The Complainant is Michael Kors (Switzerland) International GmbH, Switzerland, represented by Baker & McKenzie, Ukraine.
The Respondent is Minakova Maria, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on January 16, 2020. On January 17, 2020, the Center transmitted by email to the Registrar a request for registrant verification in connection with the disputed domain name. On January 17, 2020, 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 January 21, 2020 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 January 23, 2020 in this regard. On January 21, 2020, the Center sent an email communication in English and Russian to the Parties indicating the registration agreement for the disputed domain name is in Russian, and inviting the Parties to submit their preference as to the language of the proceeding. On January 23, 2020, the Complainant submitted its request that English be the language of the proceeding. On January 23, 2020, the Respondent sent an email in Russian requesting either Russian or Ukrainian as the language of the Proceeding. The Center verified that the Complaint satisfied the formal requirements of the .UA Domain Name Dispute Resolution Policy (the ”.UA Policy”), the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”). In accordance with the .UA Rules, paragraph 4(c), the Center formally notified the Respondent of the Complaint in both Russian and English, and the proceedings commenced on January 28, 2020. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was February 17, 2020. The Response was submitted to the Center on February 14, 2020. The Center appointed Ganna Prokhorova as the sole panelist in this matter on February 27, 2020. 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 .UA Rules, paragraph 7. 4. Factual Background The Complainant conducts a substantial fashion business under the mark MICHAEL KORS. Established in 1981, the Complainant currently produces a range of products under its signature Michael Kors Collection, MICHAEL Michael Kors and Michael Kors Mens trademarks. These products include accessories, footwear, watches, jewelry, women’s and men’s ready-to-wear, wearable technology, eyewear and a full line of fragrance products all marked with MICHAEL KORS trademark. The Complainant, has though extensive activity, advertising and marketing, acquired a very substantial worldwide reputation and well-known nature in its MICHAEL KORS brand. MICHAEL KORS name and trade mark was originally a name of the founder of the Complainant company, which though the continuous use in commerce for more than 38 years developed secondary meaning and became a well-known brand uniquely associated with the Complainant and its products. As a result, and given the use and reputation referred below, the MICHAEL KORS mark is identified by consumers only with the Complainant and its goods. The Complainant also distributes MICHAEL KORS branded goods though branded stores located in some of the most prestigious cities in the world, including New York, Beverly Hills, Chicago, London, Milan, Paris, Munich, Istanbul, Dubai, Seoul, Tokyo, Hong Kong, Shanghai and Rio de Janeiro. As of the date of the Complaint, there are four stores operated by the Complainant in Ukraine. The Complainant officially started sales of MICHAEL KORS branded goods in Ukraine from December 12, 2012. MICHAEL KORS branded goods immediately became extremely popular in Ukraine and now volumes of sales in Ukraine are reaching up to USD 2 million for the last January-October 2019. The Complainant has more than 17.5 million followers on Facebook, 15.8 million followers on Instagram and nearly 3,5 million followers on Twitter. The Complainant owns at least 258 active trademarks for MICHAEL KORS brand globally, among which are US trademark No 74219653 for MICHAEL KORS registered on April 1, 1997 covering goods in class 25, the European Union trademark No 003140456 for MICHAEL KORS registered on November 22, 2004 covering goods and services in Classes 3, 9, 14, 18, 20, 21, 24, 25, 35 (for example, perfumes, jewelry and some accessories as well as various items of apparel, bags and suitcases, clothing, footwear and headgear etc.). Furthermore, the Complainant owns the Certificate of Ukraine No. 170308 for MICHAEL KORS applied on March 6, 2012 and registered on May 13, 2013 for a wide range of goods and services of classes 09, 14, 18, 25 and 35. The Complainant distributes MICHAEL KORS branded goods directly though the website at “www.michaelkors.com” since 1999, which displays all the collections, and contains information regarding, inter alia, the brand as well as customer support. The Respondent is an individual from Ukraine. The disputed domain name The Complainant contends that it has rights in the mark MICHAEL KORS by virtue of use and registrations. The Complainant submits that the disputed domain name is identical or confusingly similar to the Complainant’s rights in the MICHAEL KORS name and marks. The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant adds that there is no evidence of the Respondent’s use or preparations to use the disputed domain name for a bona fide offering of goods or services, or that the Respondent is commonly known by the disputed domain namee, or that he has any legitimate noncommercial or fair use of the disputed domain name. The Complainant alleges that the disputed domain name was registered and/or is being used in bad faith. The Complainant seeks a decision that the domain name be transferred to the Complainant. B. Respondent The Respondent submitted a Response in Russian to the Center, which states that the disputed domain name is not identical to the mark of the Complainant. The Respondent also contends that he uses the disputed domain name in connection with a bona fide offering of goods. 6. Discussion and Findings 6.1. Language of Proceedings Paragraph 11(a) of the .UA Rules provides that “unless otherwise agreed by the Parties, the language of the administrative proceeding shall be the language of the Registration Agreement (which shall be in English, Russian or Ukrainian), subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The language of the Registration Agreement for the disputed domain name is Russian. The Complainant has filed the Complaint in English and requested English to be the language of this proceeding. The Complainant contends that the Respondent must be familiar with the English language because, as far as the Complainant does not operate an official website in Russian, or Ukrainian, “the Complainant believes that the Respondent translates all product descriptions and product information from English (main language of the official Complainant’s website www.michaelkors.com) to Russian”. Therefore, the Complainant believes that the Respondent is familiar with the English language, and it would be in fairness to both Parties for the proceeding to be held in English as appropriate language of this proceeding. The Respondent objected to the Complainant’s request requesting either Russian or Ukrainian as the language of the proceeding. The Panel is familiar with all three languages, English, Russian and Ukrainian. Whilst there is a language requirement that is provided for in paragraph 11(a) of the .UA Rules, the Panel has to balance that against the other considerations of ensuring that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their case. The Panel is of the view that the language requirement should not cause any undue burden on the parties or undue delay (see Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). Furthermore, where it appears the parties reasonably understand the nature of the proceedings and the panel can understand both the language of the complaint and one of the respondent’s submissions, prior Uniform Domain Name Dispute Resolution Policy (“UDRP”) panels (given the similarities between the .UA Policy and the UDRP, the Panel will refer to UDRP precedents when relevant) found it to be fair to the parties to conduct the proceeding in the language other than the language of the registration agreement. In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, or to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel also must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties. In this case, the Panel is proficient in both Russian and English and the circumstances of this case show that the Respondent is capable of understanding English. On February 14, 2020, the Respondent provided Response which shows that he understood the nature of the proceedings well. Specifically in the case of the Complainant submitting a request for the language of proceedings to be English, and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any arguments/supporting materials as to why the proceedings should not be conducted in English. The Panel noted that no arguments/supporting materials as to why the proceedings should not be conducted in English were provided by the Respondent within the prescribed term. The Panel also notes that the Center has sent all of its email communications to the Parties in both languages English and Russian. In addition, the Panel notes that the Respondent has submitted a Response in Russian and has argued his case. The Panel also finds that substantial additional expense and delay would likely be incurred if any of the Parties is ordered to further translate their respective filings. Based on the foregoing, the Panel concludes that it is not unfair to the Parties to proceed in English and finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English. The Panel also finds there is no need for the Parties to translate their respective filings, and accepts both filings as submitted. 6.2. General discussion In accordance with paragraph 4(a) of the .UA Policy, the Complainant must prove: (i) that the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered or is being used in bad faith. The Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions (Stanworth Development Limited v E Net Marketing Ltd.,WIPO Case No. D2007-1228). However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein. A. Identical or Confusingly Similar According to paragraph 4(a)(i) of the .UA Policy it should be established that the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights. First, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights. As evidenced in the Complaint, the Complainant is the owner of a large number of MICHAEL KORS marks which enjoy a widespread reputation, including in Ukraine, and predate the registration of the disputed domain name. It has been repeatedly held that if a complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights under paragraph 4(a)(i) of the UDRP and can therefore challenge the validity of a domain name containing that trademark (see Uniroyal Engineered Products. Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661). The Complainant further states that the disputed domain name is identical or confusingly similar to the Complainant’s MICHAEL KORS marks. The Panel agrees. According to section 1.11.1 of the WIPO Overview 3.0, the applicable generic Top-Level Domain (“gTLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. The Panel finds that the same approach shall be applied in the present case with the second-level domain and country-code top-level domain “com.ua” (see Confédération Nationale du Crédit Mutuel v. David J. Perkins / Worldwide Domains, WIPO Case No. DPH2016-0001; Abbott Diabetes Care Inc. v. Privacy Protection, Hosting Ukraine LLC / Виталий Броцман (Vitalii Brocman),WIPO Case No. DPW2017-0003). Save for the lack of a space between “michael” and “kors”, which it is not possible to incorporate as a consequence of the technical limitations of the Domain Name System, the Panel finds the disputed domain name is identical to the Complainant’s well-known MICHAEL KORS trademark. The Panel also finds that other contentions alleged by the Parties in support of their positions on the similarity issue under the first element are not relevant for the similarity analysis under the first element of the .UA Policy. In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the .UA Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the .UA Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Indeed, it is well established that, as it is put in the WIPO Overview 3.0, section 2.1, while the overall burden of proof in the proceedings is on the complainant, proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. Therefore, the Panel agrees with prior UDRP panels that the complainant is required to make out a prima facie case before the burden of production of evidence shifts to the respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the .UA Policy (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). However, by virtue of paragraph 4(c) of the .UA Policy, the respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements: “(i) before any notice to you 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 (as an individual, business, or other organization) have been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” If respondent demonstrates any of these elements or provides any other evidence that shows it has a right or legitimate interest in the disputed domain name, complainant will have failed to discharge its onus and the Complaint will fail with respect to the disputed domain name. In the present case, the Complainant has contended that the Respondent is not licensed or otherwise authorized by the Complainant to use the MICHAEL KORS mark, that no evidence exists to show that the Respondent has ever been legitimately known by the MICHAEL KORS mark, and has ever made use of MICHAEL KORS in connection with a bona fide offering of goods and services. The Panel agrees. Going into details, the Complainant contends that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair use. Although the Respondent does sell on the “www.michaelkors.com.ua” website MICHAEL KORS branded goods, offerings may not be characterized as “bona fide” as it fails to satisfy criteria 3 and 4 set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Furthermore, the Panel finds that Respondent is not commonly known by the disputed domain name under paragraph 4(c)(i)(iii) of the .UA Policy. According to the Registrar’s information “Minakova Maria” is the registrant of the domain name. The Complainant asserts that no evidence exists to show that the Respondent has ever been legitimately known by the name “MICHAEL KORS”. The Panel uses these assertions as evidence of lacking rights or legitimate interests (see Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that “Respondent was not commonly known by the disputed domain name where Complainant had never authorized Respondent to incorporate its NAVISTAR mark in any domain name registration”)). The Complainant alleges that the Respondent has never been legitimately affiliated with the Complainant, has never been known by the disputed domain name prior to its registration, and the Complainant has not given Respondent permission to use the Complainant’s mark in any manner. Accordingly, the Panel finds that Respondent is not commonly known by the Accordingly, the Panel finds that Complainant has satisfied the second element of the .UA Policy under paragraph 4(a)(ii). C. Registered or Used in Bad Faith According to paragraph 4(a)(ii) of the .UA Policy it should be established that the disputed domain name has been registered or is being used in bad faith. Although it is sufficient to prove registration of the disputed domain name or its use in bad faith, the Panel is convinced that the Respondent has both registered and is using the disputed domain name in bad faith. The Panel is of the opinion that unauthorized use by the Respondent of what appears to be Complainant’s products the website at the disputed domain name (see Annex 9 to the Complaint) without the Complainant’s authorization intentionally attempted to create a likelihood of confusion among customers and/or to otherwise take advantage of the Complainant’s well-known trademark for illegitimate purposes. The Panel also agrees that the fact that the disputed domain name is connected to a website that is clearly intended to look like the Complainant’s official website in Ukraine strongly indicates opportunistic bad faith (see Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International IP, LLC, Worldwide Franchise Systems, Inc v. Jia Cheng, WIPO Case No. D2014-2038). The Panel is convinced that the Respondent must have been well-aware of the Complainant’s widely known marks when it registered the disputed domain name in January 2014. At the date of registration of the disputed domain name, the Complainant’s marks already registered and recognized internationally, including in Ukraine. All in all, the Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the .UA Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the disputed domain name Ganna Prokhorova
Sole Panelist
Date: March 20, 2020
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