ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Alcantara S.p.A. v. 王菲 (wang fei), 上海乔拓国际贸易有限公司 (shang hai qiao ta guo ji mao yi you xian gong si) Case No. D2024-2059 1. The Parties The Complainant is Alcantara S.p.A., Italy, represented by Bugnion S.p.A., Italy. The Respondent is 王菲 (wang fei), 上海乔拓国际贸易有限公司 (shang hai qiao ta guo ji mao yi you xian gong si), China. 2. The Domain Name and Registrar The disputed domain name
is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2024. On May 17, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2024, 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 (Unknown, Not disclosed) and contact information in the Complaint. On the same day, the Respondent sent email communications to the Center in English asking inter alia if it could defend itself in Chinese. The Center sent an email communication to the Complainant on May 27, 2024 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 May 31, 2024. On May 27, 2024, the Center informed the Parties in Chinese and English, that the language of the Registration Agreement for the disputed domain name is Chinese. On May 28, 2024, the Respondent requested that Chinese be the language of the proceeding. On May 30, 2024, the Complainant confirmed its request that English be the language of the proceeding and provided additional reasons in support.
page 2 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 Chinese and English of the Complaint, and the proceedings commenced on June 3, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2024. The Response was filed with the Center in Chinese on June 18, 2024. The Center appointed Matthew Kennedy as the sole panelist in this matter on June 21, 2024. 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 June 24, 2024, the Complainant submitted an unsolicited supplemental filing. On June 26, 2024, the Panel issued Administrative Panel Procedural Order No. 1, noting that the Complainant claimed, in the Complaint, to have time-stamped video evidence produced using an e-preservation platform to demonstrate that clicking on the “home page” link on the website associated with the disputed domain name redirected to the Complainant’s official website in Chinese. The Complaint further indicated that this video evidence was available for the Panel to examine upon request. Accordingly, pursuant to paragraphs 10 and 12 of the Rules, the Panel invited the Complainant to submit the video evidence by June 29, 2024; and gave the Respondent an opportunity to comment on it by July 4, 2024. The due date for the Decision was extended to July 9, 2024. On June 26, 2024, the Complainant sent an email to the Center advising that submission of the video evidence via email was impractical due to its substantial size, and enquiring about alternative methods of submission. On June 28, 2024, the Panel issued Administrative Panel Procedural Order No. 2, advising the Parties that, in the interests of the efficient conduct of the proceeding, it had visited the website associated with the disputed domain name at “http://www.alcantara-italy.com/” and found that clicking on the “官网首页/Home” button on that website redirected to the Complainant’s website at “https://www.alcantara.com/” in English, where Internet users can choose languages including Chinese. 1 Pursuant to paragraphs 10 and 12 of the Rules, the Panel invited the Respondent to comment on the redirection from the “官网首页/Home” button on or before July 4, 2024. On July 3, 2024, the Respondent submitted its comments. The due date for the Decision remained July 9, 2024. 4. Factual Background The Complainant is a company based in Milan, Italy, that specializes in the production and marketing of ALCANTARA, a fabric used in apparel, high-tech accessories, design object finishes, and automobile, aircraft, and yacht interiors. It collaborates with many third party brands that incorporate ALCANTARA fabric in their final products. The Complainant holds the following trademark registrations: 1The Panel notes its general powers articulated inter alia in paragraphs 10 and 12 of the Rules and conducted limited research by visiting the Parties’ respective websites to verify allegations made in the submissions. The Panel considers this process of verification useful to assessing the case merits and reaching a decision. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8.
page 3 - Italian trademark registration number 362019000143974 for ALCANTARA, registered on February 19, 1970, specifying goods in classes 1, 2, 17, 18, 21, 22, 23, 24, 25, 26, 27, and 28; - International trademark registration number 552903 for ALCANTARA, registered on April 23, 1990, designating multiple jurisdictions, including China, and specifying goods in classes 1, 2, 17, 18, 21, 22, 23, 24, 25, 26, 27, and 28; - International trademark registration number 676793 for ALCANTARA, registered on June 30, 1997, designating multiple jurisdictions, including China, and specifying goods in classes 12, 18, 20, 22, 24, and 25; and - European Union trademark registration number 001143551 for ALCANTARA, registered on June 6, 2000, specifying goods in classes 12, 18, 20, 22, 24, and 25. The above trademark registrations are current. The Complainant operates its official website at “www.alcantara.com” where it provides information about itself, its brand, and its products. The website is made available in multiple languages, including English and Chinese. The Respondent is an individual and a company based in Shanghai, China. The Respondent company holds the following trademark registrations: - Chinese trademark registration number 58137878 for ALCANTARA, with a registration publication date of March 28, 2023 (applied for on August 1, 2021), specifying customized material assembly (for others); material sawing services; textile finishing; fabric processing; textile weaving; fabric finishing; clothing production; fabric cutting; leather finishing; clothing customization services in class 40; and - Chinese trademark registration number 63344211 for ALCANTARA, with a registration publication date of October 21, 2023 (applied for on March 17, 2022), specifying metal logos for vehicles; metal nameplates; metal sewn labels for clothing; metal adhesive labels for bags; metal logos for cars; metal bag hooks; metal key chains; metal key rings; metal storage boxes; metal identification bracelets in class 6. The Respondent’s email signature block identifies the sender as supply chain manager for “Deral International Group Ltd.”, which operates a website at “www.dereei.com”. That website displays the Chinese trade name “德瑞国际采购集团”, and presents the company as a one-stop procurement service for high quality global brand products based in Hong Kong, China. The disputed domain name was created on May 13, 2022. It resolves to a website at “www.alcantara-italy.com” that prominently displays the trademark ALCANTARA. This website invites Internet users in Chinese and English to enter the warranty number of their Alcantara ID card to search for product information and warranty details. It also displays a disclaimer in Chinese and English that the system only validates the manufacturer or service provider of the product and does not provide after sales service. The Panel has visited the site (see Section 3 above) where it observed that the menu bar displays a single button labelled “官网首页/Home” (meaning “Official Website Homepage/Home”). Internet users who click on this button are redirected to the Complainant’s website at “www.alcantara.com”. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
page 4 Notably, the Complainant contends that the disputed domain name is confusingly similar to its ALCANTARA mark. The Respondent has no rights or legitimate interests in respect of the disputed domain name. Exhaustive investigations conducted by the Complainant in trademark databases and online resources have failed to unearth any trademark rights for a name identical to ALCANTARA that could be associated with the Respondent, or the website linked to the disputed domain name. The Respondent is not a licensee of the Complainant, nor has it received any form of permission, consent, or acquiescence from the Complainant to utilize its marks. The disputed domain name misleadingly suggests an affiliation with the Complainant. Clicking on the “home page” link on the associated website redirects to the Complainant’s official website in Chinese. This action reinforces the false affiliation with the trademark owner. The disputed domain name was registered and is being used in bad faith. The registration of the disputed domain name clearly demonstrates an attempt to use a well-known trademark in its entirety along with a geographical term. This choice is not random as the Complainant’s headquarters are in Italy. ALCANTARA products are globally recognized as symbols of Italian craftsmanship and quality. Given the circumstances of the website associated with the disputed domain name, it is implausible to conceive of any form of good faith use of the disputed domain name. B. Respondent The Respondent contends that the Complainant has not satisfied the elements required under the Policy for a transfer of the disputed domain name. Notably, the Respondent contends that its Chinese trademark registrations for ALCANTARA demonstrate its legal rights to the trademark, which is directly reflected in the disputed domain name. The Respondent has used its trademark in China since August 2021, long before it registered the disputed domain name and received notice of this dispute. The Respondent has been independently building and developing its brand, with independent customer groups and market positioning. The Respondent uses the disputed domain name for legitimate business purposes, and has always operated in good faith. It has not taken any action to mislead consumers or use the Complainant's goodwill for unfair competition. The Respondent has not used the disputed domain name in bad faith. Its website is significantly different from the Complainant's website in terms of web design and product services. The Respondent’s services are different from the Complainant’s services, and the Respondent has clearly distinguished them to avoid any confusion. The Respondent focuses on warranty services for products that have been sold. The Complainant has not demonstrated that the Respondent registered and used the disputed domain name in bad faith. The Respondent’s trademark registration and disputed domain name registration were both obtained before the Complaint was filed. The Respondent has not conducted any activities in connection with the disputed domain name that could damage the Complainant’s reputation or interests. In its comments regarding the redirection from its website to the Complainant’s website, the Respondent apologized for the inconvenience caused by this dispute. It understands and respects the legitimate rights and interests of the Complainant and had no intention of infringing its trademarks or brands. However, an internal investigation has revealed that the redirection was due to an operational error by the Respondent’s website technical team. The technicians accidentally configured the redirection with the wrong URL when performing website maintenance and updates. This resulted in the “Official Website Homepage/Home” option on the Respondent’s website mistakenly redirecting to the Complainant’s official website. Since this is an uncommon website feature, it was not discovered until now. In support, the Respondent provides copies of WeChat conversations with its technical team from May 2022 and later. When the disputed domain name is unlocked, the Respondent can also provide the website access log, which will show that the redirection
page 5 was not widely used before the problem was discovered. The Respondent has taken measures to correct this error and ensure that similar situations will not occur again. This was purely a technical error and there was no bad faith. 6. Discussion and Findings 6.1 Preliminary Issues A. Language of the Proceeding The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complaint and amended Complaint were filed in English. The Complainant requested that the language of the proceeding be English for several reasons, including the fact that the disputed domain name contains an English word and the associated website is in English; the Respondent corresponded with the Center in this proceeding in English, all of which shows that the Respondent is familiar with the English language and fully capable of communicating in it. Further, the Respondent’s company website is in both Chinese and English. The Response and the comments made pursuant to Administrative Panel Procedural Order No. 2 were filed in Chinese. The Respondent requested that the language of the proceeding be Chinese for several reasons, including the fact that the Registration Agreement for the disputed domain name is in Chinese; the principal language of the website associated with the disputed domain name is Chinese, which does not mean that the Respondent has a full grasp of English; as the Respondent is based in China, it may be fairer and more efficient to conduct the proceeding in Chinese; and both Parties can have an equal opportunity to present their views and understand each other’s arguments in Chinese. In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs. See WIPO Overview 3.0, section 4.5.1. The Panel notes that the Respondent initially corresponded with the Center in English during this proceeding, the disputed domain name incorporates an English word, and the associated website is partly in English, which indicates that it is able to communicate in that language. The content of the Response and the comments made pursuant to Administrative Panel Procedural Order No. 2 show that the Respondent has in fact understood the Complaint. Accordingly, each Party has been given a fair opportunity to present its case in accordance with the Rules, paragraph 10(b). Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English, but the Panel will accept all submissions as filed in their original language without translation. B. Unsolicited Supplemental Filing The Complainant made an unsolicited supplemental filing on June 24, 2024, after the appointment of the Panel and prior to the issuance of Administrative Panel Procedural Orders No. 1 and No. 2. Paragraph 12 of the Rules provides that “[i]n addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”. At the same time, paragraph 10(b) and (c) of the Rules require the Panel to ensure that “each Party is given a fair opportunity
page 6 to present its case” and that “the administrative proceeding takes place with due expedition”. The purpose of the Policy is to provide a simple, inexpensive and quick administrative procedure for dealing with domain name entitlement disputes. Accordingly, the Panel will only permit the supplemental filing in exceptional circumstances, such as new facts, newly available evidence, or a material allegation in the Response that could not reasonably have been anticipated at the time of the Complaint. The Complainant asks the Panel to accept its supplemental filing to allow it to reply to additional elements introduced in the Response that were not discussed in the Complaint. Those additional elements are the Respondent’s Chinese trademark registrations and applications. The Panel sees no exceptional circumstances that would justify accepting the supplemental filing. The Complainant indicates that it opposed both the Respondent’s trademark applications that led to the registrations set out in Section 4 above. It can be inferred that the Complainant was fully aware of these trademark registrations at the time when it filed the Complaint. 2 It was entirely foreseeable that these trademark registrations would be raised in the Response in support of a claim of rights and legitimate interests. The Complainant, through its supplemental filing, belatedly seeks to introduce new evidence into the record that it could have submitted earlier. Therefore, the Panel finds that the Complainant was already given a fair opportunity to present its case in the Complaint and the amended Complaint. The Panel declines to accept the Complainant’s supplemental filing as part of the record of this proceeding. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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 A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. See WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of the ALCANTARA trademark for the purposes of the Policy. See WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Although it adds the country name “Italy”, separated by a hyphen, the ALCANTARA mark is clearly recognizable within the disputed domain name. The only other element in the disputed domain name is a generic Top-Level Domain (“gTLD”) extension (“.com”) which, as a standard requirement of domain name registration, may be disregarded in the assessment of confusing similarity for the purposes of the first element of the Policy. See WIPO Overview 3.0, sections 1.7, 1.8, and 1.11.1. 2Although the Complainant stated that it was initially unaware of any trademark rights for ALCANTARA that could be associated with the Respondent, or the website linked to the disputed domain name, the Panel notes that the amended Complaint only listed the Respondent as an individual, not a company, possibly due to the fact that the Registrar-verified registrant information was provided in Chinese.
page 7 Therefore, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or (iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. With respect to the first and third circumstances set out above, the disputed domain name wholly incorporates the ALCANTARA mark and adds only the country name “Italy”, separated by a hyphen, and a gTLD suffix. Given that Italy is the location of the Complainant, the disputed domain name creates a risk that it will be misunderstood as resolving to a website for the Complainant. Moreover, the website associated with the disputed domain name prominently displays the Complainant’s ALCANTARA trademark and a button labelled “官网首页/Home” (meaning “Official Website Homepage/Home”), which indeed redirects to the Complainant’s website, and purports to offer warranty verification service for the ALCANTARA branded products. Even though the finer print indicates that the site only validates the manufacturer or service provider and does not provide after sales service, the website gives the impression that it is operated by, or affiliated with, the Complainant. However, the Complainant submits that the Respondent is not its licensee and has not received any form of permission, consent, or acquiescence from it to use its marks. Accordingly, the Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy. Nor is this a legitimate noncommercial or fair use of the disputed domain name within the terms of paragraph 4(c)(iii) of the Policy. With respect to the second circumstance set out above, the Registrar verified that the Respondent’s personal name is “王菲” (wang fei) and its company name is “上海乔拓国际贸易有限公司” (shang hai qiao ta guo ji mao yi you xian gong si) which may be translated as “Shanghai Qiaotuo International Trade Co., Ltd”. The Respondent’s correspondence and website address indicate that he goes by “Sam Wu” and works for a company trading as “德瑞国际采购集团” (“Deral International Group Ltd.”). Nothing indicates that the Respondent, whether as an individual or company, has been commonly known by the disputed domain name within the terms of paragraph 4(c)(ii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Turning to the Respondent, it presents evidence that it holds Chinese trademark registrations for ALCANTARA. The Panel considers that trademark rights would ordinarily support a finding that a respondent has rights or legitimate interests in the disputed domain name. See WIPO Overview 3.0, section 2.12.1. At the same time, trademark rights do not automatically confer rights or legitimate interests on a respondent for the purposes of the Policy where, for example, the overall circumstances demonstrate that the trademark was obtained primarily to circumvent the application of the Policy or otherwise to prevent the Complainant’s exercise of its rights, even if only in China. See WIPO Overview 3.0, section 2.12.2.
page 8 In the present case, the Respondent obtained its trademark rights in the jurisdiction where it is based (i.e., China), and it applied for those rights some months prior to its acquisition of the disputed domain name. However, it provides no evidence that it has used or prepared to use the ALCANTARA mark in connection with any of the goods and services specified in its registrations, which were obtained about two years ago. The goods and services specified in the trademark registrations are unrelated to those offered on the website associated with the disputed domain name (warranty verification), the nature of which is unclear and appears to offer no value added. The Respondent provides no explanation in the Response as to why it chose to combine the Complainant’s trademark with the Complainant’s country of origin (“Italy”) in the disputed domain name, or why the button labelled “官网首页/Home” (meaning “Official Website Homepage/Home”) redirects to the Complainant’s website. The Panel reiterates that the disputed domain name and associated website gives the impression that the website is operated by, or affiliated with, the Complainant, regardless of differences between the Parties’ respective websites. In its comments made pursuant to Administrative Panel Procedural Order No. 2, the Respondent claimed that the redirection from the home button was intended to redirect to its own website. However, in that scenario, the button on the Respondent’s homepage would have simply resolved to the same homepage and not been a redirection at all. The Respondent also claimed that it did not notice the redirection. However, in the Panel’s view, this is implausible as the home button is the only button on the Respondent’s website menu bar and, according to the Respondent’s own evidence, it has been redirecting to the Complainant’s website for more than two years, since May 2022. Even if little traffic has been redirected, the redirection shows that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent claims that the redirection was a mere technical error but, as the holder of the disputed domain name, it is responsible for the use made of its own domain name and it made no attempt to correct the redirection prior to receiving notice of this dispute. Based on the evidence, the Panel has reason to find that the Respondent’s trademark rights were acquired primarily to prevent the Complainant’s exercise of its trademark rights. Therefore, the existence of these trademark rights does not confer rights or legitimate interests on the Respondent for the purposes of the Policy in this case. For the above reasons, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case. The Panel also notes that the ALCANTARA mark has an Arabic root and means “the bridge”. However, the Respondent does not use the disputed domain name in any sense related to that meaning. See WIPO Overview 3.0, section 2.10. Based on the record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth of these is as follows: “(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] web site or location.” The disputed domain name was registered in 2022, many years after the registration of the Complainant’s ALCANTARA marks. The disputed domain name entirely incorporates that mark. The disputed domain name combines that mark with the country of origin of the Complainant (Italy), which is not the country of origin of the Respondent, and it displays a button labelled “官网首页/Home” (meaning “Official Website Homepage/Home”), which redirects to the Complainant’s website. Further, the Respondent’s website offers
page 9 services to verify the warranty of the ALCANTARA branded products. All of these circumstances give rise to the inference that the Respondent had the Complainant and the Complainant’s mark in mind when it registered the disputed domain name. As regards use, the Respondent uses the disputed domain name in connection with a website that gives the false impression that it is operated by, or affiliated with, the Complainant to offer warranty verification services. For the reasons given in Section 6.2B above, the Panel considers it more likely than not that the Respondent registered the trademark ALCANTARA to bolster its claim to rights and interests in the disputed domain name under the Policy, which is an indication of bad faith. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. Therefore, based on the record, the Panel finds that the Complainant has established the third element 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 be transferred to the Complainant. /Matthew Kennedy/ Matthew Kennedy Sole Panelist Date: July 9, 2024
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