WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
G-Star International Ltd. and G-Star International B.V. v. James Hobart
Case No. DTV2006-0002
1. The Parties
The Complainants are G-Star International Ltd. Hong Kong, SAR of China, and G-Star International B.V., Amsterdam, the Netherlands, represented by Klos Morel Vos & Schaap, the Netherlands.
The Respondent is James Hobart, Richmond, Surrey, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <g-star.tv> is registered with Easily Ltd, United Kingdom of Great Britain and Northern Ireland.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2006. On February 8, 2006, the Center transmitted by email to Easily Ltd. a request for Registrar Verification in connection with the domain name at issue. On February 14, 2006, Easily Ltd. transmitted by email to the Center its Verification Response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 15, 2006. In accordance with the Rules, Paragraph 5(a), the due date for Response was March 7, 2006. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s Default on March 8, 2006.
The Center appointed Mr. Henry Olsson as the Sole Panelist in this matter on March 17, 2006.
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
G-Star International Ltd. is a corporation organized under the laws of Hong Kong and located in Hong Kong. G-Star International B.V is a corporation organized under the laws of the Netherlands and located in Amsterdam. They are in the following part of the Decision referred to as “the Complainant”.
The Complainant, G-Star, started its activities in 1989. According to information provided by the Complainant, the global annual sales of G-Star products amounted to about 115 million Euros in 2001 and reached 325 million Euros in 2005. Its products are to-day sold in more than 38 countries in the world in Europe, North America, the Middle East and Asia, including, for instance, the United Kingdom, the United States and Japan.
5. Parties’ Contentions
Complainant alleges that it is now one of the leading fashion labels for premium jeanswear. It is the owner of the G-STAR trademark and company name. The trademark has been registered worldwide for a number of goods and services, such as cosmetics, footwear, clothing, luggage and umbrellas, and the Complainant has made extensive use of its trademarks. Evidence submitted suggests that considerable investments have been made in advertising in magazines and newspapers as well as on billboards and at fashion fairs. Thus, G-Star has, for such activities, invested between 1,5 million and 3,6 million Euros in the years 1995 – 1999 and 5,9 to 7 million Euros annually in the years 2000 to 2005.
As a consequence of its extensive, long-continued and world-wide use and marketing the G-STAR trademark enjoys considerable goodwill and fame; according to the Complainant, the mark is and can be regarded as a well-known trademark within the meaning of Article 6bis of the Paris Convention.
The Complainant submits that the two corporations mentioned as Complainants are closely connected and affiliated and belong to the same group of companies. The trademark rights invoked in the proceeding at issue are generally registered in the name of G-Star International Limited but G-Star International B.V. is authorized to use and invoke any trademark rights relating to the G-STAR trademarks. The Complaints has submitted a copy of a license agreement to this effect. According to that Agreement, dated February 3, 2005, G-Star International B.V. holds an exclusive, perpetual and irrevocable license to use the G-STAR trademarks to apply for registration of trademarks and to take any action against any infringements of the trademarks.
The Complainant states that although the Policy and the Rules do not expressly provide for “multiple complainants” it is, according to the Complainant, established by prior UDRP cases that multiple entities can be accepted as multiple complainants if the entities are under common control or closely connected. In this respect the Complainant has referred to several earlier WIPO domain name cases. Therefore, the Complainant requests to be accepted as “multiple complainants”.
As regards contacts with the Respondent, the Complainant alleges that it became aware of the registration of the domain name on February 7, 2003. A cease and desist letter was sent to the Respondent, dated January 3, 2006, and sent to the address provided in the Whois information. No reply was received.
Identity or Confusing Similarity
Complainant has submitted a number of trademark registration certificates showing that the trademark G-STAR has been registered in, and for, a number of countries, including the United Kingdom.
As regards the issue of identity or confusing similarity, the Complainant submits that it is established case law in the UDRP context, also in respect of “.tv” domain names, that where a domain name incorporates a Complainantīs registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy.
The Complainant alleges that the domain name <g-star.tv> incorporates without any modification the trademarks G-STAR which are owned and commercially used by the Complainant in and for the purposes of its business. According to the Complainant this is a clear misuse and infringement of the Complainant and its trademarks. The addition of the suffix “.tv” is not sufficient to render the domain name distinct from the trademarks of the Complainant. In conclusion it must, according to the Complainant, be held that the Domain name <g-star. tv> is identical with (and/or confusingly similar to) the G-STAR trademarks of the Complainant.
The Complainant adds that, if necessary, also the principle of “initial interest confusion” would be invoked, as this has been the case in numerous previous UDRP cases. According to the Complainant, the fact that an Internet user ultimately discovers that the domain name/website <g-star.tv> is not operated by the Complainant can not cure the initial interest confusion experienced by the average Internet user when viewing, using or typing the Respondentīs domain name <g-star.tv>.
Rights or Legitimate Interests
The Complainant alleges that it has not licensed or otherwise permitted the Respondent to use its trademarks, or a sign confusingly similar to its trademarks, or to apply for any domain name corresponding to its trademarks. Also, there is, according to the Complainant, no other indications that the Respondent has any rights or legitimate interests as mentioned in Paragraph (c) of the Policy. Thus, to the knowledge of the Complainant, the Respondent has never used the domain name at issue in connection with a bona fide offering of goods or services, and the Respondent has never been commonly known by the domain name at issue, nor has the Respondent made any legitimate or fair use of the domain name.
The Complainant adds that, even if the Respondent had made any use of the domain name at issue, the fact of intentionally trading on the fame of another cannot constitute a bona fide offering of goods or services; otherwise it would mean that a respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that would obviously be contrary to the intent of the Policy.
Registration and Use in Bad Faith
In this respect, the Complainant contends that the domain name at issue is primarily registered to disrupt or damage the business of G-STAR. According to the Complainant it must be inferred from the Complainantīs well known use and reputation of the G-STAR brand and from the absence of any legitimate prior use by the Respondent that the Respondentīs primary reason for registering the domain name at issue would be to disrupt the business of G-STAR. With reference to the decision in an earlier case (BioCare Limited v. UK Scientific.com.Ltd; WIPO Case No. D2002-0345) the Complainant alleges that any intention of causing any damage to the trademark owner would be sufficient to finding bad faith to be established.
In addition, the Complainant invokes the actual or constructive knowledge of the Respondent in respect of the G-STAR and/or its trademarks. In this respect, the Complainant refers to the well-known use and reputation of the G-STAR brand in the United Kingdom, the Benelux countries and the European Community and to the fact that the e-mail address of the Respondent reveals that he is or was affiliated to a company called “Courtsdesign”. The Complainant submits that the company “Courtsdesign” appears to be a marketing agency acting for well-known clients in the United Kingdom fashion industry, and, therefore, the Respondent knew or should have known about the well-known G-STAR brand advertisements and trademark use by the Complainant. The Complainant adds that the Respondent lives in the United Kingdom and therefore should be aware of both the G-STAR trademark registrations and the success and reputation of the G-STAR jeanswar and products in the United Kingdom and elsewhere in Europe. Any trademark check by the Respondent would have shown the Complainantīs trademark registrations, and the Respondent should have been aware of the G-STAR brand and business also because the Complainant already owns a number of other domain names incorporating the G-STAR trademarks.
In summary, according to the Complainant, it is not possible that the Respondent, when he registered the domain name was not aware of the fact that he was infringing Complainantīs trademark rights to the well-known trademark G-STAR.
To support its allegation about bad faith on the part of the Respondent, the Complainant also refers to the Respondentīs failure to reply to any of the communications from the Complainant, something that, according to prior UDRP decisions, contributes to a finding that the Respondent has registered and is using the domain name in bad faith.
Finally, in connection with the allegation about bad faith, the Complainant also submits that the mere passive holding of a domain name cannot cure the bad faith of the registrant of a domain name. In this respect the Complainant refers to the first decision that addressed this issue Telstra Corporation Limited v. Nuclear Marshmallows; WIPO Case No. D2000-0003) and afterwards upheld in later decisions.
In accordance with Paragraph 4(i) of the Policy and for the reasons described above, the Complainant requests the Administrative Panel appointed in this administrative proceeding to issue a decision that the domain name <g-star.tv> be transferred to G-Star International B.V.
The Respondent did not reply to the Complainant’s contentions and is thus in Default.
6. Discussion and Findings
Paragraph 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.
In the case of Default by a Party, Paragraph 14 prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such conclusions therefrom as it considers appropriate. In this case, no Response has been submitted and none of the contentions by the Complainant have been rebutted despite the opportunity given to do so. The Panel will therefore have to operate and consider the case on the basis of the factual circumstances contained in the Complaint and the documents submitted to support these contentions.
Evidence submitted by the Complainant and the Registrar Verification show that the Tv. Dispute Policy incorporates the UDRP Policy which is applicable to all .tv domain name registrations, including the one in this case. Consequently, the Respondent is required to submit to a mandatory administrative proceeding as the one that is now initiated in respect of the domain name at issue.
Documentation available in the case shows that the Complaint has been duly communicated to the Respondent and that there is from this point of view no obstacle to considering the case.
Paragraph 4(a) of the Policy directs that the Complainant has to prove each of the following:
- that the domain name registered by the Respondent is identical with, or confusingly similar to, a trademark or a service mark in which the Complainant has rights,
- that the Respondent has no rights or legitimate interests in the domain name, and
- that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
In this respect, the Complainant has, according to Paragraph 4(a)(i) of the Policy, to prove that the domain name at issue is identical with, or confusingly similar to, a trademark or a service mark in which the Complainant has rights.
The domain name at issue is <g-star.tv>.
Evidence submitted indicates that the Complainant is holding registrations of the trademark G-STAR in a number of countries, including the United Kingdom, which registrations apply to, inter alia, footwear and clothing.
The evidence also shows that the trademarks that are relevant in this case are in general registered with G-Star International Ltd. and that G-Star International B.V has an exclusive license agreement with the Hong Kong corporation to use and invoke any rights relating to the trademark G-STAR. The Panel therefore accepts both G-Star International Ltd. and G-Star International B.V as Complainants in this case and the ones against which or to the benefit of which the legal effects would be directed. As mentioned above, they are in this decision referred to as “the Complainant.”
The domain name at issue contains the trademark G-STAR in which the Complainant has rights, with the addition of “.tv”. As the .tv suffix is to be disregarded in this context, the relevant part of the domain name and the trademark are identical. Hence, the first element is met.
B. Rights or Legitimate Interests
In this respect, the Complainant has, according to Paragraph 4(a)(ii) of the Policy to prove that the Respondent has no rights or legitimate interests in the domain name at issue.
Complainant has alleged that it has not licensed or otherwise permitted the Respondent to use its trademark, or any sign confusingly similar to its trademarks, or to apply for any domain name corresponding to such trademarks. The Complainant has added, inter alia, that, to its knowledge, the Respondent has never used the domain name in connection with any bona fide offering of goods or services and also that the Respondent has never been commonly known by the domain name nor has he made any legitimate or fair use of the domain name.
As mentioned above, the Respondent has submitted no Response and has thus not contested the allegations by the Complainant in this respect.
The circumstances present in this case and the information available concerning the activities of the Respondent suggest that there exist no rights or legitimate interests in the domain name on the part of the Respondent. The Panel consequently draws a conclusion to this effect.
C. Registered and Used in Bad Faith
In this respect, the Complainant has, according to Paragraph 4(a)(iii) of the Policy to prove that the domain name has been registered and is being used in bad faith. Furthermore, Paragraph 4(b) of the Policy sets out some circumstances that, in particular but without limitation, shall, if found to be present, be considered to be evidence of registration and use in bad faith.
As circumstances showing bad faith the Complainant has invoked the well known use and reputation of the G-STAR trademark and the absence of any legitimate prior use by the Respondent. These circumstances show, in the view of the Complainant, that the primary reason to register the domain name at issue had been to disrupt the Complainantīs business. The Complainant has also referred to the links that the Respondent has to the fashion industry in the United Kingdom; therefore, the Respondent should have been aware of the Complainant and its business and trademarks and should have known that he would infringe the Complainantīs trademark rights by registering the domain name.
The Respondent has not contested these allegations. These allegations have been supported by some evidence. The Panel finds it to be established that the Respondent must have been aware of the Complainantīs business and trademark at the time of the registration of the domain name. As regards the issue of bad faith, the Panel furthermore attaches importance to the fact that, according to the Complainant, the Respondent has not replied to any of the communications concerning the domain name prior to the Complaint and has not participated to this proceeding.
The Respondent does not seem to have made any active use of the domain name. In this respect, the Complainant has alleged that the mere holding of a domain name does not cure bad faith on the side of the Registrant of a domain name. The Panel notes that this principle has been upheld in various UDRP Decisions, taking into account the circumstances in each particular case.
In view of the fact that the Complainantīs business and trademarks are obviously well known in the United Kingdom and also taking into account the above-mentioned circumstances, the Panel comes to the conclusion that both the registration and the use of the domain name have occurred in bad faith.
On the basis of the foregoing, the Administrative Panel concludes that it has been established that the domain name at issue is confusingly similar to the trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and is being used in bad faith. The Complainantīs request for a transfer of the domain name to the Complainant, G-Star International B.V shall consequently be approved.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <g-star.tv> be transferred to the Complainant, G-Star International B.V.
Dated: March 23, 2006