The Complainant is Skorpio Limited of Lugano, Switzerland, represented by Keltie LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Nexperian Holding Limited of Hangzhou, Zhejiang, China / Long Zhi Chao of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name ("the Domain Name") is registered with HiChina Zhicheng Technology Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on October 9, 2017. On October 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 11, 2017, 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 October 11, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant filed an amended Complaint and requested that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding by the specified due date.
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 October 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 8, 2017.
The Center appointed Karen Fong as the sole panelist in this matter on November 15, 2017. 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 Swiss Company that manages the intellectual property rights of fashion designer Rick Owens. Rick Owens began his fashion designer career in Los Angeles, United States of America ("US") in 1994 and moved his production to Italy, starting worldwide distribution in 2001. In 2002, Rick Owens won the Council of Fashion Designers of America Perry Ellis Emerging Talent Award and, in 2007, he was awarded a Cooper-Hewitt National Design Award, as well as the "Rule Breakers" award, by the Fashion Group International. His clothing designs have been worn by many celebrities, including Courtney Love, Madonna, and Kobe Bryant. Owens has opened up stores in Paris, New York, London, Seoul, Tokyo, and Hong Kong.
Rick Owen's fashion products are sold under the brand RICK OWENS. The Complainant has a portfolio of trade mark registrations in numerous jurisdictions for the RICK OWENS mark for a broad range of goods including the following:
- European Union ("EU") Trade Mark Reg. No. 002493294 RICK OWENS, in Classes 3, 9, 14, 18 and 25, registered on May 21, 2003;
- US Trade Mark Reg. No. 2857230 RICK OWENS, covering inter alia "clothing, footwear, headgear" in class 25, registered on June 29, 2004; and
- Chinese Trade Mark Reg. No. 6162781 RICK OWENS in Classes 14, 18 and 25, registered on August 7, 2014.
- US Trade Mark Reg. No. 3828467 RICK OWENS, in Classes 20 and 35, registered on August 3, 2010.
(individually and collectively the "Trade Mark")
The First Respondent is a privacy registration service located in Hangzhou, Zhejiang, China. The Second or underlying Respondent subsequently disclosed by the Registrar as the registrant of the Domain Name is an individual named Long Zhi Chao located in Shanghai, China. References to the Respondent in the decision, unless specified otherwise, are references to the underlying registrant.
The Respondent registered the Domain Name on September 2, 2017. The Domain Name resolves to a website purporting to be a "Rick Owens Supply factory prices outlet" (the "Website"). The home page bears the Trade Mark prominently and offers for sale clothing, shoes and accessories bearing the Trade Mark at heavily marked down prices. The discounts offered range from 45 to 85 percent. The Website refers to itself as the "Online Shop" and says that "Online Shop are [sic] a professional factory online shop". The Website is in the English language. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is identical to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
6.1. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith. 6.2. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits in paragraph IV of the Complaint and confirmed in an email of October 11, 2017, that the language of the proceeding should be English. The Complainant contends that the Website is in the English language and also appears to be targeting English speaking consumers which indicate that the Respondent understands English. The Complainant further submits if it has to conduct the proceeding in the Chinese language, it will be subject to disproportionate expense and undue delay caused by the cost of translation services and the inconvenience of having to conduct the proceeding 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.
The Panel accepts the Complainant's submissions and is satisfied that the Respondent is familiar with the English language. The Respondent has chosen not to respond. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding. 6.3 Substantive Analysis A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to establish if the domain name is identical or confusingly similar to the complainant's trade mark. The trade mark would generally have to be recognizable within the domain name. In this case the Domain Name integrates the Trade Mark in its entirety plus the descriptive term "store". For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the country code Top-Level Domain ("ccTLD"). In any event, the addition of a descriptive term "store" does not negate the confusing similarity, which is apparent due to the Respondent's complete integration of the Trade Mark in the Domain Name. E.g, N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyP,WIPO Case No. D2011-0260; Oakley, Inc. v. wu bingjie aka bingjie we/ Whois Privacy Protection Service,WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic,WIPO Case No. D2010-0207.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of production always remaining on the complainant.
The Complainant alleges that the Respondent is not commonly known by the Domain Name. The Complainant has no commercial link with the Respondent. It has not granted the Respondent any authorization, licence or any right whatsoever to use the Trade Mark as part of the Domain Name. Nor is the Respondent an authorised dealer, licensee or distributor of the Complainant. It purports to be a reseller of products bearing the Trade Mark at a heavily discounted price.
Section 2.8.1 of WIPO Overview 3.0 says this:
"Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant's trademark to undertake sales or repairs related to the complainant's goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the 'Oki Data test', the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant's relationship with the trademark holder; and
(iv) the respondent must not try to "corner the market" in domain names that reflect the trademark.
The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant's trademark." See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
In this case, there is nothing on the Website explaining the relationship between the Complainant and the Respondent. Indeed there is minimal information on the Website about the Respondent. The fact that the Website was offering for sale what looks like the Complainant's clothing and accessories and has images that look like they could be from the Complainant's website, it does appear to the Panel that the content of the Website was intended to mislead Internet users into thinking that there is a connection between the Complainant and the Respondent. The Panel finds the Oki Data principles are not satisfied in this case.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the disputed domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant's Trade Mark when it registered the Domain Name. It is implausible that it was unaware of the Complainant when it registered the Domain Name given the fame of the fashion designer. In the WIPO Overview 3.0, section 3.2.2 states as follows:
"Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant's mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant's mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent's claim not to have been aware of the complainant's mark."
Given that the Respondent is selling products bearing the Trade Mark, it is clearly inconceivable that the Domain Name was selected by the Respondent without the Complainant in mind. As outlined under the second element above, the clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent's choice of the Domain Name is also a significant factor to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The Domain Name fall into the category stated above and the Panel finds that registration is in bad faith
The Panel also concludes that the actual use of the Domain Name is also in bad faith. The use of the Complainant's Trade Mark as the dominant part of the Domain Name is intended to capture Internet traffic from Internet users who are looking for the Complainant's product. The Domain Name and the content of the Website are calculated to confuse Internet users that the Respondent is somehow connected to the Complainant when this is not the case. It is also likely that the goods sold on the Website are counterfeit given that they are heavily discounted. There are no contact details on the Website which could suggest that personal data and credit card details entered by customers could potentially be collected and used for nefarious purposes. The lack of response by the Respondent is another indicator or typical cybersquatter behaviour. There is a clear intention on the part of the Respondent to attract Internet users for commercial gain by confusing and misleading Internet users into believing that the Website and the products sold on them were authorised or endorsed by the Complainant.
The above is clearly bad faith under paragraph 4(a)(iv) of the Policy and the Panel concludes that the Respondent's registration and use of the Domain Name are in bad faith.
The Complainant has also submitted that the First Respondent has engaged in a pattern of bad faith conduct by virtue of the fact that in 2017, more than 10 UDRP cases filed against it has resulted in panel decisions to transfer the disputed domain names. The First Respondent is a privacy registration service in China. The Registrar provided the details of the underlying Respondent within two days of receipt of a verification request by the Center.
In cases involving privacy of proxy services, the panel retains a discretion to determine the respondent against which the case should proceed. There is no indication here and no evidence provided of a relationship between the two Respondents which goes beyond the provision of privacy or proxy registration services. It is accepted practice in UDRP decisions to record both the privacy or proxy registration services as joint respondents as well as to record only the underlying registrant as the named respondent. This is made clear in section 4.4 of WIPO Overview 3.0. There are no decisions that the Panel is aware in which a privacy or proxy registration service with no relationship with the underlying registrant is imputed with the knowledge of the underlying registrant and is the party upon which the pattern of bad faith registration is based on. The panel does not think this would be an appropriate approach to follow. In any event, the use of the Domain Name has already been found to be in bad faith.
The Panel determines that the Domain Name is also used in bad faith. 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.
Karen Fong
Sole Panelist
Date: November 20, 2017
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