ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Victoria Beckham v. jing guan Case No. D2023-3493 1. The Parties The Complainant is Victoria Beckham, United Kingdom, represented by Demys Limited, United Kingdom. The Respondent is jing guan, China 2. The Domain Name and Registrar The disputed domain name is registered with Internet Domain Service BS Corp (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 17, 2023. On August 17, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 2023, 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 August 22, 2023, 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 23, 2023. 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, and the proceedings commenced on August 25, 2023. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 15, 2023. page 2 The Center appointed Thomas M. Legler as the sole panelist in this matter on September 21, 2023. 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. On October 10, 2023, the Panel issued an extension until October 14, 2023, to render his decision. According to the Registrar's verification response, the language of the Registration Agreement for the disputed domain name is English. The language of the proceedings shall therefore be English. 4. Factual Background The Complainant Victoria Beckham is a British singer, fashion designer, television personality, and a member of Most Excellent Order of the British Empire. In the 1990s, she was a member of the girl group "Spice Girls". The Complainant has starred in many documentaries and reality shows. As a fashion designer, the Complainant launched in 2008 her own label. The Complainant operates a commercial website at "www.victoriabeckham.com" which makes her products available to web users (Annex 04 to the Complaint). The Complainant is notably the owner of the following trademarks (Annex 06 to the Complaint): - No. 902543320 VICTORIA BECKHAM, United Kingdom, registered on January 22, 2007, in classes 9 and 41; - No. 002543320 VICTORIA BECKHAM, European Union trademark, registered on January 22, 2007, in classes 9 and 41; - No. 1163611 VICTORIA BECKHAM, International trademark, registered on June 14, 2012, in classes 3, 9, 14, 18, 24, 25, and 35. The Complainant's trademarks mentioned above were registered prior to the date of registration of the disputed domain name, which is March 14, 2023 (Annex 01 to the Complaint). The Complainant submits evidence that the disputed domain name was directed to a commercial retail website (Annex 05 to the Complaint), which is however no more active. 5. Parties' Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to her trademarks for VICTORIA BECKHAM, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith. The Complainant indicates that her trademarks are intensively used and globally famous and provides printouts of her official website and of her marketing and related materials (Annexes 03 and 04 to the Complaint). The Complainant also refers to several prior decisions under the Policy that have recognized the reputation of the Complainant and her trademark (see for instance Victoria Beckham v. Weihua Chen, WIPO Case No. D2022-3515) and a case resolving to a similar website (Victoria Beckham v. bo Iuo, WIPO Case No. D2022-4589). The Complainant seeks to make out a prima facie case to demonstrate that the Respondent does not have rights or legitimate interests in the disputed domain name. She contends in this respect that the Respondent page 3 is not known by the disputed domain name and is not using it in connection with a bona fide offering of goods or services - quite to the contrary, as the Respondent is probably selling counterfeit goods (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.8). As regards specifically the argument of bad faith, the Complainant provides evidence that the disputed domain name was linked to an active e-commerce website selling what the Complainant presumes to be counterfeit products, due to their heavily discounted prices, the lack of disclaimer and the suggestion of an affiliation (some items have the words "Manufactured by: Victoria Beckham"). The Complainant essentially contends that the registration and use of the disputed domain name in such circumstances constitutes registration and use in bad faith. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings The Policy requires the Complainant to prove three elements: (a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (c) the disputed domain name has been registered and is being used in bad faith. Based on the evidence and arguments submitted, the Panelist findings are as follows: A. Identical or Confusingly Similar The Complainant has provided sufficient evidence that she has valid rights in her trademarks for VICTORIA BECKHAM, based on her use and registration of the above mentioned trademarks. Furthermore, the Panelist finds that the disputed domain name was created by the Respondent by merely adding the word "outlet" to the Complainant's marks and personal name VICTORIA BECKHAM. The relevant trademark is easily recognizable and contains the mark in its entirety, so that the disputed domain name has to be considered as confusingly similar to the mark for purposes of UDRP standing (WIPO Overview 3.0, section 1.7). The Panelist also notes that the applicable generic Top-Level Domain ".com" is viewed as a standard registration requirement, and may as such be disregarded (WIPO Overview 3.0, section 1.11.1). Based on the above elements, the Panelist finds that the disputed domain name is confusingly similar to the Complainant's trademarks and therefore decides that the Complainant has satisfied the requirements of the first element under the Policy. B. Rights or Legitimate Interests The Panelists notes that the Complainant made out a prima facie case that the Respondent is not, and has never been, an authorized reseller, service provider, licensee, or distributor of the Complainant, is not a good faith provider of goods or services under the disputed domain name, and is not making legitimate noncommercial or fair use of the disputed domain name. The Panelist also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panelist finds that the burden of proof regarding this element shifts to the Respondent (WIPO Overview 3.0, section 2.1). However, the Respondent has not provided a Response, i.e., any evidence or arguments in reply. page 4 The Panelist further notes that according to the submitted evidence (Annexes 05 and 07 to the Complaint), the disputed domain name was directed to an active website which - given the lack of any clear disclaimer and some false suggestions of affiliation [some items have the words "Manufactured by: Victoria Beckham"] and given the heavily discounted product prices - very likely offered counterfeit products, including those of competitors. Moreover, even if the products were legitimate products, it is clear to the Panelist from the foregoing elements that the Respondent is not a good faith provider of goods or services under the disputed domain name (see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). In view of these elements, the Panelist concludes that the Respondent's use does or rather did not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name. The Panelist notes that on the date of this decision, the disputed domain name directs to an inactive webpage. In this regard, the Panelist finds that holding a domain name passively, without making any use of it, also does not confer any rights or legitimate interests in the disputed domain name on the Respondent. Moreover, the nature of the disputed domain name is inherently misleading, and carries a risk of implied affiliation (WIPO Overview 3.0, section 2.5.1). On the basis of the foregoing elements, the Panelist considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy. C. Registered and Used in Bad Faith The Panelist notes that the Complainant has shown by evidence the well-known character of her trademark that is identical to her personal name. In that respect, the Panelist refer to several prior decisions under the Policy that have rightly recognized the international fame and reputation of the Complainant and her trademark (see for instance Victoria Beckham v. Weihua Chen, WIPO Case No. D2022-3515, and Victoria Beckham v. David James, WIPO Case No. D2017-0035). The Panelist therefore concludes that the Respondent knew, or at least should have known, of the existence of the Complainant's trademarks at the time of registering the disputed domain name. This finding is confirmed by the fact that the website linked to the disputed domain name is used to offer for sale presumably counterfeit VICTORIA BECKHAM products (some items showing the words "Manufactured by: Victoria Beckham"). As already stated above, the website linked to the disputed domain name did not contain a disclaimer regarding the lack of relationship and even falsely suggested some affiliation between the Parties. The Panelist therefore finds that it has been demonstrated that the Respondent registered the disputed domain name in bad faith. As to the use of the disputed domain name in bad faith, the Complainant provides evidence that the disputed domain name was directed to an active website allegedly offering products for sale that are likely counterfeit products (see above) as well as competitor products. The conclusion can therefore be drawn that the Respondent is intentionally attracting Internet users for commercial gain to such website, by creating consumer confusion between the website associated with the disputed domain name and the Complainant's trademarks. This constitutes direct evidence of the Respondent's bad faith under paragraph 4(b)(iv) of the Policy. As mentioned above, on the date of this decision, the disputed domain name links to an inactive website. In this regard, the WIPO Overview 3.0, section 3.3 provides: "From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or 'coming soon' page) would not prevent a finding of bad faith under the doctrine of passive holding." In these circumstances, the Panelist considers that the passive holding of the disputed domain name by the Respondent also constitutes use of the disputed domain name in bad faith. page 5 As already stated above, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore finds that the Complainant has satisfied the requirements of the third requirement under 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 be transferred to the Complainant. /Thomas M. Legler/ Thomas M. Legler Sole Panelist Date: October 14, 2023
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