WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Luxottica Group S.p.A. and Luxottica Fashion Brillen Vertriebs GmbH v. Monia Kaoe
Case No. D2011-0216
1. The Parties
The Complainants are Luxottica Group S.p.A. of Milan, Italy and Luxottica Fashion Brillen Vertriebs GmbH of Haar, Germany (“the Complainant”), represented by Zirngibl Langwieser, Germany.
The Respondent is Monia Kaoe of the People’s Republic of China.
2. The Domain Names and Registrar
The disputed domain names <raybansonnenbrillenonlineshop.com>, <raybansonnenbrillenoutlet.com> and <raybansonnenbrillenoutlet.net> (the “Disputed Domain Names”) are registered with HiChina Zhicheng Technology Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2011. On February 3, 2011, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain names. On February 9, 2011, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 9, 2011, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On February 11, 2011, the Complainant submitted a request that English the language of the proceeding. The Respondent did not comment on the language of the proceeding 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 the Respondent of the Complaint, and the proceedings commenced on February 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2011.
The Center appointed Kar Liang Soh as the sole panelist in this matter on March 15, 2011. 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 is the owner of trademarks comprising RAY BAN (the “RAY BAN Trademarks”). These include:
Jurisdiction Trademark No. Registration date
Germany 700118 February 16, 1957
Germany 640858 May 6, 1975
Germany 2025171 November 24, 1992
CTM 1956465 December 3, 2001
The second Complainant is the exclusive licensee of the RAY BAN Trademarks in Austria and Germany.
The Complainants distribute products under the RAY BAN Trademarks, in particular sunglasses, throughout the world via an official website at “www.ray-ban.com”. The Complainant’s website displays the following logo incorporating the word “Ray Ban” very prominently (the “RAY BAN Logo”):
The offline distribution is carried out through a network of official distributors and dealers.
The Disputed Domain Names <raybansonnenbrillenonlineshop.com>, <raybansonnenbrillenoutlet.com> and <raybansonnenbrillenoutlet.net> were registered on August 23, 2010, September 4, 2010 and September 8, 2010 respectively. The Disputed Domain Names respectively direct visitors to webpages which at the time of the Complaint, listed various sunglass products under the RAY BAN Trademarks. The words “RAY BAN” also appear prominently on the top right corner of these webpages. In addition, the appearance of the words “RAY BAN” at the top right corner of the webpage resolved from <raybansonnenbrillenoutlet.net> is essentially identical to the RAY BAN Logo. Online shopping facilities appeared to be offered on these webpages.
Other than the WhoIs information on the Disputed Domain Names, very little information on the Respondent is available. The Complainant issued a cease and desist letter to the Respondent on October 12, 2010 in relation to the Disputed Domain Names but did not receive a reply.
5. Parties’ Contentions
The Complainant contends that:
1) The Disputed Domain Names are identical or confusingly similar to the Ray Ban Trademarks. The disputed domain name <raybansonnenbrillenonlineshop.com> integrates the word “ray ban” and adds the suffix “sonnenbrillenonlineshop”. The disputed domain names <raybansonnenbrillenoutlet.com> and <raybansonnenbrillenoutlet.net> similarly integrate the word “ray ban” and adds the suffix “sonnenbrillenoutlet”. The terms “sonnebrillenonlneshop” and “sonnenbrillenoutlet” are a mix of German and English words which mean “sunglasses outlet” or “glasses online shop”. They do not differentiate the Disputed Domain Names from the RAY BAN Trademark;
2) The Respondent has no rights or legitimate interest in respect of the Disputed Domain Names. The Respondent is not authorized to use the RAY BAN Trademarks and is not a licensee or a person with whom the Complainants have a business relationship. The Respondent is not commonly known by the name Ray Ban and is not making legitimate noncommercial or fair use of the Disputed Domain Names;
3) The Disputed Domain Names were registered and are being used in bad faith. The RAY BAN Trademarks are well-known and it is inconceivable that the Respondent registered the Disputed Domain Names without knowledge of the Complainant’s rights. The Respondent is using the Disputed Domain Names to divert Internet users from the Complainant’s website. The products on the website are likely to be counterfeits. The Respondent’s address does not exist and the Respondent is concealing his/her identity.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of Proceeding
The registration agreement of the Disputed Domain Names is in Chinese. Therefore, the default language of the proceeding is Chinese. However, having regard to the Complainants’ request and the reasons below, the Panel determines that English be adopted as the language of the proceeding:
1) The websites resolved from the Disputed Domain Names do not use Chinese at all;
2) Adopting Chinese as the language of the proceeding will result in undue expenses and delay;
3) The Complaint was submitted in English;
4) The Respondent has not replied to the Complaint and did not oppose the Complainant’s request that English be the language of the proceedings; and
5) There is no apparent benefit for the proceedings to be conducted in Chinese.
To succeed in the proceeding, the Complainants must satisfy all three limbs of paragraph 4(a) of the Policy:
1) The Disputed Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
3) The Disputed Domain Names were registered and are being used in bad faith.
A. Identical or Confusingly Similar
Each of the Disputed Domain Names incorporates the RAY BAN Trademarks it its entirety. The Complainant clearly owns rights in the RAY BAN Trademarks by virtue of the first Complainant being the registered proprietor and the second Complainant being the exclusive licensee.
The only difference between the disputed domain name <raybansonnebrillenonlineshop.com> and the RAY BAN Trademarks is the suffix “sonnebrillenonlineshop” which is a combination of German and English words which mean “sunglasses online shop”. The only difference between the other disputed domain names and the RAY BAN Trademarks is the suffix “sonnebrillenoutlet” which is a combination of German and English words which mean “sunglasses outlet”. These suffixes obviously suggest that the Disputed Domain Names are associated the sale of sunglasses.
Generic prefixes and suffixes added to a trademark have consistently been held by past UDRP panels generally to be unable to distinguish a disputed domain name from the trademark. The Panel is of the view that the present case is not a special case that departs from this general principle and accordingly holds that the Disputed Domain Names are confusingly similar to the RAY BAN Trademarks. Therefore, the first limb of paragraph 4(a) is established.
B. Rights or Legitimate Interests
The Complainant has already denied any authorization or relationship with the Respondent that justifies the Respondent having any rights or legitimate interests in the Disputed Domain Names. The available facts also do not indicate that the Respondent is known by the name “Ray Ban”.
The RAY BAN Trademark is used on the websites resolved from the Disputed Domain Names. The websites purport to offer goods under the RAY BAN Trademarks for sale. In the absence of any explanation, this can hardly be described as legitimate noncommercial use.
Therefore, the Complainant has shown a prima facie case that the Respondent does not have any rights or legitimate interest in the Disputed Domain Names. The burden has shifted to the Respondent and the Respondent has failed to discharge it because no Response was filed. In the circumstances, and also in view of the Panel’s findings below, the second limb of paragraph 4(a) of the Policy is also established.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy provides an example of bad faith registration and use of a domain name:
“[…] by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The websites resolved from all the Disputed Domain Names use the RAY BAN Trademarks in relation to the products offered for sale on the website without the Complainant’s authorization. This is an obvious attempt at associating the content of the websites with the RAY BAN Trademarks. By using the RAY BAN Logo on the websites, the Respondent is confirming an awareness of the RAY BAN Trademark and the Complainant. The Panel believes that a reasonable visitor to each of the websites would likely be misled in relation to their source, sponsorship, affiliation, or endorsement and the products purportedly made available for online sale thereon. The websites are obviously targeted at attaining commercial gain from Internet users visiting it. Accordingly, the factual circumstances fall within the ambit of the scenario envisaged by paragraph 4(b)(iv) of the Policy.
The Complainant has alleged the products on these websites to be counterfeits. The Respondent has chosen to remain silent despite these serious allegations. Such a lack of reaction is not reasonably expected from an honest trader accused of counterfeiting. The Panel is inclined to draw an adverse inference that the Respondent has no defence to the allegation, thereby establishing the “paradigmatic bad faith” described in see Lacoste Alligator S.A. v. Priscilla, Ranesha, Angel, Jane, Victor, Olivier, Carl, Darren, Angela, Jonathan, Michell, Oiu, Matthew, Pamela, Selima, Angela, John, Sally, Susanna, WIPO Case No. D2010-0988 and Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552.
Further, the Respondent has provided an address of “zxAnheimer Str 101, zxAnheimer Str 101, berlin, WG 272302, CN” in relation to the Disputed Domain Names. The Panel finds the address to be improbable and likely to be fictitious. The symbol “CN” can only refer to China. However, the reference to “berlin” suggests a location in Germany. Further, “zxAnheimer Str 101” is improbable as a Chinese street name and “WG 272302” does not appear to be a valid postal code in China. In the circumstances, the Panel is of the view that the Respondent’s address to be most likely fictional.
A domain name applicant has a duty to act honestly. The deliberate use of fictitious and/or ineffective contact particulars to register a domain name without any valid reason is further evidence of bad faith. The subsequent use of the domain name is tainted by the bad faith (see ECCO Sko A/S v. Protected Domain Services Customer ID NCR-2448048 / jizhiteam, WIPO Case No. D2010-1113; Farouk Systems Inc. v. David, WIPO Case No. D2009-1245). In the present case, the Respondent’s probable use of fictitious information to register the Disputed Domain Names is a further basis to support a finding of bad faith registration and use.
Based on the above, the Panel holds that bad faith use and registration under the third limb of paragraph 4(a) of the Policy is established as well.
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 Names <raybansonnenbrillenonlineshop.com>, <raybansonnenbrillenoutlet.com> and <raybansonnenbrillenoutlet.net> be transferred to the first Complainant, Luxottica Group S.p.A.
Kar Liang Soh
Dated: April 8, 2011