WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Luxottica Group S.p.A., Luxottica Fashion Brillen Vertriebs GmbH v. Xu Lin
Case No. D2010-1570
1. The Parties
The Complainants are Luxottica Group S.p.A. of Milan, Italy and Luxottica Fashion Brillen Vertriebs GmbH of Haar, Germany, represented by Zirngibl Langwieser, Germany.
The Respondent is Xu Lin of Chengdu, Sichuan, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <inrayban.com> (“the Disputed Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2010. On September 17, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the Disputed Domain Name. On September 17, 2010, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a request for amendment by the Center, the Complainants filed an amendment to the Complaint on September 27, 2010.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on September 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2010.
The Center appointed Jacques de Werra as the sole panelist in this matter on October 26, 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
The first Complainant (Luxottica Group S.p.A.) is the owner of various RAY BAN trademarks (either word or word and device trademarks) in various countries, including in Germany and in the European Union, among which the German Trademark 700118 registered on February 16, 1957 for glasses in Class 9 and the Community Trademark 1956465 registered on December 3, 2001 for various goods in Classes 3, 14, 16, 18 and 25 (together “the Trademarks”). The second Complainant (Luxottica Fashion Brillen Vertriebs GmbH) is the exclusive licensee of the RAY BAN trademarks in Austria and Germany and is entitled to claim for infringements.
The Complainants operate an official website at “www.ray-ban.com” which is used for the distribution of RAY BAN products throughout the world. The products are distributed offline by a network of official distributors/dealers.
The Disputed Domain Name was registered on April 22, 2010. It has been used to sell Ray Ban products outside of the official network of distribution of the Complainants by apparently targeting German-speaking clients (given that the texts available on the website at the time the Complaint was filed were in German).
5. Parties’ Contentions
The Complainants contend that the Disputed Domain Name is confusingly similar to the Trademarks because it incorporates the entirety of the RAY BAN trademark to which the term “in” has been added, whereby this term is descriptive in German and in English so that it does not affect the confusing similarity between the Trademarks and the Disputed Domain Name.
The Complainants further contend that the Respondent lacks rights or legitimate interests in the Disputed Domain Name because, inter alia, the Respondent is not a licensee or a person with whom the Complainants have a business relationship. The Respondent is not known by the “Ray Ban” name.
The Complainants finally argue that the Respondent registered and is using the Disputed Domain Name in bad faith, inter alia, by distracting internet users from the Complainants’ website to its website available under the Disputed Domain Name.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainants must prove each of the following:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first Complainant is the owner of different trademark registrations for the RAY BAN trademark in various countries (i.e. the Trademarks).
The Panel finds in this respect that the use of the Trademarks in conjunction with the descriptive word “in” (in the German language) does not affect the overall impression created by the Dispute Domain Name (it being noted that the website associated with the Disputed Domain Name contains texts written in German). The inclusion of this word consequently does not defeat the confusing similarity created by the use of the Trademarks in their entirety in the Disputed Domain Name.
Accordingly, the Panel holds that the Disputed Domain Name is confusingly similar to the Trademarks in which both the first Complainant (as their owner) and the second Complainant (as their licensee in Austria and Germany) have rights.
The Panel thus finds that the Complainants have established that the condition of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in a domain name:
(i) before any notice of the dispute, respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) 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.
The Policy places the burden on a complainant to establish the absence of a respondent's rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative fact, the consensus view is that the complainant needs only to put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case. See World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.
In the present case, the Complainants have established a prima facie case that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and the Respondent has failed to assert any such rights or legitimate interests. See Barbara Brennan Inc. v. Texas International Property Associates, WIPO Case No. D2008-0351; Sanford Winery Company v. Matt Geiser, WIPO Case No. D2008-0210.
It is apparent from the evidence that the Disputed Domain Name has been used by the Respondent to sell Ray Ban products outside of the distribution channels of the Complainants, whereby these products may be piracy products (as claimed by the Complainants and not contradicted by the Respondent).
It has also been established that the Complainants have exclusive rights to the Trademarks and have not licensed or otherwise permitted the Respondent to use the Trademarks in any manner.
There is further no indication that the Respondent has registered or used the name Ray Ban as a trademark, or has ever been commonly known by this name.
Moreover, by not filing a Response, the Respondent has failed to invoke any circumstance which could indicate the existence of any rights or legitimate interests it would have in the Disputed Domain Name; or otherwise rebut the Complainants’ prima facie case that no such rights or legitimate interests exist.
The Panel is consequently of the view, also taking into account the use made of the Disputed Domain Name, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name so that the conditions of paragraph 4(a)(ii) of the Policy are met.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent registered and is using the Disputed Domain Name 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 “by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the [C]omplainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [its] website or location” (paragraph 4(b)(iv) of the Policy).
In this case, the Complainants have duly established that the Respondent has been using the Complainants’ Trademarks in the Disputed Domain Name in order to attract Internet users to a website associated with the Disputed Domain Name offering goods under the Trademarks which appear to be piracy products (which has not been rebutted by the Respondent), whereby the relevant website expressly refers to the Trademarks. This is an evidence of bad faith. See Oakley Inc. v. Li Qi, WIPO Case No. D2010-0970 and Farouk Systems, Inc. v. QYM, WIPO Case No. D2009-1572.
By doing so, the Respondent further intentionally attempts to attract, for commercial gain, Internet users to go to the said website, by creating a likelihood of confusion with the Complainants’ Trademarks as to the source, sponsorship, affiliation, or endorsement of the website or products on the website.
Given the circumstances of this case, the Panel also accepts that the Respondent registered the Disputed Domain Name with full knowledge of Complainants’ rights in the Trademarks. Respondent’s awareness of Complainants’ Trademarks may be inferred from the substantial use of said trademarks across the world prior to the registration of the Disputed Domain Name.
As a result, the Panel finds that the Complainants have proved that the condition of paragraph 4(a)(iii) of the Policy is met.
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 <inrayban.com> be transferred to Luxottica Group S.p.A.
Jacques de Werra
Dated: November 9, 2010