The Complainant is Nicole Fashion Group S.p.A., Italy, represented by Demys Limited, United Kingdom.
The Respondent is 孙峰 (Sun Feng), 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 April 13, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 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 April 15, 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 amended Complaint in English on April 15, 2021. On April 15, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On April 15, 2021, 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 April 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2021. The Center appointed Rachel Tan as the sole panelist in this matter on May 31, 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 is a company located in Milan, Italy and its business is concerned with the design, creation and sale of wedding, cocktail and other formal dresses. The Complainant is one of several group companies operated by the parent company, San Patrick, S.L., which is a wedding and cocktail dress designer whose products are sold in more than 105 countries through a network of 123 stores and more than 4,000 points of sale. The Complainant employs more than 950 staff and distributes its dresses from four international logistics centers in Barcelona, Brazil, Hong Kong, China, and the United States of America. The Complainant is the owner of trade mark registration for NICOLE in different countries, including the European Union Trade Mark Registration No. 015507148 registered on August 29, 2019 in class 25 and the European Union Trade Mark Registration No. 008271363 registered on December 3, 2009 in class 25. The Respondent is 孙峰 (Sun Feng), China. The disputed domain name was registered on November 16, 2020. According to the evidence provided by the Complainant, the disputed domain name formerly resolved to a website in English. The website displayed the Complainant’s NICOLE trade mark together with images of the Complainant’s products. The website offered for sale the same type of goods as the Complainant, including wedding dresses, bridesmaid dresses and cocktail dresses. However, at the time of this decision, access to the website is forbidden. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to its NICOLE trade mark. The earliest registration of the NICOLE trade mark pre-dates the registration of the disputed domain name by approximately 12 years. The Top-Level Domain (“TLD”) “.com” is wholly generic in that it is required only for technical reasons and should be disregarded for the purposes of comparison with the Complainant’s marks. The additional word “bride” is closely associated with its wedding and cocktail dresses business which does not detract from or mitigate the dominance of the Complainant’s mark as the most significant element of the disputed domain name. The Complainant further alleges that the Respondent does not have any rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent has been commonly known as or owns any trade marks incorporating the term “nicole” or “nicole bride”. The Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use its registered marks. There is no evidence that the Respondent has ever traded legitimately under the business name “nicole” or “nicole bride”. The Respondent’s use of the disputed domain name for the sale of counterfeit products cannot be construed as a legitimate noncommercial or fair use of the disputed domain name. Further, the Complainant asserts that the Respondent’s non-response to the Complainant’s communication and failure to give an explanation to the Complainant’s contentions is similarly an admission of the Complainant’s contentions. The Complainant finally asserts that its NICOLE mark is a well-known and highly distinctive mark. The Respondent is taking advantage of Internet users’ initial interest confusion by registering the disputed domain name which incorporates the Complainant’s mark and a dictionary word “bride” closely associated with the Complainant’s activities. The disputed domain name is being used on a website that is designed to have the look and feel of the Complainant’s official website and uses its copyright material. The website sells counterfeit products and lacks any disclaimers that would dispel the confusion regarding the disputed domain name and the associated website. It is inconceivable that the Respondent did not have the Complainant firmly in mind when it registered the disputed domain name. The respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark, which is sufficient to find that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions. In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement as used by the registrant for the disputed domain name is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding for the reasons summarized below: (a) the disputed domain name is made up of the Complainant’s English-language trade mark NICOLE and the English-language word “bride”; (b) the website associated with the disputed domain name is exclusively in the English language; (c) the accepted currencies on the website associated with the disputed domain name are from English speaking countries; (d) in all these circumstances, the Complainant contends that it is more likely than not that the Respondent is familiar with the English language; and (e) the Complainant will be put to great expense and inconvenience to translate its submissions to a language other than English. It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below. (a) the Complainant is a company based in Italy. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses; (b) the Respondent’s choice of English words for the disputed domain name, as well as the English content of the webpage under the disputed domain name, indicates some familiarity with the English language; (c) even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; (d) the Respondent has failed to participate in the proceeding even though the Center sent the notification of the Complaint in English and Chinese and has been notified of its default; and (e) the Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English. 6.2 Substantive Issues A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the NICOLE mark. The Panel notes that the NICOLE mark is wholly encompassed within the disputed domain name. The positioning of the NICOLE mark before the descriptive word “bride” makes it instantly recognizable as the most distinctive element of the disputed domain name. In cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Moreover, the additional word “bride” does not preclude a finding of confusing similarity between the NICOLE mark and the disputed domain name. It is accepted by previous UDRP panels that the addition to the complainant’s trade marks of words or terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not affect the finding of confusing similarity of the disputed domain name from the registered trade mark under the first element of the Policy. As the words “bride” is closely related to the Complainant’s wedding and cocktail dress business, its addition does not affect the confusing similarity between the disputed domain name and the Complainant’s NICOLE mark. See section 1.8 of the WIPO Overview 3.0. Lastly, it is permissible for the Panel to ignore the generic TLD, in this case “.com”, under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests In circumstances where the Complainant possesses exclusive rights to the NICOLE mark, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0. The disputed domain name previously resolved to a webpage displaying the Complainant’s NICOLE mark together with images of the Complainant’s products. The Respondent has not provided evidence of a legitimate noncommercial or fair use of the disputed domain name or reasons to justify the choice of the term “Nicole” in the disputed domain name. Further, there is no indication to show that the Respondent is commonly known by the disputed domain name or otherwise has rights or legitimate interests in it. In addition, the Complainant has not granted the Respondent any license or authorization to use the Complainant’s NICOLE mark or register the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy are present in this case. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The Complainant’s NICOLE mark had been registered well before the registration of the disputed domain name. Through use and advertising, the Complainant’s NICOLE mark is known throughout the world for bridal wear. Search results using the key words “nicole” and “bride” on the Baidu and Google search engines direct Internet users to the Complainant and its products, which indicates that an exclusive connection between the NICOLE mark and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s NICOLE mark when registering the disputed domain name or has exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai,WIPO Case No. D2014-1693; Barclays Bank PLC v. Andrew Barnes,WIPO Case No. D2011-0874. Section 3.1.4 of the WIPO Overview 3.0 states that the “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain name incorporates the Complainant’s widely-known NICOLE mark plus the descriptive word “bride” that is related to the Complainant’s wedding and cocktail dress business, thus, creating a presumption of bad faith. The Panel notes that the disputed domain name previously resolved to a website displaying the Complainant’s NICOLE mark, copyrighted images of the Complainant’s products, and offering the Complainant’s goods, or the same type of goods as the Complainant’s, at prices disproportionately below market value. The Panel is of the view that the Respondent intentionally created a likelihood of confusion with the Complainant’s NICOLE mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. This demonstrates bad faith registration and use of the disputed domain name, as provided in paragraph 4(b)(iv) of the Policy. In addition, the Panel finds that the current inactive use of the disputed domain name in this case would not prevent a finding of bad faith under the doctrine of passive holding. In its determination, the Panel considered the degree of distinctiveness or reputation of the Complainant’s NICOLE mark, as well as the Respondent’s failure to respond in the face of the Complainant’s allegations of bad faith. See section 3.3 of the WIPO Overview 3.0. The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the Respondent’s lack of rights or legitimate interests, and by registering and using the disputed domain name as discussed above, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel finds that the Complainant has satisfied 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 Rachel Tan
Sole Panelist
Date: June 13, 2021
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