WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Luxottica Group S.p.A. and Luxottica Fashion Brillen Vertriebs GmbH v. Liu Wanqiu
Case No. D2011-0234
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 Liu Wanqiu of Guangzhou, Guangdong, the People’s Republic of China.
2. The Domain Names and Registrar
The disputed domain names <sonnenbrillenrayban.com>, <sonnenbrillerayban.com> and <sonnenbrillerayban.net> (“Disputed Domain Names”) are registered with Xin Net Technology Corp. (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2011. On February 4, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 10, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Registrar further advised that the Disputed Domain Names could not be put on Registrar lock as they had expired on December 27, 2010 and may be redeemed upon timely payment of redemption and renewal fees by February 25, 2011. On February 11, 2011, the Center notified the parties and Registrar to address the expiry of the Disputed Domain Names and confirm to the Center that they are active. The Complainant paid the redemption and renewal fees. The Respondent did not comment on the redemption and renewal of the Disputed Domain Names.
On February 22, 2011, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Center also sent an email communication to the Complainant concerning the Registrant information. On February 22, 2011 and February 28, 2011, the Complainant submitted a request that English be the language of the proceeding and an amendment to the Complaint respectively. The Respondent did not comment on the language of the proceeding by the specified due date.
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 March 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2011.
The Center appointed Kar Liang Soh as the sole panelist in this matter on March 25, 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 were all registered on December 27, 2009. The disputed domain name <sonnenbrillerayban.com> resolved to a website which as of October 6, 2010 listed various sunglass products under the RAY BAN Trademarks. The RAY BAN Logo was also displayed prominently on the website albeit with the addition of the word “Sonnenbrillen” at the bottom left. Online shopping cart facilities appeared to be offered on the webpage. The Complaint did not include any printout of websites resolved from <sonnenbrillenrayban.com> and <sonnebrillerayban.net> as of October 6, 2010. It is not clear, whether at the time the Complaint was filed, the two latter disputed domain names were not active or were redirected to the website “www.sonnenbrillerayban.com”. As of February 2, 2011, all the Disputed Domain Names did not resolved to any website.
Other than the WhoIs information on the Disputed Domain Names, very little information on the Respondent is available. The Complainants issued a cease and desist letter to the Respondent on November 15, 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 Names integrate the word “ray ban” and adds the prefix “sonnenbrille(n)” which means “sunglasses”. They do not differentiate the Disputed Domain Names from the RAY BAN Trademarks;
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 Complainant has 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 websites 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 Complainant’s request and the reasons below, the Panel determines that English be adopted as the language of the proceeding:
1) The website resolved from the disputed domain name <sonnenbrillerayban.com> as at October 6, 2010 did 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 Complainants’ request that English be the language of the proceeding; and
5) There is no apparent benefit for the proceeding to be conducted in Chinese.
Each of the Disputed Domain Names incorporates the RAY BAN Trademarks it their entirety. The Complainants clearly own 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 Names and the RAY BAN Trademarks is the prefix “sonnenbrillen” or “sonnenbrille” which mean “sunglasses”. Such a prefix obviously suggests that the Disputed Domain Names are associated with 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 Trademarks are used on the website resolved from the disputed domain name <sonnenbrillerayban.com> as of October 6, 2010. 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. As of February 2, 2011, the Disputed Domain Names did not resolve to any websites.
The Respondent has chosen not to renew the Disputed Domain Names when renewal was due by December 27, 2010. Despite the reminders from the Center on redemption of the expired Disputed Domain Names, the Respondent has exhibited a total lack of concern or reaction.
Therefore, the Complainant has shown a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names. The burden has shifted to the Respondent. Not filing a Response, the Respondent has failed to discharge the burden. In the circumstances, 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 website resolved from the disputed domain name <sonnenbrillerayban.com> uses 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 website, 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 Complainants have 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; Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552).
Although it is not clear from the evidence before the Panel that the Disputed Domain Names <sonnenbrillenrayban.com> and <sonnenbrillerayban.net> did resolve to any website before February 2, 2011, the Panel believes it does not matter in the present case. The Disputed Domain Names are nearly identical to each other. <sonnenbrillerayban.com> and <sonnenbrillenrayban.com> differ only in the absence of the letter “n” in the former just before “rayban”. <sonnenbrillerayban.com> and <sonnenbrillerayban.net> differ only in the top level domain. The similarities are such that consideration of one disputed domain name cannot be divorced from that of the others. Any bad faith that exists in relation to <sonnenbrillerayban.com> in the present case must also taint <sonnenbrillenrayban.com> and <sonnenbrillerayban.net>.
Further, based on the Registrar verification, the Respondent provided the following addresses for the Disputed Domain Names:
Address: guang dong guangzhou
Postal code: 310000
Postal Code: 110000
Address: guang dong guangzhou
Postal Code: 210000
The addresses above are clearly incapable of serving as proper addresses. Not only are crucial address elements like street name, building number and the like missing, some of the information provided are improbable to say the least and in all likelihood fictitious. For example, guangzhou can only refer to the city of Guang Zhou in China. There is no country by the name of “guangzhou”. The symbol “cn” can only refer to China. However, the reference to “Cottbus” suggests a location in Germany. In the circumstances, the Panel conclude that the Respondent’s addresses are 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 use of fictitious and/or incomplete addresses to register the Disputed Domain Names is a further basis to support a finding of bad faith registration and use.
The Respondent had allowed the Disputed Domain Names to expire and did not raise a finger to reinstate (or in the Registrar’s language, “redeem”) and renew them. The Disputed Domain Names were ultimately renewed by the Complainant. A registrant who has given up his/her domain name cannot complain if the domain name becomes available for registration by others and is subsequently registered by another. Although the Disputed Domain Names had yet to become available for registration by others after they expired, there is no indication that the Respondent would have renewed the Disputed Domain Names by the redemption deadline of February 25, 2011. In the absence of any reaction from the Respondent, the Complainant undertook the burden of redemption and renewal. Still the Respondent remained silent. Up to the date of this decision, the Respondent has not made any effort to even suggest that he/she is interested in keeping the Disputed Domain Names. In the light of the special circumstances of this case, it would be abjectly unfair to allow the Disputed Domain Names to remain in the name of the Respondent.
At least as of February 2, 2011, the Respondent appeared to be only passively holding on to the Disputed Domain Names. There is a long line of cases has established a common factual scenario of an individual who registers a domain name incorporating a well-known mark without any apparent or actual use of it and it is not possible to conceive of any plausible, legitimate, actual or contemplated use of the domain name by that individual (e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085; Compagnie Gervais Danone v. Yao Renfa, WIPO Case No. D2008-0582 and UPM-Kymmene Corporation v. yongxi zhang, WIPO Case No. D2009-0882).
Based on the above, the Panel determines 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, <sonnenbrillenrayban.com>, <sonnenbrillerayban.com> and <sonnenbrillerayban.net> be transferred to the first Complainant, Luxottica Group S.p.A.
Kar Liang Soh
Dated: April 14, 2011