The Complainant is Basic Trademark S.R.L., Italy, represented by Sindico e Associate., Italy.
The Respondent is Domain Admin, whoisprotection.cc, Malaysia / Katrin Jager, Katrin Jager, Germany. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2021. On February 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 3, 2021, after several reminders, 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 11, 2021, 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 amendment to the Complaint on March 12, 2021. The Registrar also indicated that the language of the Registration Agreement was Vietnamese. Since, the Complaint was filed in English, the Center sent an email communication to the Complainant on March 11, 2021, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, a Complaint translated into Vietnamese, or a request for English to be the language of proceedings. The Complainant filed a request for English to be the language of proceedings on March 12, 2021. The Respondent did not submit any arguments. The Center verified that the Complaint together with the amendment to the 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, and the proceedings commenced on March 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2021. The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on May 4, 2021. 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, Basic Trademark S.R.L., is an Italian company that is a part of the BasicNet Group, one of the market leaders in the design and marketing of clothing, footwear and accessories. The Complainant’s products are sold under various trademarks, including SUPERGA. The Complainant’s trademarks SUPERGA have been registered for goods and services in many classes including classes 03, 09, 14, 16, 18, and 25 in a variety of countries under a number of trademark registrations, including but not limited to the European Union trademark No. 003181492 registered on December 10, 2004; the international registration No. 1018404 registered on July 8, 2009. Additionally, the Complainant is the registrant of some domain names featuring the trademarks SUPERGA, notably the domain name The Disputed Domain Name The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows: (i) The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights. First, the Complainant contends that the Complainant is the registered owner of trademark registrations for SUPERGA in numerous countries. Also, the Complainant claims that the SUPERGA trademarks have been used extensively in Europe and all over the world. Besides, the Complainant contends that the Complainant is the owner of several domain names including SUPERGA trademarks. Second, the Complainant asserts that the Disputed Domain Name is confusingly similar to the SUPERGA trademarks owned by the Complainant since the Disputed Domain Name incorporates the Complainant’s trademarks SUPERGA in its entirety, and the addition of the non-distinctive elements “sg” and “outlets” could not dispel any likelihood of confusion. Finally, the Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) suffix “.com” in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name. (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant asserts the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Complainant has never authorized any third party to register any domain name containing the SUPERGA trademarks. (iii) The Disputed Domain Name was registered and is being used in bad faith. First, the Complainant argues that the Respondent has already been aware, or at least should have known of the SUPERGA trademarks at the time of registration of the Disputed Domain Name because of the fame and distinctiveness of the SUPERGA trademarks all over the world. The registration of the Disputed Domain Name without permission of the owner of SUPERGA trademarks would constitute bad faith. Second, the Complainant submits that the actual or constructive knowledge of the SUPERGA trademarks can be inferred from the use and reputation of SUPERGA trademarks and through a simple check of trademark registries worldwide for SUPERGA trademarks. Third, the Complainant argues that the Respondent’s registration and maintenance of the Disputed Domain Name is abusive when combining all the above-constituted evidence with the Respondent’s lack of legitimate rights to or interests in the Disputed Domain Name. Further, the Complainant contends that, by using of the Disputed Domain Name, the Respondent intentionally attempt to attract for commercial gain from the confusion with the Complainant’s trademarks. With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issues (i) Respondent’s Identity The Panel notes that at the time the Complaint was filed on February 11, 2021, the Respondent was identified as “Domain Admin”. On March 3, 2021, 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 11, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On March 12, 2021, the Complainant filed an amendment to the Complaint, adding the named Respondent in the initial Complaint with the underlying registrant. (ii) Language of the Proceeding The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement was Vietnamese. As the Complaint was filed in English, the Center, in its notification dated March 11, 2021, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) submit the Complaint translated into Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding by March 14, 2021. On March 12, 2021, the Complainant submitted a request that English be the language of the proceeding. According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the 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. Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfortability with each language, the expenses to be incurred, and the possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679). In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to: (i) the fact that the Complainant, an Italian entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation; (ii) the English language is quite popular in Germany, where the Respondent appears to be located, and the website’s contents under the Disputed Domain Name is in English; these suggest that the Respondent has ample knowledge of the English language and would be able to communicate quite well in English; (iii) the Respondent did not object for English to be the language of the proceeding and did not submit a response in neither English nor Vietnamese. Therefore, for the purpose of easy comprehension of the Complainant (ultimately, the party solely taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English. (iii) The Respondent’s Failure to Respond The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413, and M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default. B. Identical or Confusingly Similar The Complainant is required to establish the two following elements: (i) that it has trademark rights, and, if so, (ii) that The Disputed Domain Name is identical or confusingly similar to its trademark. First, the Panel finds that the Complainant has evidenced that it has rights in and to the trademarks SUPERGA, which were registered in a number of countries before the registration of the Disputed Domain Name. In addition, it is evidenced that the Complainant has widely used the SUPERGA trademarks for casual footwear products. Second, the Disputed Domain Name comprises the Complainant’s SUPERGA trademarks, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the suffix elements “sg” and “outlets”. Regarding the element “sg”, the Panel notes that “sg” is a common geographical identifier for Singapore. This is supported by the facts that (i) on the website under the Disputed Domain Name, the products are offered for sale in Singapore currency (SGD); and (ii) the website bears some headlines such as “Buy Superga Mens Shoes Online Singapore”. Regarding the element “outlets”, the Panel finds that such word refers to a type of shop and thus, is a descriptive term which purports to modify “superga”. Thus, the Panel finds that “superga” remains the dominant recognizable element in the Disputed Domain Name. It is well-established that the addition of a geographical identifier and/or a descriptive term to a trademark does not prevent a finding of confusing similarity, as it was found in previous UDRP decisions (see, e.g., Supercell Oy v. See PrivacyGuardian.org / Mediastack,WIPO Case No. D2017-2177; Johnson & Johnson v. Tung Nguyen, WIPO Case No. D2017-1635; Philip Morris Products S.A. v. Halil Cakir,WIPO Case No. D2018-1656; Continental Exchange Solutions Inc. DBA Ria Financial v. Red Soul,WIPO Case No. D2013-1690; SAP AG v. Subba Rao Parvathaneni,WIPO Case No. D2010-1813). Finally, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the Disputed Domain Name does not constitute an element as to avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc,WIPO Case No. D2001-0015; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Based on the foregoing findings, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s SUPERGA trademarks, and paragraph 4(a)(i) of the Policy is established. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Panel finds that the Complainant has made a prima facie evidence that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not refute the Complainant’s contentions. The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the complainant, once a prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating his rights or legitimate interests in the Disputed Domain Name (see e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited,WIPO Case No. D2001-0121). In this instant case, the Panel finds that the Respondent has failed to meet that burden since no response was submitted providing arguments or evidence to the contrary. Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization in any kind to use the Complainant’s trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction. Thus, the Panel finds that the Respondent has no rights in the trademarks SUPERGA. A reseller or distributor may be making a bona fide offering of goods and services and thus have rights to or legitimate interests in a domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc,WIPO Case No. D2001-0903 (“Oki Data”), including: - the respondent must actually be offering the goods or services at issue; In this particular case, the Panel finds the Respondent does not place any statement or disclaimer disclosing accurately its relationship with the Complainant. Further, the website under the Disputed Domain Name also contains the Complainant’s trademarks SUPERGA as well as its logo. In addition, the website under the Disputed Domain Name states that “Copyright © 2021 supergasgoutlets Powered by Superga Store”. This indication and copyright claim may mislead consumers into believing in a connection or association between the Respondent and the Complainant, where such connection or association does not exist in reality. With such a view, the Panel finds that the unauthorized use of the Disputed Domain Name does not meet the Oki Data criteria and thus, does not constitute a bona fide use within paragraph 4(c)(i) of the Policy. Regarding paragraph 4(c)(ii) of the Policy, the Panel finds that there is no evidence showing that the Respondent has been commonly known by the Disputed Domain Name. Further, regarding paragraph 4(c)(iii) of the Policy, the Panel finds that there is no evidence that the Respondent is making any noncommercial or fair use of the Disputed Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a)(ii) of the Policy is established. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith: “(i) circumstances indicating that you have registered or you have acquired the 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” The above four circumstances are not exhaustive and bad faith may be found by the Panel alternatively. The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions. The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registrations of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s SUPERGA trademarks have been registered in a variety of jurisdictions around the world. In addition, the Complainant’s SUPERGA trademarks have been put in use for a long period of time and gained certain reputation in the sector of casual footwear especially shoes. The Complainant’s SUPERGA trademarks and its domain name The Disputed Domain Name comprises the SUPERGA trademarks in its entirety, adding the non-distinctive elements “sg” and “outlets” at the end. Given the extensive use of the SUPERGA trademark for footwear products by the Complainant, which occurs in numerous countries, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, in consideration of the use of the Disputed Domain Name and the contents of the website thereunder, the Panel is of the view that the Respondent obviously knew of the Complainant and its SUPERGA trademarks when it registered the Disputed Domain Name, and the Panel considers the registration is an attempt by the Respondent as to take advantage of the Complainant’s reputation and goodwill. On the date of this Decision, the Panel accessed the Disputed Domain Name and found that it is still resolving to an online store offering shoes products branded with the Complainant’s trademarks SUPERGA. In addition to the adoption of the Complainant’s SUPERGA trademark as a uniquely distinctive part in the Disputed Domain Name, the Respondent used the Complainant’s trademarks and logo on the website and falsely represented itself as a distributor of the Complainant by the indication “Copyright © 2021 supergasgoutlets Powered by Superga Store”. The Panel takes the view that any Internet users seeking to purchase the Complainant’s SUPERGA products would very likely mistakenly believe that the Respondent is either connected to or associated with the Complainant, while no such connection exists in fact. Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent. Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith and the third element under paragraph 4(a)(iii) of the Policy is established. 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 Pham Nghiem Xuan Bac
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
Sole Panelist
Date: May 18, 2021
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