The Complainant is Winter Holding GmbH & Co. KG, Germany, represented by Bardehle Pagenberg, Germany.
The Respondent is Dmitrii Makarov, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2020. On August 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 5, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Registrar confirmed that the language of the Registration Agreement for the Domain Name is Russian. On August 17, 2020, the Center sent an email communication in both English and in Russian to the Parties regarding the language of the proceeding. On August 18, 2020, the Complainant submitted its request for English to be the language of the proceeding. The Respondent did not object to the Complainant’s request. The Center sent an email communication to the Complainant on August 17, 2020, 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 August 18, 2020. 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 in both Russian and English, and the proceedings commenced on August 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2020. The Center appointed Olga Zalomiy as the sole panelist in this matter on September 24, 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 The Complainant is a women’s outerwear company based in Nußloch, Germany. The Complainant owns the following registrations for the BETTY BARCLAY trademark: - International Registration No. 1434800 registered on September 24, 2018; - International Registration No. 378147 registered on April 6, 1971; - International Registration No. 1445068 registered on September 26, 2018. The Respondent registered the Domain Name on July 8, 2020. The Domain Name resolves to an online store that offers for sale heavily discounted purported BETTY BARCLAY clothing items as well as clothing under brands of third parties. 5. Parties’ Contentions A. Complainant The Complainant claims that the Domain Name is confusingly similar to the Complainant’s BETTY BARCLAY trademark because the Domain Name incorporates the BETTY BARCLAY mark in its entirety. The Complainant submits that generic Top-Level Domains (“gTLD”), such as “.store” are irrelevant to confusing similarity analysis. The Complainant argues that had the gTLD been taken into account for the analysis purposes, the Domain Name would have been even more confusingly similar to the Complainant’s mark because the combination of the term “store” with the Complainant’s mark would create an impression that the Domain Name directs to the Complainant’s online store. The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name for several reasons: (i) the Respondent is not and has not been commonly known by the Domain Name. (ii) the Complainant did not authorize the Respondent to use the Complainant’s BETTY BARCLAY mark. (iii) the Respondent’s registration and use of the Domain Name for a commercial website offering unauthorized, counterfeit versions of the Complainant’s clothing as well as clothing under third party brands does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the UDRP. The Complainant states that the Respondent’s registration and use of the Domain Name constitutes bad faith because the Respondent has used the Domain Name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s BETTY BARCLAY mark as to the source, sponsorship, affiliation, and/or endorsement of the Domain Name, the Respondent’s website, and the counterfeit products offered therein. The Complainant asserts even if the Respondent resells genuine Complainant’s goods, he may not sell third parties’ goods under different brands on the website connected to the Domain Name consisting of the Complainant’s mark. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6. 1. Procedural Issue - Language of the Proceeding Under paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement, unless the parties agree to use a different language, or the registration agreement provides otherwise. The Panel has the right to determine the language of the administrative proceeding based on the circumstances of the case. Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding should be Russian. However, the Complainant requested that English be the language of the administrative proceeding because the Complainant is unable to communicate in Russian, so requiring the Complainant to submit documents in Russian would delay the proceeding and cause the Complainant to incur expenses. In addition, the Complainant claims that it would be unfair to require the Complainant to communicate in Russian because the Respondent is using the Domain Name for a website selling counterfeit goods and is trading on the reputation of the Complainant’s trademark. Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. “Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, […] (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint.” See section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Having considered all circumstances of this case and relevant Policy considerations, the Panel finds that English is an appropriate language of this proceeding for the following reasons: (i) it is likely that the Respondent can understand English because the Domain Name directs to a dual English/Russian language website; (ii) the language of the Domain Name is English, which is the same as the Complainant’s trademark; (iii) the Respondent did not object to the Complainant’s request to conduct this proceeding in Russian; (iv) it would be unfair to the Complainant to force it to incur translation expenses in the situation, where the Respondent chose not to participate in the proceeding. It would also cause an unwarranted delay. 6.2 Substantive Issues Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name: (i) the 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 Domain Name; and (iii) the Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights. The evidence in this case shows that the Complainant owns several trademark registrations for the BETTY BARCLAY trademark. Pursuant to section 1.2.1 of the WIPO Overview 3.0, this satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. The Domain Name The Complainant has proven the first UDRP element. B. Rights or Legitimate Interests To prove the second UDRP element, the Complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the Respondent. It is undisputed that the Complainant has not authorized the Respondent to use its BETTY BARCLAY mark. Nor it is disputed that that the Respondent Dmitrii Makarov is not commonly known by the Domain Name or that the Respondent has not used the Domain Name for a legitimate noncommercial or fair use. The Complainant asserts that the website at the Domain Name offers for sale counterfeit versions of the Complainant’s clothing. However, the Complainant provides no evidence to support this allegation and even concedes that it is unaware whether the Respondent’s goods are, in fact, counterfeit. Therefore, the Panel cannot conclude that the merchandise sold on the Respondent’s website is counterfeit. Previous UDRP panels have recognized that resellers using domain names containing the complainant’s trademark to undertake sales of the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain names in some situations.3 Outlined in the Oki Data Test, the following cumulative requirements must be satisfied for respondent to make a bona fide offering of goods and services: “(i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.”4 Here, the Respondent is using the Domain Name to direct to a website in Russian and English languages offering for sale purported BETTY BARCLAY clothes, as well as purported designer clothes manufactured by Complainant’s competitors. The Respondent’s website offers no information about the Registrant or its relationship with the Complainant, which might create an impression that the Respondent’s website belongs to an authorized reseller of the Complainant’s products. Since use of the Domain Name cannot be considered “fair if it falsely suggests affiliation with the trademark owner”5, the Respondent fails to satisfy the requirement of bona fide offering of goods or services. The Panel finds that the Complainant has made out the prima facie case and the burden of producing evidence demonstrating it has rights or legitimate interests in the Domain Name shifted to the Respondent. Because the Respondent failed to present any rebutting evidence, the Complainant is deemed to have satisfied the second element of the UDRP. C. Registered and Used in Bad Faith Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith. Given that the Respondent used the Complainant’s trademark in the Domain Name that resolves to the website offering for sale the Complainant’s goods at a significant discount; that there is no relationship between the parties; and that he Respondent registered the Domain Name 49 years after the Complainant’s trademark registration, the Panel concludes that the Respondent registered the Domain Name in bad faith. The Panel finds that the Respondent registered and is using the Domain Name in bad faith pursuant to paragraph 4(b)(iv) of the UDRP, which provides that bad faith registration and use can be found where a respondent, by registering and using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. The case record shows that the Respondent is using the Domain Name, that is identical to the Complainant’s trademark, to direct to a website that creates an impression of an online store licensed or affiliated with the Complainant. The website offers for sale purported the Complainant’s merchandise together with merchandise of third parties at heavily discounted prices. Absent any explanation from the Respondent, the Panel can find no other motive for the Respondent’s registration and use of the Domain Name except to capitalize on the Complainant’s trademark rights. The Panel finds that the Complainant has made out the requirements of paragraph 4(a)(iii) of the UDRP. 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 Domain Name Olga Zalomiy 1 Section 1.7, WIPO Overview 3.0. 2 Section 1.11.1, WIPO Overview 3.0 3 Section 2.8.1, WIPO Overview 3.0 4 Oki Data Americas, Inc. v. ASD, Inc., supra. 5 Section 2.5, WIPO Overview 3.0
Sole Panelist
Date: October 7, 2020
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