ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Skorpio Limited v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Philipp Wulf, Philipp Wulf Case No. D2022-1488 1. The Parties The Complainant is Skorpio Limited, Switzerland, represented by Keltie LLP, United Kingdom. The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Philipp Wulf, Philipp Wulf, Germany. 2. The Domain Name and Registrar The disputed domain name (the "Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 26, 2022. On April 26, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 27, 2022, 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 Center sent an email communication to the Complainant on April 28, 2022 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 April 28, 2022. 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 May 6, 2022. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 30, 2022. page 2 The Center appointed Jeremy Speres as the sole panelist in this matter on May 31, 2022. 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, a Swiss company, manages the intellectual property of American fashion designer Rick Owens. Mr. Owens launched his fashion line in 1994 under the mark RICK OWENS and has received numerous international fashion and design related awards. The RICK OWENS mark has been recognised as well-known by a prior UDRP panel (see Skorpio Limited v. Ma Liang, WIPO Case No. D2012-2045). The Complainant owns a number of trade mark registrations for the RICK OWENS mark, including European Union Trade Mark Registration No. 2493294 RICK OWENS (figurative) in classes 03, 09, 14, 18, and 25, registered on May 21, 2003. The Domain Name was registered on February 17, 2022. The Complainant's unrebutted evidence establishes that the Domain Name has been used to resolve to a website that offers unauthorised replicas of the Complainant's fashion items for sale, using the Complainant's RICK OWENS mark, including a nearexact figurative mark. The Panel has independently established that at the time of drafting of this decision a) the Domain Name redirects to a different domain name, ; b) the website to which that domain name resolves is geographically restricted and only admits users connecting from an Internet Protocol (IP) address in Finland; and c) that website appears to match the website contained in the Complainant's evidence offering replicas of the Complainant's fashion items for sale. 5. Parties' Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to its RICK OWENS mark, that the Respondent has no rights or legitimate interests in the Domain Name, and the Domain Name was registered and used in bad faith given that it has been used to sell products that are counterfeits of the Complainant's products. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant's unrebutted evidence establishes that its RICK OWENS mark is registered (including in the Respondent's country), well-known and is wholly contained within the Domain Name as a distinct (and the first) element. The Panel has independently established that the additional term "suomi" is a geographic term referring to Finland. Where the trade mark is recognisable within the disputed domain name (as in this case), the addition of other terms (including geographic terms as in this case) does not prevent a finding of confusing similarity (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") at section 1.8). The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. page 3 B. Rights or Legitimate Interests The Complainant's unrebutted evidence establishes that its RICK OWENS mark was registered and wellknown long prior to registration of the Domain Name. The Domain Name is confusingly similar to the Complainant's mark and the Complainant has certified that the Domain Name is unauthorised by it. UDRP Panels have categorically held that the use of a domain name for illegal activity (e.g., impersonation or the sale of counterfeit goods, as in this case) can never confer rights or legitimate interests on a respondent (WIPO Overview 3.0 at section 2.13). There is no evidence that any of the circumstances set out in paragraph 4(c) of the Policy pertain. The Complainant has satisfied paragraph 4(a)(ii) of the Policy by virtue of having made out an unrebutted prima facie case (WIPO Overview 3.0 at section 2.1). C. Registered and Used in Bad Faith The website to which the Domain Name resolves depicts, prominently, a near-exact replica of the Complainant's registered figurative trade mark referred to in the Factual Background section above. Combined with the evidence of offering for sale of counterfeits of the Complainant's fashion items and the wholesale inclusion of the Complainant's well-known mark in the Domain Name, the conclusion that the Respondent intended to target the Complainant upon registration and use of the Domain Name is inescapable. As the Panel's independent research shows, the website to which the Domain Name ultimately resolves (although redirected) is geo-restricted to users in Finland. Combined with the geographic meaning of "Suomi" (Finland), this indicates that the Respondent's goal was to target users in Finland. The geo-restriction was, in all probability, imposed in order to hinder brand protection efforts, making detection of the website more difficult.1 The Panel draws adverse inferences from the Respondent's failure to take part in the present proceeding where an explanation is certainly called for (WIPO Overview 3.0 at section 4.3). The Complainant has satisfied paragraph 4(a)(iii) 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 Domain Name, , be transferred to the Complainant. /Jeremy Speres/ Jeremy Speres Sole Panelist Date:June 13, 2022 1 See e.g., the article at: circleid.com/posts/20220531-do-you-see-what-i-see-geotargeting-in-brand-infringements.
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