WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Luxottica Group S.p.A., Luxottica Fashion Brillen Vertriebs GmbH v. Bingbing Chen
Case No. D2011-0217
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 Bingbing Chen of Guangzhou, Guangdong, the People’s Republic of China.
2. The Domain Names and Registrar
The disputed domain names <raybanberlin.com> <rayban-sonnenbrille.net> and <sonnenbrillenrayban.org> are registered with Melbourne IT 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 Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain names. On February 4, 2011, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2011.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on March 10, 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 Complainant Luxottica Group S.p.A. owns the registered trade mark RAY-BAN. Registration certificates for the German trade mark registrations for the mark RAY-BAN, in various scripts, are attached to the Complaint (Reg. No. 700118 (1957); DD640858 (1975); 2025171 (1992); 39627413 (1996)).
The disputed domain names <rayban-sonnenbrille.net>, <raybanberlin.com>, and <sonnenbrillenrayban.org> were registered on September 23, 2010.
5. Parties’ Contentions
The Complainants in this matter are the owner of the registered RAY-BAN trademarks referred to above (“Luxottica Group S.p.A.”) and the exclusive licensee in Germany and Austria (“Luxottica Fashion Brillen Vertrieb GmbH”). They are referred to as “the Complainant” below.
The Complainant asserts that it owns and operates the website “www.ray-ban.com” which is used for distribution of its products, in particular sunglasses, throughout the world. The Complainant also distributes its products through a network of official distributors/dealers. The Complainant asserts that its trade mark RAY-BAN is a well-known mark throughout the world.
The Complainant contends that the dominant element of the disputed domain names is the mark RAY-BAN. The addition of the generic terms “Sonnenbrille(n)” or “Berlin” is not sufficient to distinguish or differentiate the disputed domain names from the Complainant’s trade marks. Further the Complainant contends that the disputed domain names are confusingly similar due to the incorporation of the identical mark RAY-BAN and the fact that the trade mark is registered for products identical with those offered on the website to which the disputed domain names <raybanberlin.com> and <sonnenbrillenrayban.org> resolved when accessed by the Complainant, as evidenced by the printouts attached to the Complaint.
The Complainant asserts that the term “Sonnenbrille(n)” means sunglasses in German and “Berlin” is the capital of that country, and both are thus descriptive terms. The terms “Ray” and “Ban” predominate as the first part of two of the disputed domain names.
Further the Complainant asserts that the websites to which the disputed domain names <raybanberlin.com> and <sonnenbrillenrayban.org> resolved generate confusion as to the source of the goods and the authorization of the Complainant. The addition of the German term for sunglasses enhances the suggestion that the websites concerned are German speaking websites of the trade mark owner. In any case, the Complainant asserts that any use of the disputed domain names would be associated automatically with the Complainants.
The Complainant also asserts that the websites referred to above have been used for those goods for which the Complainant’s marks are registered, thus performing an indication of source function and breaching trade mark law, i.e. Art. 9(1) a CTMR/para. 14(1) no. 1 MarkenG. The registration, connection and use of disputed domain names also abuse the good reputation of the Complainant’s marks, breaching also Art 9(1) c CTMR/para. 14(1) no. 3 MarkenG. The advertising value of the marks is also harmed by the misdirection of consumers, according to the Complainant. Consumers could presume that the Respondent is entitled to use the trade marks or distribute the Complainant’s products, which the Respondent knows not to be the case.
Further the Complainant asserts that it has given no authorization to the Respondent to use its trade marks, nor does it have any business relationship with the Respondent. There is thus a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden of proof thus shifts to it to prove otherwise. It can be excluded that the Respondent is known by the name “Ray-Ban”, nor does it make a legitimate noncommercial or fair use of the disputed domain names.
The Complainant also asserts that the intention of the Respondent was not to sell the Complainant’s genuine products with its authorization but to mislead consumers by the use of the Complainant’s marks, and to offer products “which are likely to be counterfeit/piracy products”. The Complainant is an international company and its marks are distinctive and well-known and it is therefore, according to the Complainant, inconceivable that the disputed domain names were registered in ignorance of the Complainant. The Respondent attempted to create confusion and take advantage of the Complainant’s goodwill. The Respondent’s practice of selling similar or identical, presumably counterfeit goods clearly establishes its knowledge of the Complainant and its marks, which amounts to bad faith registration.
Further the Complainant contends that the Respondent also uses the disputed domain names in bad faith. The Respondent’s websites referred to above prominently display reproductions of the Complainant’s mark and also offer goods that are likely pirated or counterfeit. The Complainant asserts that the Respondent also uses the same look and feel as its own website. The registration and use of the disputed domain names <raybanberlin.com> and <sonnenbrillenrayban.org> disrupt the Complainant’s business and divert Internet users to a website that “often sells likely counterfeiting” Ray-Ban sunglasses, confusing the public and causing detriment to the Complainant.
Further establishing bad faith, according to the Complainant, are use of a well-known mark; failure to respond to the Complaint; failure to respond to the Complainant’s letters; concealment of identity; failure to provide legally required information on the relevant websites; and the impossibility of conceiving any good faith use of the domain names at issue. The Complainant asserts that it is apparent that the address of the Respondent is false.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain names are not identical to the Complainant’s trade mark RAY-BAN. However, each of the disputed domain names incorporates the Complainant’s mark in its entirety. The additional terms “Sonnenbrille(n)” and “Berlin” are ordinary descriptive or indicative German words. These additions do not sufficiently distinguish or differentiate the disputed domain names from the Complainant’s trade mark. Rather they reinforce the suggestion that there is a connection between the disputed domain names and the Complainant. In the case of <raybanberlin.com>, this is because the term “Berlin” suggests that the disputed domain name relates to goods offered by the Complainant under its mark in or for that locality. In the case of <rayban-sonnenbrille.net> and <sonnenbrillenrayban.org>, this is because the term “Sonnenbrille(n)” is the German word for sunglasses, the goods for which the Complainant’s trade mark is registered and known. Panels have repeatedly held that the addition of generic terms, where the resulting combination has no distinct meaning or sense, does not serve to distinguish a domain name, a fortiori where those terms describe the goods the Complainant supplies under the trade mark at issue.
Therefore the Panel holds that the disputed domain names <raybanberlin.com>, <rayban-sonnenbrille.net>, and <sonnenbrillenrayban.org> are confusingly similar to the Complainant’s trade mark RAY-BAN.
B. Rights or Legitimate Interests
The Complainant has not authorized the Respondent to use its marks in any way or to register a domain name incorporating its trade mark RAY-BAN. The Respondent is not an official distributor of the Complainant’s products. The Respondent is not known under the name “Ray-Ban” or “raybanberlin”, “rayban-sonnenbrille” or “sonnenbrillenrayban”. The Respondent has not filed a Response, and thus in no way answered the Complainant’s prima facie case that it has no rights or legitimate interests in the disputed domain names.
More specifically the Respondent has not demonstrated that “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” (paragraph 4(c)(i) of the Policy). At various times, when the Complainant accessed them, as demonstrated by the printouts attached to the Complaint, the disputed domain names <raybanberlin.com> and <sonnenbrillenrayban.org> resolved to websites offering sunglasses for sale, including but not exclusively sunglasses with the trade mark RAY-BAN.
The Complainant has not authorized the use of its mark on the Respondent’s website, where the relevant print-outs show imitations (“Rayban” without the dash; also “Raybande”) are in a number of instances prominently displayed. The Complainant asserts that the goods offered on the relevant websites are likely to be pirated or counterfeit. The relevant print-outs also establish that competing sunglasses from unconnected providers (for instance Cartier) are offered on the websites at issue, as well as links to “Kategorien” (categories) of sunglasses with other brand names.
It is apparent from all these circumstances that the Respondent does not use the disputed domain names in connection with the offering for sale of clearly legitimate goods without confusing or deceiving consumers as to the existence of any license or authorization from the Complainant for its operation. In relation to the disputed domain name <rayban-sonnenbrille.net>, there is no evidence before the Panel that the domain name resolved to a website at any time. However, the other domain names at times also did not generate a connection to an actual website so it is not excluded that at some time <rayban-sonnenbrille.net> also linked to a similar website. In any case there is no evidence at all in relation to this disputed domain name that could in the absence of authorization by the Complainant serve to establish rights or legitimate interests on the part of the Respondent.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain names <raybanberlin.com>, <rayban-sonnenbrille.net>, and <sonnenbrillenrayban.org>.
C. Registered and Used in Bad Faith
The Panel takes notice of the fact that the Complainant’s RAY-BAN trade mark has been in use for a considerable number of years, in many countries around the world, and has a well-established reputation in relation to sunglasses. It is also apparent from the nature of the websites to which two of the disputed domain names resolved that the Respondent, who registered all of the disputed domain names on the same day, was well aware of the Complainant’s trade mark. That is further established by the incorporation of the term “Sonnenbrille(n)” in two of the disputed domain names, which refers to the goods in relation to which the marks are registered, used and known.
The websites that the disputed domain names <raybanberlin.com> and <sonnenbrillenrayban.org> resolved to further reinforce this conclusion, since sunglasses are there offered at heavily discounted prices, many of which bear the mark RAY-BAN. The Complainant does not prove or even unequivocally assert that the products there offered are counterfeit or pirated. However, the Complainant suggests they are likely to be so, and also points to the fact that the websites at issue display imitations of the Complainant’s trade mark in its characteristic cursive script, and also has the same “look and feel”, or general appearance as the Complainant’s official authorized website.
The use of the German language both in the disputed domain names and in various messages on the relevant web pages, further tends to reinforce the misleading impression that the site is the authorized German site of the Complainant. This is of course not the case.
Further, the Respondent offers for sale goods apparently emanating from competing trade mark owners, which supports the contention that the Respondent is attempting to profit from the unauthorized incorporation of the Complainant’s marks in the disputed domain names to attract the attention of Internet users who might reasonably expect that the disputed domain names <raybanberlin.com> and <sonnenbrillenrayban.org> point to authorized websites where the Complainant sells its own goods. Although the disputed domain name <rayban-sonnenbrille.net> did not resolve to an active website when the Complainant or the Center accessed it, neither did the other two websites at various times. It cannot therefore be excluded that the disputed domain name <rayban-sonnenbrille.net> at some time also resolved to a similar website. In any case the disputed domain names were all registered, clearly in bad faith, at the same time by the Respondent, and this and all the other circumstances indicate use in bad faith in relation to the disputed domain name <rayban-sonnenbrille.net> as well.
Therefore the Panel holds that the disputed domain names <raybanberlin.com>, <rayban-sonnenbrille.net>, and <sonnenbrillenrayban.org> were registered and used in bad faith.
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 <raybanberlin.com>, <rayban-sonnenbrille.net> and <sonnenbrillenrayban.org> be transferred to the Complainant Luxottica Group S.p.A.
WiIliam A. Van Caenegem
Dated: March 21, 2011