World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Luxottica Group S.p.A., Luxottica Fashion Brillen Vertriebs GmbH v. jianqiang zhong

Case No. D2011-0332

1. The Parties

The Complainant is Luxottica Group S.p.A. of Mailand, Italy, Luxottica Fashion Brillen Vertriebs GmbH, of Haar, Germany represented by Zirngibl Langwieser of Germany.

The Respondent is jianqiang zhong of fujian, the People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <sonnenbrillenrayban.net> is registered with Melbourne IT Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2011. On February 18, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On February 21, 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 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2011.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on March 18, 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 has submitted evidence that it is the owner of the following trademarks:

RAY-BAN, German registration No. 700118 and registration date February 16, 1957.

RAY-BAN, German registration No. DD640858 and registration date May 6, 1975.

RAY-BAN, German registration No. 2025171 and registration date November 24, 1992.

RAY-BAN, German registration No. 39627413 and registration date August 13, 1995.

RAY-BAN, German registration No. 39802272 and registration date July 22, 1998.

RAY-BAN, Community Trademark No. 001956465 and registration date December 3, 2001.

The disputed domain name <sonnenbrillenrayban.net> was registered by the Respondent on August 19, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant is the exclusive licensee of the RAY-BAN trademarks in Austria and Germany. The Complainant’s official website is “www.ray-ban.com”, which is used for the distribution of “Ray-Ban” products, especially sunglasses, throughout the world. Offline, the Complainant’s products are distributed using a network of official dealers and distributors.

The disputed domain name <sonnenbrillenrayban.net> integrates the trademark RAY-BAN as a dominant element. The addition of the generic word “sonnenbrillen”, which is German for “sunglasses”, is not sufficient to distinguish or differentiate the disputed domain name from the Complainant’s trademark. The term “sonnenbrillen”, is a non significant element which is purely descriptive for the services offered in connection with the disputed domain name. The disputed domain name is dominated by the “ray ban” element.

The Respondent’s website creates a likelihood of confusion with the Complainant’s trademark as to the source of the products and to the authorization by the Complainant. The addition of “sonnenbrillen” may increase the level of confusion by serving to suggest that the Respondent’s website is the official German speaking website of the trademark owner for the Austrian market.

Furthermore, the disputed domain name has been used for those products for which the trademarks are registered. The Respondent offered and distributed glasses and sunglasses via the disputed domain name.

The disputed domain name makes it easier for the Respondent to attract his business to consumers because the reputation of the Complainant’s RAY-BAN trademarks. Consumers may assume that the Respondent is entitled to use the trademark and/or to distribute RAY-BAN products.

The Respondent is not authorized to use the Complainant’s trademark. The Respondent is not a licensee or a person with whom the Complainant has a business relationship.

It can be excluded that the Respondent is commonly known by the disputed domain name or by the “Ray Ban” part of the disputed domain name. It can also be excluded that the Respondent makes a legitimate noncommercial or fair use of the disputed domain name.

The Respondent has registered and is using the disputed domain name in bad faith. The Respondent is misleading consumers by using the RAY-BAN trademarks in order to offer products that are likely to be piracy/counterfeit products. The RAY-BAN mark itself has no dictionary meaning and is highly distinctive. It is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s rights. The Respondent tried to create a likelihood of confusion with the Complainant’s trademarks and to take advantage of the reputation and goodwill of the Complainant’s widely known trademarks to pertain commercial gain.

The Respondent’s use of the RAY-BAN trademarks to promote similar or identical (presumably) counterfeit goods indicates that the Respondent registered the disputed domain name with knowledge of the Complainant’s rights.

Furthermore, the Respondent’s website has the same “look and feel” as the official website of the Complainant. The Respondent’s use of the trademark in order to offer goods to Internet users disrupts the Complainant’s business.

The Respondent has not replied to any of the Complainant’s e-mails and the letters sent by post were not successful. The registered address does not exist and the Respondent conceals his identity.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the registered trademark RAY-BAN. The disputed domain name <sonnenbrillenrayban.net> incorporates the Complainant’s trademark in its entirety except for the hyphen between the words “ray” and “ban”. Omitting the hyphen between the words “ray” and “ban” in the disputed domain name is not sufficient to distinguish the disputed domain name <sonnenbrillenrayban.net> from the Complainant’s trademark RAY-BAN.

Furthermore, the disputed domain name contains an addition of the generic German word “sonnenbrillen” which means sunglasses. The ability for such a generic word to distinguish the disputed domain name from the trademark of the Complainant is limited. See for example Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000 0102, regarding the domain name <nokiagirls.com>, in which the addition of the noun “girls” was not sufficient to distinguish the domain name from the trademark NOKIA. Also see ACCOR v. VVNW Inc., WIPO Case No. D2005-0026 in which the panel held that the addition of the term “hotel” was not sufficient to avoid confusion between the domain name and the trademark. The Panel emphasized that the confusion was actually heightened by adding the word “hotel” because such a term is descriptive of the goods or services marketed by the complainant in relation to the trademark.

Having the above in mind, it is the opinion of the Panel that the disputed domain name is confusingly similar to the Complainant’s trademark and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that it has made 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 prior to the dispute; or

(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or

(c) that it intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Complainant’s trademark registrations for RAY-BAN predate the registration of the disputed domain name <sonnenbrillenrayban.net>. The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademark RAY-BAN in connection with the disputed domain name <sonnenbrillenrayban.net> which is confusingly similar to the Complainant’s registered trademark.

From the submitted evidence in this case, it is clear that the Respondent’s commercial website, to which the disputed domain name resolves, contains numerous references to the Complainant’s products and trademarks. The disputed domain name is being used to sell products which the Complainant believes may be counterfeit goods. The Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

Although given the opportunity, the Respondent has not submitted any evidence in this case indicating that the Respondent is the owner of any trademark rights similar to any of the disputed domain name or that the Respondent is or has been commonly known by the disputed domain name.

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

It has been argued by the Complainant that the Respondent intentionally registered the disputed domain name <sonnenbrillenrayban.net> in order to take advantage of the reputation and goodwill of the Complainant’s trademark RAY-BAN and that the Respondent is using the Complainant’s trademark for commercial gain.

The Complainant has submitted evidence demonstrating that the Respondent is offering various products for sale via the website to which the disputed domain name resolves and that the Respondent is using the Complainant’s registered trademark RAY-BAN when doing so.

Considering that the disputed domain name is used for the same products for which the trademarks are registered and in the absence of contrary evidence, the Panel finds that the Respondent knew or should have known of the Complainant’s trademarks at the time the Respondent registered the disputed domain name.

Thus, the evidence in the case before the Panel indicates that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the websites or of a product or service on the website.

There is no evidence in the case that refutes the Complainant’s submissions.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the domain name <sonnenbrillenrayban.net> has been registered and used in bad faith.

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 <sonnenbrillenrayban.net> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Dated: April 1, 2011

 

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