WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fashion Box S.p.A. v. Antonia Deinert
Case No. D2010-1102
1. The Parties
Complainant is Fashion Box S.p.A. of Asolo, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
Respondent is Antonia Deinert of Berlin, Germany.
2. The Domain Name and Registrar
The disputed domain name <replayjeans.net> is registered with Xin Net Technology Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2010. On July 2, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On July 5, 2010, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On July 6, 2010, the Center transmitted by email to the parties a communication in both Chinese and English regarding the language of proceedings. On the same day, Complainant submitted a request that English be the language of proceedings. Respondent did not comment on the language of proceedings by the specified due date. The Center verified that the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 2, 2010.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on August 6, 2010. 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.
The registration agreement under which the disputed domain name was registered is in the Chinese language. Complainant submitted its Complaint in the English language, and requested that the proceedings be conducted in English. Respondent did not submit observations concerning the language of the proceeding. Complainant noted that Respondent is based in Berlin, Germany, and that a substantial part of the residents of Germany are familiar with the English language. Complainant indicated that it is not familiar with the Chinese language. The Panel observes that the website addressed by the disputed domain name is almost exclusively in the German language, and that there are no Chinese characters visible on that website. As this dispute involves a person based in Italy (Complainant) and a person based in Germany (Respondent), the Panel considers that English is a reasonable neutral language in which to conduct the proceedings. Respondent has not objected. The proceedings will be conducted in the English language.
4. Factual Background
Complainant is owner of numerous registrations for the word, and word and design, trademark REPLAY, as well as various REPLAY-formative trademarks, including REPLAY BLUE JEANS. These include, for REPLAY, registration as a Community Trade Mark (CTM), number 000520080, dated January 31, 2006, in international classes (ICs) 3, 9, 14, 16, 18, 24, 25, 28, 35 & 42; and, for REPLAY BLUE JEANS, registration on the register of the Italian Patent and Trademark Office, number 0000738094, dated January 15, 1998, in IC 25, covering clothing, footwear and headgear (articoli di abbigliamento calzature cappelleria).
Complainant has registered the trademark REPLAY under the Madrid System, with international registration number 481202, dated November 24, 1983, in IC 25, successfully designating over 40 countries, including Germany. Complainant has provided evidence of numerous additional registrations of the trademark REPLAY and various REPLAY-formative marks worldwide.
Complainant markets and sells clothing and other fashion products worldwide under the REPLAY, REPLAY BLUE JEANS and other REPLAY-formative marks. Complainant operates a commercial Internet website at “www.replay.it”, to which the addresses “www.replaybluejeans.com” and “www.replaybluejeans.it” resolve. Complainant registered the domain name <replayjeans.com> in 2006.
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to that verification, the record of the disputed domain name was created on 2010-03-06.
Respondent is operating a commercial Internet website at the address of the disputed domain name, “www.replayjeans.net”. The website top banner displays REPLAYJEANS.NET in large font, followed by various navigation headings, mixing German with English, “Start Seite” (i.e., Start Page), “Neue Produckte” (i.e., New Products), “Top Seller”, “Sale”, “Zahlungsart” (i.e., Payment Methods) and “Kommentare” (i.e., Comments).1 The webpage continues in German to greet the Internet user, to display photographs of alleged REPLAY brand blue jeans for sale with pricing (in Euros), and provides a shopping cart and checkout. There is text at the bottom of the homepage extolling in German the virtues of REPLAY brand jeans. This text does not include any disclaimer of affiliation between the operator of the website and the owner of the brand. There is a copyright notice at the bottom of the webpage stating "Urheberrecht @[sic] 2009-2010 Replay Jeans Alle Recht vorbehalten." (i.e., Copyright 2009-2010 Replay Jeans all rights reserved). There are other links within the website explaining the origin of the REPLAY brand, but with no indication that the website is not operated or authorized by the brand owner. The contact information for the website operator is given as "firstname.lastname@example.org". Respondent's website also contains a reference to “G-Star Jeans", although there is no link to any G-Star products.
Complainant has asserted that the blue jeans products being offered for sale under Complainant's trademarks on Respondent's website are not its genuine trademark products, and has indicated various features of the blue jeans shown on Respondent's website that are not consistent with Complainant's product line.
The Registration Agreement is in the Chinese language. The Registrar has confirmed in English that the Registration Agreement in effect between Respondent and Xin Net Technology Corp. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it has rights in the trademarks REPLAY, REPLAY BLUE JEANS and other REPLAY-formative trademarks as evidenced by registration in numerous countries and supported by use in commerce worldwide.
Complainant argues that the disputed domain name is confusingly similar to its REPLAY and REPLAY BLUE JEANS trademarks, is identical to Complainant's domain name <replayjeans.com>, and is confusingly similar to other domain names of Complainant.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Complainant has not in any way authorized Respondent to use its trademarks; (2) Respondent has no trademark rights in REPLAY or REPLAY JEANS; (3) the disputed domain name is being used to create confusion between Complainant and a competitor (i.e., G-Star); (4) Respondent has never made any bona fide use of the domain name; and (5) Respondent has never been known by the REPLAY or REPLAY JEANS names.
Complainant argues that Respondent registered and has used the disputed domain name in bad faith because: (1) the REPLAY marks are well-known worldwide, and therefore Respondent must have known of Complainant's marks when it registered the disputed domain name; (2) Respondent has registered domain names containing the trademarks of other third parties in the fashion field, including <belstaffjacken.com> and <oakleysonnenbrille.org>; (3) Respondent is offering to sell products under Complainant's trademark, and Complainant believes that such products are not genuine products of Complainant; and (4) the text on Respondent's website is deliberately designed to create the false impression that the website is offering original products manufactured by Complainant. Complainant contends that there is no plausible good faith explanation for Respondent's use of its trademark in the disputed domain name. Complainant contends that Respondent is using the disputed domain name for commercial gain to attract Internet users to its website by creating confusion, and that Respondent has demonstrated a pattern of registering domain names containing the trademarks of third parties.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified Respondent of the Complaint and commencement of the proceeding at the physical and email addresses shown in the record of registration of the disputed domain name. Courier delivery records show that the Written Notice was delivered at the physical address of Respondent. The Panel is satisfied that the Center fulfilled its responsibility to provide notice as prescribed in the Policy and Rules, and that Respondent received adequate notice of these proceedings and a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has submitted evidence of registration of the trademarks REPLAY and REPLAY BLUE JEANS in numerous countries, including REPLAY as a CTM and under the Madrid System including designation of Germany, and REPLAY BLUE JEANS on the register of the Italian Patent and Trademark Office. Complainant has further submitted substantial evidence of use of those trademarks in numerous countries around the world, including in Europe.
The Panel determines that Complainant has rights in the trademarks REPLAY and REPLAY BLUE JEANS.
The disputed domain name, <replayjeans.net>, directly incorporates Complainant's REPLAY trademark, and further incorporates the short-form reference for the descriptive BLUE JEANS, i.e., “jeans”. The addition of the noun "jeans" to Complainant's REPLAY trademark would be expected by Internet users searching for Complainant's products, and does not serve to distinguish the disputed domain name from Complainant's REPLAY trademark for purposes of avoiding a finding of confusing similarity. The disputed domain name is confusingly similar to Complainant's REPLAY trademark.
The use by Respondent of the short form "jeans" in the disputed domain name in place of BLUE JEANS as found in Complainant's REPLAY BLUE JEANS trademark does not dispel confusion with Complainant's REPLAY BLUE JEANS trademark. The descriptive meaning of the terms BLUE JEANS and "jeans" are substantially similar in common English. The Panel determines that the disputed domain name is confusingly similar to Complainant's REPLAY BLUE JEANS trademark.2
The Panel determines that Complainant holds rights in two trademarks and that the disputed domain name is confusingly similar to those trademarks.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.” (Policy, paragraph 4(c))
Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has failed to respond.
Respondent's use of the disputed domain name has been to direct Internet users to a website where it is offering for sale products alleged to be those of Complainant, and prominently displaying Complainant's trademark as the name of its website.
There is no evidence on the record of the proceeding to suggest that Respondent has been known by the disputed domain name, or that Respondent has any trademark rights in the disputed domain name.
Although there are circumstances in which a reseller of trademark products may fairly use a trademark in a domain name, such circumstances are not present in this proceeding. Respondent has deliberately designed its website to give the appearance that it is operated or authorized by the owner of the trademark, including by using the trademark as its website name, when in fact the website is not operated or authorized by Complainant. Respondent is making substantially more use of Complainant's trademark than is necessary to identify Complainant's products, even assuming that it is offering genuine trademark products. However, Complainant has presented substantial evidence that Respondent is not offering genuine products carrying Complainant's trademark, i.e., that Respondent is deliberately misleading consumers. Offering counterfeit trademark products does not constitute fair use of a trademark in a domain name. See Magneti Marelli Powertrain U.S.A. LLC v. Top-End Performance, WIPO Case No. D2009-1272.
Respondent has offered no alternative plausible grounds for establishing rights or legitimate interests in the disputed domain name.
Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating that “(ii) [respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [respondent has] engaged in a pattern of such conduct; or […] (iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on your web site or location” (Policy, paragraph 4(b)(iv)).
Respondent has used the disputed domain name, which is confusingly similar to Complainant’s trademark, for the purpose of intentionally attracting for commercial gain Internet users to Respondent’s website, by creating confusion as to source, sponsorship, affiliation or endorsement by Complainant of Respondent’s website. Respondent used Complainant’s trademark as its business name on its website, exacerbating potential Internet user confusion regarding Complainant’s affiliation with or sponsorship of Respondent’s business. Respondent appears to have offered counterfeit trademark products on its website, presumably intending to take unfair advantage of Internet users. The Panel determines that Respondent registered and used the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Complainant has provided evidence that Respondent also has engaged in a practice of registering the trademarks of third parties in domain names. In light of the foregoing determination, the Panel need not consider this additional ground for a finding of bad faith registration and use.
For all 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 <replayjeans.net> be transferred to Complainant.
Frederick M. Abbott
Dated: August 16, 2010
1 The Panel is familiar with the German language and the translations are by the Panel.
2 The gTLD “.net” used in the disputed domain name is not relevant in these circumstances for purposes of confusing similarity analysis under the Policy.