The Complainant is Roger Vivier S.p.A., Italy, represented by Convey Srl, Italy.
The Respondents are Domain Protection Services Inc. / Lee Rose, China / Watches Allen, China. 2. The Domain Names and Registrar
The domain names The “First Respondent”, Lee Rose, is the owner of the Disputed Domain Name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2019. On October 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 1, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 4, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint or to file a Complaint for each of the Disputed Domain Names. The Complainant filed an amended Complaint on October 8, 2019. In its amended Complaint, the Complainant submitted a request for consolidation. In the case of complaints brought against more than one respondent, consolidation may proceed where the domain names or the websites to which they resolve are subject to common control, and the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 4.11.2. The Panel submits that the criteria set out above are met and thus, accepts consolidation in the present case. 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 October 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2019. The Center appointed Lynda M. Braun as the sole panelist in this matter on November 13, 2019. 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. 4. Factual Background The Complainant is a high-end fashion company headquartered in Italy. The Complainant’s first boutique was founded in Paris, France in 1937 by fashion designer Monsieur Roger Henri Vivier. On August 29, 1968, the trademark ROGER VIVIER BOUTIQUE was given worldwide trademark protection through national and international trademark registrations. The Complainant currently designs and distributes luxury products, such as shoes, bags, and women’s accessories, selling to 60 boutiques worldwide. The Complainant owns the following trademark registrations in various jurisdictions worldwide, including, but not limited to: - International Trade Mark No. 348577 for the figurative mark ROGER VIVIER BOUTIQUE, registered on August 29, 1968, in International classes 3, 18, 21 and 25; The above trademarks are hereinafter collectively referred to as the “ROGER VIVIER Marks”. The Complainant also owns numerous domain names, including The Disputed Domain Name On September 20, 2019, the Complainant sent a cease and desist letter to the Respondents, demanding that the Respondents immediately discontinue the use of the Disputed Domain Names and transfer them to the Complainant. Following the receipt of the cease and desist letter, the First Respondent redirected the Disputed Domain Name The following are the Complainant’s contentions: - The Disputed Domain Names are confusingly similar to the Complainant’s Marks. - The Respondents have no rights or legitimate interests in respect of the Disputed Domain Names. - The Respondents registered and are using the Disputed Domain Names in bad faith. - The goods on the Respondent’s website are counterfeit. - The Complainant seeks the transfer of the Disputed Domain Names from the Respondents to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order for the Complainant to prevail and have the Disputed Domain Names transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)): (i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) The Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) The Disputed Domain Names were registered and are being used in bad faith. A. Identical or Confusingly Similar The Panel concludes that the Complainant has rights in the ROGER VIVIER Marks based upon its numerous registrations of the ROGER VIVIER Marks. It is well established that registration of a trademark is sufficient to establish rights in that mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657 (“A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.”). The Disputed Domain Name The Disputed Domain Name The Disputed Domain Names include a “.co” ccTLD. The addition of a ccTLD such as “.co” in a domain name may be technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182. Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production to demonstrate rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondents have not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its ROGER VIVIER Marks, nor does the Complainant have any type of business relationship with the Respondent. Finally, the name of the Respondents has no apparent connection to the Disputed Domain Names that would suggest that it is related to a trademark or trade name in which the Respondents have rights. Based on the use made of the Disputed Domain Names, the Panel finds that the Respondents are not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Names. Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondents’ bad faith pursuant to paragraph 4(b) of the Policy. First, the Respondent attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s ROGER VIVIER Marks. The Panel finds that the Respondents registered the Disputed Domain Names to attract customers to their websites by using a domain name that is confusingly similar to the Complainant’s ROGER VIVIER Marks. The use of a domain name to intentionally attempt to attract Internet users to a registrant’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website for commercial gain demonstrates registration and use in bad faith. Second, the use of the Disputed Domain Names in connection with a commercial website where the Complainant’s trademarks were misappropriated and counterfeit ROGER VIVIER goods bearing the ROGER VIVIER Marks were offered for sale, indicates that the Respondents’ purpose in registering the Disputed Domain Names was to capitalize on the renown of the Complainant’s trademarks by diverting Internet users seeking genuine ROGER VIVIER products to their websites for financial gain. This conduct is emblematic of bad faith. In addition, the online store to which the Disputed Domain Names resolved is confusingly similar to the Complainant’s genuine online store at “www.rogervivier.com”. Thus, the Respondent’s attempt to use the significant goodwill in the ROGER VIVIER Marks by registering the Disputed Domain Names and using them to misdirect visitors to a website which appears to be the Complainant’s official site, but in actuality was a website selling counterfeit goods, demonstrates the Respondent’s bad faith registration and use of the Disputed Domain Names under the Policy, paragraph 4(b)(iv). Such use creates the impression that the Respondents’ websites are sponsored, affiliated or endorsed by the Complainant. Third, the Respondents’ failure to respond to a cease and desist letter constitutes further evidence of bad faith. See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062 (“... such bad faith is compounded when the domain name owner or its duly authorized privacy service, upon receipt of notice that the domain name is identical to a registered trademark, refuses to respond or even to disclose the domain name owner’s identity to the trademark owner... Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.”). Fourth, the Panel finds that the Respondents knew or should have known of the Complainant’s rights in its ROGER VIVIER Marks when registering the Disputed Domain Names. The Complainant’s ROGER VIVIER Marks are well known in the fashion industry and the Respondent registered the Disputed Domain Names decades after the Complainant first used and obtained its trademark registrations for the ROGER VIVIER Marks. Given the Complainants’ renown and goodwill worldwide, it strains credulity to believe that the Respondents had not known of the Complainant or the ROGER VIVIER Marks when registering the Disputed Domain Names. See Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763. The Respondents’ awareness of the Complainant’s trademarks is also evidenced by the Respondents’ use of the Disputed Domain Names to sell counterfeit products bearing the ROGER VIVIER Marks. Finally, the Respondents have been engaged in an abusive pattern of domain name registrations to prevent trademark owners, including the Complainant, from reflecting their trademarks in corresponding domain names. See WIPO Overview 3.0, section 3.1.2. The Respondents’ practice of cybersquatting is evidenced in multiple UDRP decisions, where panels have found that the Respondents had engaged in such a pattern of conduct and ordered the transfer of the domain names in those cases to the complainant. See, e.g., J Choo Limited v. lee rose / Whois Agent, Whois Privacy Protection Service, Inc.,WIPO Case No. D2016-1229; Columbia Sportswear North America, Inc. v. Whois Agent / watches allen,WIPO Case No. D2015-1747. Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Names Lynda M. Braun 1 The Panel notes that the Disputed Domain Names are registered under the country code Top-Level Domain “.co”. However, as the applicable dispute resolution policy for “.co” domain name disputes is the UDRP, the Panel finds UDRP precedent to be relevant to this case. 1 As of the writing of this Decision, the Disputed Domain Name
- International Trade Mark No. 590402 for the figurative mark ROGER VIVIER, extended to China (where the Respondents purportedly reside), registered on August 5, 1992, in International classes 3, 9, 14, 15, 18, 20, 21, 24, 25, 26, 34 and 42;
- International Trade Mark No. 854491 for the figurative mark R.V., registered on January 27, 2005 in International classes 9 and 14;
- European Union Trade Mark No. 006349138 for the word mark ROGER VIVIER, registered on October 17, 2008 in International classes 3, 9, 14, 16, 18, 20, 21, 24, 25, 26, 34, 35 and 42;
- International Trade Mark No. 1022702 for the figurative mark RV ROGER VIVIER, registered on August 20, 2009 in International classes 3, 9, 14, 16, 18,24, 25 and 35; and
- International Trade Mark No. 1120203 for the word mark VIVIER, registered on May 14, 2012 in International classes 9 and,14.
Sole Panelist
Date: November 26, 2019
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