The Complainant is OVS S.p.A., Italy, represented by Rapisardi Intellectual Property, Italy.
The Respondent is Kiyoshige Takeda, Kiyoshige Takeda, Japan.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2021. On May 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 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 June 7, 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 in English on June 11, 2021.
On June 25, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On June 28, 2021, the Complainant submitted a 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 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 in English and Japanese of the Complaint, and the proceedings commenced on July 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 22, 2021. The Respondent did not submit any formal response. However, the Center received from the Respondent a communication in Japanese by email on July 16, 2021 that included details responsive to the Complaint. On August 29, 2021, the Center informed the Parties that it would proceed to panel appointment.
The Center appointed Douglas Clark as the sole panelist in this matter on September 2, 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.
The Panel noted that the Respondent’s email to the Center dated July 16, 2021, inter alia, indicated the possibility of an amicable resolution between the Parties. Therefore, on September 8, 2021, the Panel issued Procedural Order No.1 which suspended the proceeding for five days until September 13, 2021 to allow the Parties time to consider if they wished to reach an amicable settlement. On September 13, 2021, the Complainant sent an email communication to the Center saying that the Complainant was willing to pursue settlement negotiations and requested for a further suspension of the proceeding. On September 14, 2021, the Panel issued Procedural Order No. 2, which suspended the proceeding for a period of 14 days until September 28, 2021. On September 23 and 28, 2021 respectively, the Complainant transmitted an email communication to the Center requesting for a further suspension to the proceeding. On October 7, 2021, the Panel issued Procedural Order No. 3 which further suspended the proceeding for a period of 14 days until October 21, 2021. On October 20, 2021, the Complainant transmitted an email communication to the Center requesting for a further suspension to the proceeding. On October 21, 2021, the Panel issued Procedural Order No. 4 which further suspended the proceeding for a period of 14 days until November 4, 2021. On November 2, 2021, the Complainant transmitted an email communication to the Center requesting for the proceeding to be reinstituted. On November 17, 2021, the Panel issued Procedural Order No. 5, which reinstituted the proceeding.
4. Factual BackgroundThe Complainant is an Italian company operating in the fashion industry. One of its brands is UPIM, one of the largest clothing retailers in Italy. UPIM has over 200 stores and operates its e-commerce through its website “www.upim.com”.
The Complainant is the owner of several trade mark registrations for UPIM, including the international trade mark registration no. 1397183, registered on October 26, 2017, and the international trade mark registration no. 589219, registered on February 6, 1992, both designating several countries (but not including Japan).
The Complainant also owns several domain names bearing the term UPIM, including “upim.com”, “upim.购物”, “upim.hu”, “upim.clothing”, “upim.app”, “upim.moda”, “upim.at”, “upim.de”, “upim.eu”, “upim.商标”, “upim.it”, “upim.cf”.
The disputed domain name
The Complainant contends that:
(a) The disputed domain name is identical or confusingly similar to its trade mark. The disputed domain name wholly incorporates the UPIM trade mark followed by the suffix “.info”. The disputed domain name does not eliminate the overall notion that the designation is connected to the trade mark and the likelihood of confusion that the disputed domain name and the trade mark are associated;
(b) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant in any way and the Complainant has never granted any authorisation or license to use the Complainant’s trade mark. The Respondent is not commonly known by the disputed domain name, and has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name; and
(c) The disputed domain name is registered and is being used in bad faith. The mere fact that the Respondent has registered the disputed domain name incorporating the trade mark of a well-known company gives rise to an inference of bad faith. Based on the use of the disputed domain name, the Respondent registered and is using the disputed domain name to attract Internet users for commercial gain, creating a likelihood of confusion with the Complainant’s trade mark.
The Complainant requests the transfer of the disputed domain name.
B. RespondentThe Respondent contended in its email to the Center that:
a) They purchased the disputed domain name, which was an expired domain, from a website “ExpiredDomains.net”;
b) They have never used the disputed domain name; and
c) There was no bad faith on part of the Respondent in the registration of the disputed domain name.
6. Discussion and FindingsThe Complainant must satisfy all three elements of paragraph 4(a) of the Policy in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
(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.
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 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.
In this case, the language of the Registration Agreement for the disputed domain name is in Japanese. Based on the given evidence, there is no agreement between the Complainant and the Respondent regarding the language of the proceeding. The Complainant has filed its Complaint in English and has requested that English be the language for the proceeding on the following grounds:
a) the generic Top-Level Domain (“gTLD”) “.info” is an abbreviation of the English word “information”;
b) the disputed domain name is not linked to an active webpage and therefore there are no references to the Japanese language;
c) the English language is the common language in global business.
The Respondent did not respond as to the language of the proceeding although in their email responding to the Center date July 16, 2021 they stated in Japanese that they did not properly understand the reason for the proceedings being brought.
In accordance with paragraph 11(a) of the Rules, the Panel hereby determines that the language of the proceeding shall be in English after considering the following circumstances:
- the Center has notified the Respondent of the proceeding in both English and Japanese;
- the Respondent has not commented on the language of the proceeding;
- the Respondent has sent an email in Japanese setting out a high level response;
- an order for the translation of the Complaint and other supporting documents will result in significant expenses for the Complainant and further delay in the proceeding.
The Panel understands both Japanese and English and has therefore decided that it does not require a translation of the Respondent’s email in Japanese. As the principal pleading is in English, it will render its decision in English to ensure the proceeding be carried out with due expedition.
6.2 Substantive Analysis A. Identical or Confusingly SimilarThe Panel finds that the disputed domain name is identical to the Complainant’s trade mark. The disputed domain name incorporates the UPIM trade mark in full. The disputed domain name is followed by the gTLD “.info”. The gTLD is generally disregarded when considering the first element. (see section 1.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”)).
The Panel notes that the Complainant does not rely on any registered trade marks for UPIM in Japan where the Respondent is located. The ownership of a trade mark is generally considered to be a threshold standing issue. The location of the trade mark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trade mark under the first element of the UDRP. These factors may however bear on a panel’s further substantive determination under the second and third elements. (See section 1.1.2 of WIPO Overview 3.0).
The Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests / Registered and Used in Bad FaithThe substantive issue in this case is whether the Respondent has rights or legitimate interests in the disputed domain name and/or whether they have registered and used the disputed domain name in bad faith.
The Panel notes that the Complainant has registered the trade mark UPIM in several countries, but not in Japan where the Respondent is located. In addition, the Respondent has not actively used the disputed domain name. It is difficult to infer that the Respondent does not have legitimate rights and interests in and/or has registered and used the disputed domain name solely because they have not made use of the disputed domain name.
In accordance with section 4.8 of the WIPO Overview 3.0, the Panel has the power to undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This includes consulting historical resources such as the Internet Archive (“www.archive.org”) in order to find out how a domain name may have been used in the relevant past.
Because the Respondent stated that they purchased the disputed domain name after it expired, the Panel has checked the Internet Archive to see what sites were hosted under the disputed domain name in the past. Between 2014 and 2019, the disputed domain name resolved to websites in Japanese that had nothing to do with the Complainant. Prior to February 2014, the disputed domain name resolved to the website of a university in Mauritius, Université Populaire de l'Ile Maurice (Popular University of Mauritius), which had the acronym UPIM. (This may have been an online university. In any event, the university now appears to be defunct). The use on the websites written in Japanese does not indicate to the Panel the Respondent should be on notice of the Complainant or its trade mark rights. The previous use by the Université Populaire de l'Ile Maurice which had the acronym UPIM shows that UPIM can be used without referring to the Complainant.
There is, therefore, insufficient evidence for the Panel to determine the Respondent knew of the Complainant’s trade mark rights when they registered the disputed domain name. The Complainant has therefore not satisfied the burden of proving the disputed domain name was registered in bad faith. Given this finding the Panel does not need to consider if the Respondent has rights or legitimate interests.
7. DecisionFor the foregoing reasons, the Complaint is denied.
Douglas Clark
Sole Panelist
Date: November 27, 2021