WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ECCO sko A/S v. Lin Ronghua / Mr. Lin
Case No. D2010-1443
1. The Parties
The Complainant is ECCO sko A/S of Denmark.
The Respondent is Lin Ronghua / Mr. Lin of Beijing, the People’s Republic of China.
2. The Domain Names and Registrar
The disputed domain names <eccobrandshop.com> (“Domain Name A”) and <ecooshop.com> (“Domain Name B”) are registered with Xin Net Technology Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“the Center”) on August 27, 2010. On August 27, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain names. On August 30, 2010, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of Domain Name A and providing the Respondent’s contact details. On September 3, 2010, the Complainant requested to add Domain Name B to the Complaint. The Center sent an email communication to the Complainant on September 7, 2010 providing the registrant and contact information for Domain Name B, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on September 9, 2010 and on September 21, 2010. On September 2, 2010, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On September 2, 2010, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the due date.
The Center has verified that the Complaint and the amended Complaint satisfy 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 the Respondent of the Complaint, and the proceedings commenced on September 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for the Response was October 12, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on October 13, 2010.
The Center appointed Sebastian Hughes as the sole panelist in this matter on October 21, 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.
4. Factual Background
A. The Complainant
The Complainant is a company incorporated in Denmark and the owner of registrations for the ECCO word and device trade marks in over 100 countries worldwide, including in China, where the Respondent is based (“the Trade Marks”). The Complainant is also the owner of the domain names <ecco.com> and <ecco.eu>.
B. The Respondent
The Respondent is an individual apparently with an address in China.
Domain Name A was registered on January 22, 2010. Domain Name B was registered on August 30, 2010.
5. Parties’ Contentions
The Complainant submitted as follows.
The Complainant was founded in 1963 and is a well-known manufacturer of shoes, bags, belts and shoe care products under the Trade Marks. The Complainant’s 2009 turnover was close to USD1 billion. The Complainant has a total workforce worldwide of approximately 15,000 employees.
The disputed domain names are confusingly similar to the Trade Marks. The essential part of Domain Name A is the word “ecco” which is identical to the Trade Marks. The essential part of Domain Name B is the word “ecoo” which is confusingly similar to the Trade Marks.
The website to which the disputed domain names are resolved (“the Website”) offers for sale unauthorised counterfeit footwear under the Trade Marks. It lures consumers into believing it is a legitimate ECCO website by mixing fake ECCO products with genuine products. The Respondent has copied photographs of genuine ECCO footwear from the Complainant’s website onto the Website, and interspersed photographs of fake ECCO footwear on the Website. The Complainant believes the Respondent does not sell any genuine ECCO footwear and is only selling counterfeits.
Following receipt of the Complaint, the Respondent redirected Domain Name A to Domain Name B. The Respondent subsequently redirected Domain Name B to the domain name <535shoes.com>, also apparently recently registered by the Respondent1. All three of these domain names continue to be resolved to the Website.
The Respondent has no rights or legitimate interests in the disputed domain name and is using the disputed domain name in bad faith to intentionally attract users, for commercial gain, to the Website, by creating confusion with the Trade Marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the registration agreements for the disputed domain names is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (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).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) the disputed domain names are in English;
(2) the Website is in English which shows that the Respondent has mastered the English language;
(3) requiring the Complainant to translate the Complaint would involve additional costs and an undue further burden on the Complainant.
The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Xin Net Technology Corp. has advised the Center that the language of the registration agreements for the disputed domain names is 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 (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, supra).
The Panel finds that evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) that English shall be the language of the proceeding.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration which predate by many years the dates of registration of the disputed domain names.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
The addition of the generic words “brand” and “shop” does not serve to distinguish the disputed domain names from the Trade Marks in any way.
Domain Name A comprises the word “ecco” which is identical to the Trade Marks together with the generic words “brand” and “shop”.
Domain Name B comprises the word “ecco” which is similar to the Trade Marks save the third letter “c” has been replaced with the letter “o”, together with the generic word “shop”. The Panel believes the Respondent has deliberately misspelled Domain Name B in order to deliberately attract consumers who have mistyped the URL <eccoshop.com> or otherwise in order to try to avoid the Complainant taking legal action in respect of the disputed domain names and the Website. Such practice, known as “typosquatting”, has been censured in numerous UDRP decisions (see, for example, Verisign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446).
The Panel finds that the disputed domain names are confusingly similar to the Trade Marks.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(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 organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate non-commercial 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.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent’s registration of the disputed domain names by many years. There is therefore a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant has asserted that the Website is used by the Respondent to market unauthorised, counterfeit goods. There can be no legitimate interest in the sale of counterfeits (Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names are used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate non-commercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”
The Complainant has submitted compelling evidence to suggest that the disputed domain names are being used to offer for sale counterfeit ECCO footwear via the Website. This is strong evidence of bad faith (Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019).
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
The Complainant has also submitted that:
1. the Website features unauthorised reproductions of the photographs of the Complainant’s footwear uploaded by the Respondent from the Complainant’s website; and
2. following filing of the Complaint, the Respondent registered Domain Name B and redirected Domain Name A to Domain Name B, and subsequently to the domain name <535shoes.com>.
The Panel is of the opinion that such conduct evinces further evidence of Respondent bad faith
The Panel also considers the failure of the Respondent to file a Response to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 names <eccobrandshop.com> and <ecooshop.com> be transferred to the Complainant.
Dated: November 4, 2010
1 The Complainant has not asserted any trade mark rights in respect of the domain name <535shoes.com> and such domain name is not under complaint in this proceeding.