. The Center appointed Joseph Simone as the sole panelist in this matter on January 6, 2020. 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 Founded in Naples in 1995, the Complainant is an Italian company that produces high-end sports clothing for men, women and children. It promotes the clothing with the trademark HARMONT & BLAINE and its signature Dachshund logo. The company’s distribution network comprises 70 Harmont & Blaine signature boutiques in Italy and 60 around the world, over 1000 multi-brand sales outlets internationally, and a strong presence in chain stores and shopping malls in capital cities. The Complainant owns the following trademarks: Mark Jurisdiction Registration No. Class Registration Date HARMONT & BLAINE and Dachshund logo International 796764 25 January 14, 2003 HARMONT & BLAINE and Dachshund logo China 3993340 18 February 21, 2009 HARMONT & BLAINE and Dachshund logo European Union 002627925 3, 14, 25 June 20, 2003 The Complainant operates official websites at “www.harmontblaine.com” and “www.harmontblaine.it”. The disputed domain name The Complainant’s main arguments are as follows: 1. The disputed domain name is identical or similar to its trademark HARMONT & BLAINE. The disputed domain name contains the first part of the Complainant’s trademark “harmont”, and replaces the second part “blaine” with the word “lovely”. Where a dominant feature of the mark is recognizable, the domain name will normally be considered as confusingly similar to that mark. Therefore, the replacement of the term “blaine” with “lovely” is insufficient to avoid confusion. In addition, in specific instances, the broader context such as website content trading off the Complainant’s reputation may be considered. In this case, the content of the website to which the disputed domain resolves displays the Complainant’s trademark and logo in its entirety, and mirrors that of the Complainant’s website. This therefore supports a finding of confusing similarity. 2. The Respondent has no rights or legitimate interest in respect of the disputed domain name. The Complainant did not grant the Respondent an authorization or licence to use the Complainant’s trademarks. The registration and use of the website to display the Complainant’s official logo and advertise products for sale allegedly made by the Complainant makes it difficult to infer a legitimate use. There is no evidence that the Respondent owns trademarks or a business registered under the Harmont and / or Harmont Lovely brands. Based on information and belief, the Respondent is not known by Harmont and / or Harmont Lovely names, nor has ever made a bona fide use of the disputed domain name. 3. The disputed domain name was registered and is being used in bad faith. The Complainant’s trademark and logo are internationally renowned signs. The Complainant has registered several domain names comprising its trademark, and it has published company information through its official websites since 2000. Therefore, the Respondent could not have been unaware of the Complainant’s trademarks. The Respondent was never authorized to sell products or services under the HARMONT & BLAINE trademark and / or logo, yet the Respondent is using the disputed domain name to host a website advertising products for sale under the Complainant’s trademarks. The Complainant thereby misleads Internet users looking for the Complainant’s website and hinders the Complainant’s business. The Respondent does not reveal his identity on the WhoIs record, nor on the website, which may be a further inference 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 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.” Therefore, the default language of the proceeding shall be Chinese. However, the Complainant filed the Complaint in English and requested that English be the language of the proceeding, for the main reason that all of the contents of the website connected to the disputed domain name are in English. Therefore, it is reasonable to assume that the Respondent understands English. To proceed in Chinese would create undue difficulties and expense for the Complainant. The Panel agrees that it appears the Respondent can understand English or has access to interpretation services. In addition, the Respondent was notified of each step of the proceedings in both Chinese and English, and did not respond regarding the choice of language, or submit a formal response. Therefore, there is no reason to require the Complainant to re-submit the Complaint in Chinese. Accordingly, the Panel shall conduct the proceedings in English. 6.2 Substantive Issues A. Identical or Confusingly Similar Under the first element of the Policy, a complainant must prove that a 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 shown that it owns trademark registrations for HARMONT & BLAINE, and therefore, it possesses rights to the mark. The disputed domain name contains the first part of the Complainant’s trademark “harmont”, followed by the word “lovely”. As the term “lovely” is descriptive, the dominant feature of the disputed domain name is therefore the distinctive term “harmont”, and it can be considered confusingly similar to the Complainant’s trademark. This impression is affirmed by the content of the website to which the disputed domain name resolves. It contains the Complainant’s distinctive trademark and Dachshund logo in its entirety, in the context of selling apparel and footwear, which is the Complainant’s field of business. Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests Under the second element, a complainant must demonstrate that the respondent should be deemed as having no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii) of the Policy). The Complainant submits that it has no affiliation with the Respondent and has never authorized the Respondent to register the disputed domain name. There is also no evidence that the Respondent is commonly known by the disputed domain name, or has any other plausible reason to register a domain name containing “harmontlovely”. In the absence of authorization, the use of a domain name confusingly similar to the Complainant’s trademark to advertise products for sale under the Complainant’s trademark and logo, cannot confer rights or legitimate interests on the Respondent. There is a clear risk of implying a false affiliation with the Complainant. In the absence of any evidence presented by the Respondent to the contrary, the Panel concludes that the Respondent has no rights or legitimate interest in the disputed domain name. C. Registered and Used in Bad Faith Under the final element of the Policy, the Complainant must prove that a disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy). The Complainant’s evidence and online searches show that through marketing and international expansion over the last 20 years, the Complainant has established significant goodwill in the trademark HARMONT & BLAINE and accompanying Dachshund logo. Against this background, the Panel infers that the Respondent had actual knowledge of the Complainant’s rights when registering the disputed domain name, particularly in the context of the content on the website to which the disputed domain name resolves. Without authorization, the Respondent is using the website to advertise clothing and apparel for sale under the Complainant’s distinctive trademarks and bearing those trademarks. The website has the look and feel of an official Harmont & Blaine website, and implies that it is a sales outlet of the Complainant. Products are advertised at prices far below their retail value, suggesting that they may in fact be counterfeit. Furthermore, searches against the Complainant on Google return both the Complainant’s official websites and the Respondent’s website advertised as “HARMONT BLAINE WHOLESALE”. The Respondent clearly intends to mislead and deceive consumers into believing that it is an affiliated, authorized outlet of the Complainant. There is a real risk that consumers will believe that the website is authorized, and that advertised products are genuine Harmont Blaine goods. In all the circumstances, it is clear that the Respondent is riding on the reputation of the Complainant, and intends to interfere with the Complainant’s business. Therefore, the Panel concludes that the disputed domain name was registered and is being used in bad faith. 7. Decision For the foregoing reasons, the Panel orders that the disputed domain name Joseph Simone
Sole Panelist
Date: January 20, 2020
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