World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Luxottica Group S.p.A., Luxottica Fashion Brillen Vertriebs GmbH v. Rett Walters

Case No. D2011-0297

1. The Parties

The Complainants are Luxottica Group S.p.A. of Milan, Italy and Luxottica Fashion Brillen Vertriebs GmbH of Haar, Germany, both represented by Zirngibl Langwieser of Germany.

The Respondent is Rett Walters of hangkong, Hong Kong SAR of China.

2. The Domain Name and Registrar

The disputed domain name <raybanwien.com> (“the Disputed Domain Name”) is registered with HiChina Zhicheng Technology Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2011. On February 14, 2011, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On February 15, 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.

The Center informed the parties on February 18, 2011 that the language of the proceeding is Chinese to which the Complainants requested that the English (or alternatively German) be the language of the proceedings. The Respondent did not submit any comments in this regard. 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 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2011.

The Center appointed Kar Liang Soh as the sole panelist in this matter on March 21, 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 trade marks comprising “RAY BAN” (the “RAY BAN Trademarks”). These include:

Jurisdiction TM 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”):

logo

The offline distribution is carried out through a network of official distributors and dealers.

The Disputed Domain Name was registered on August 8, 2010 and directs visitors to a webpage at “www.sonnenbrillenwien.com”. At the time the Complaint was filed, the webpage listed various sunglass products under the RAY BAN trademarks. Photographs of each of the sunglass products also incorporated the RAY BAN Logo. Online shopping cart facilities appeared to be offered on the webpage.

Other than the WhoIs information on the Disputed Domain Name, very little information on the Respondent is available. The Complainants issued a cease and desist letter to the Respondent on October 22, 2010 in relation to the Disputed Domain Name but did not receive a reply.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

1) The Disputed Domain Name is identical or confusingly similar to the Ray Ban Trademarks. It integrates the word “ray ban” and adds the term “wien”. “Wien” is the name of the capital of Austria and does not differentiate the Disputed Domain Name from the RAY BAN Trademark;

2) The Respondent has no rights or legitimate interest in respect of the Disputed Domain Name. 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 Name;

3) The Disputed Domain Name was registered and is being used in bad faith. The RAY BAN Trademarks are well-known and it is inconceivable that the Respondent registered the Disputed Domain Name without knowledge of the Complainants’ rights. The Respondent is using the Disputed Domain Name to divert Internet users from the Complainants’ website. The products on the website are likely to be counterfeits. The Respondent is concealing his/her identity and cease and desist letters from the Complainants remain unanswered.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1 Language of Proceeding

The registration agreement of the Disputed Domain Name 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 website resolved from the Disputed Domain Name does not use Chinese at all;

2) Adopting Chinese as the language of 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 proceedings; and

5) There is no apparent benefit for the proceedings to be conducted in Chinese.

6.2 Discussion

To succeed in the proceeding, the Complainants must satisfy all 3 limbs of paragraph 4(a) of the Policy:

1) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainants have rights;

2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

3) The Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Disputed Domain Name incorporates the RAY BAN Trademarks it its 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 Name and the RAY BAN Trademarks is the suffix “wien”. “Wien” is German for “Vienna” and is the name of the capital of Austria. The suffix undoubtedly suggests that the Disputed Domain Name is associated with the city of Wien or Vienna and the Panel is of the view that no other reasonable explanation exists.

Generic prefixes and suffixes added to a trade mark have consistently been held by past panels generally to be unable to distinguish a disputed domain name from the trade mark. 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 Name is confusingly similar to the RAY BAN Trademarks. Therefore, the first limb of paragraph 4(a) is established.

B. Rights or Legitimate Interest

The Complainants have already denied any authorization or relationship with the Respondent that justifies the Respondent having any rights or legitimate interests in the Disputed Domain Name. The available facts also do not indicate that the Respondent is known by the name “Ray Ban”.

The RAY BAN Trademarks is used on the website resolved from the Disputed Domain Name. The website purports to offer goods under the RAY BAN Trademarks and other trade marks which do not appear to be associated with the Complainants for sale. In the absence of any explanation, this can hardly be described as legitimate non-commercial use.

Therefore, the Complainants have shown a prima facie case that the Respondent does not have any rights or legitimate interest in the Disputed Domain Name. The burden has shifted to the Respondent and the Respondent has failed to discharge it because no Response was filed. 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 uses the RAY BAN Trademark in relation to the products offered for sale on the website without the Complainants’authorization. This is an obvious attempt at associating the content of the website 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 Complainants. The Panel believes that a reasonable visitor to the website would likely be misled in relation to the source, sponsorship, affiliation, or endorsement of the website and the products purportedly made available for online sale on the website. The website is 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 the website resolved from the Disputed Domain Name 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).

Further, the Respondent has provided an address of “Topeka, KS 66607, hangkong, HK 10012, CN”. The Panel finds the address to be improbable and likely to be fictitious. The symbol “CN” can only refer to China. The reference to “hangkong” must probably have been a typographical misspelling for “Hong Kong”. However, postal codes are not used in Hong Kong and the portion “HK 10012” would be meaningless. Further, “Topeka, KS 66607” does not appear to be a street or building name. Topeka is a city in the state of Kansas (code “KS”) in the United States of America. However, that cannot be so since the address is associated with China, not the United States of America. In the circumstances, the Panel is of the view that the Respondent’s address to be most likely fictional.

An 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 Name 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.

7. Decision

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 <raybanwien.com> be transferred to the first Complainant.

Kar Liang Soh
Sole Panelist
Dated: April 4, 2011

 

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