WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Luxottica Group S.p.A., and Luxottica Fashion Brillen Vertriebs GmbH v. Sarenza SA
Case No. D2011-0336
1. The Parties
The Complainants are Luxottica Group S.p.A. of Mailand, Italy (“Complainant A”), and Luxottica Fashion Brillen Vertriebs GmbH of Haar, Germany (“Complainant B”), represented by Zirngibl Langwieser, Germany (collectively, the “Complainant”).
The Respondent is Sarenza SA of Paris, France.
2. The Domain Names and Registrar
The disputed domain names <raybande.com>, <rayban-sonnenbrille.com> and <raybansonnenbrillench.com> are registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the “Registrar”).
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 the Registrar a request for registrar verification in connection with the disputed domain names. On February 22, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain names and providing the Respondent’s contact details. On February 24, 2011, the Center transmitted by email to the parties in both Chinese and English regarding the language of the proceeding. On February 25, 2011, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center has verified that the Complaint satisfies 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 proceeding commenced on March 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 24, 2011. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on March 25, 2011.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on April 7, 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
Complainant A is a company incorporated in Italy and the owner of several trade mark registrations in Germany and a registration in Europe for the trade mark RAY-BAN (the “Trade Mark”). Complainant B is the exclusive licensee of the Trade Mark in Germany and Austria.
According to the WhoIs search results for the disputed domain names, the Respondent appears to be a company incorporated in France.
The disputed domain names were registered on May 10, 2010.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint.
The Complainant’s official website is “www.ray-ban.com”. This website is used for the distribution of RAY-BAN products, especially RAY-BAN sunglasses, throughout the world. Offline the products are distributed using a network of official distributors/dealers. The Trade Mark is well-known and highly distinctive.
The disputed domain names integrate the Trade Mark as a dominant element. The addition of the German term “sonnenbrille(n)” which means “sunglass(es)” and/or the addition of the descriptive letters “de” or “ch”, being abbreviations for Germany and Switzerland respectively, does not serve to distinguish or differentiate the disputed domain names from the Trade Mark. The addition of “sonnenbrille” and “ch” or “de” in fact increases the level of confusion by suggesting that the websites to which the disputed domain names are resolved (the “Websites”) are the official German language websites of the Complainant.
The Respondent does not have any rights or legitimate interests in the disputed domain names. The Respondent has not been authorised by the Complainant to use the Trade Mark. The Respondent is not a licensee or a person with whom the Complainant has a business relationship and the Complainant has not given any permission to the Respondent to use the Trade Mark in the disputed domain names. The Respondent is not commonly known by the disputed domain names and is not making a legitimate noncommercial or fair use of the disputed domain names.
The Respondent has registered and is using the disputed domain names in bad faith. The Respondent has created a likelihood of confusion with the Trade Mark and has taken advantage of the reputation and goodwill of the Trade Mark for commercial gain. The Websites display the Trade Mark prominently, use the same look and feel as the Complainant’s official website and offer for sale sunglasses which are likely to be counterfeits.
The Complainant sent a warning letter to the Respondent at the address listed in the WhoIs searches for the disputed domain names. The addressee, Sarenza SA, answered the letter and informed the Complainant that its name and address had been used to register the disputed domain names without its consent. The Respondent has used the name and address of Sarenza SA without authorisation in order to register the disputed domain names and in order to conceal its identity. This further indicates bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
The language of the registration agreements for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be conducted in English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English or German be the language of the proceeding for the following reasons:
(1) The Websites are in German language;
(2) Since the registrar of the disputed domain names is domiciled in the People’s Republic of China, the Complainant filed the Complaint in English (rather than German);
(3) Taking all circumstances into account there is no prejudice or unfairness to the Respondent for the proceeding to be conducted in English or German and for the decision to be rendered in English or German;
(4) English as a world language is the appropriate language for both parties. To rule that the language of the proceeding be Chinese would cause undue delay in the proceeding and result in the Complainant incurring unnecessary costs;
(5) Conducting the proceeding in English or in German is the only fair and adequate solution for both parties. English is a world language and would neither advantage the Complainant nor the Respondent;
(6) One important consideration in determining the language of proceedings is the fairness to both parties in respect of their ability to prepare the necessary documents and protect their own interests.
The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English or German as the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
In the circumstances, absent any submissions from the Respondent, and in particular in order to avoid any delay or any additional costs on the part of the Complainant, the Panel determines that English is an appropriate neutral language for the proceeding.
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding.
B. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate by many decades the date of registration of the disputed domain names.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
In the present case, the Panel concludes that the addition of the non-distinctive words “sonnenbrille / sonnenbrillen” and suffixs “de” and “ch”, meaning “sunglasses”, “Germany” and “Switzerland” respectively, does not serve to distinguish the disputed domain names from the Trade Mark, particularly since the Websites are in the German language.
Similarly, the absence of a hyphen in between the words “RAY” and “BAN” and the addition of a hyphen to the second of the disputed domain names does not serve to distinguish the first disputed domain name from the Trade Mark.
The Panel finds that the disputed domain names are confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
“(i) 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; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain names by decades. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant contends it is likely the Websites are used by the Respondent to market goods which are counterfeit RAY-BAN goods. There can be no legitimate interest in the sale of counterfeits (Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750). Even if the goods offered for sale on the Websites are not counterfeits, the Panel notes the Websites feature the Trade Mark as well as images of the Complainants’ products and also reproduce the look and feel of the Complainant’s official website, all without the authorisation or approval of the Complainant.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names are used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”
The Complainant believes that the disputed domain names have been used to offer for sale counterfeit products under the Trade Mark via the Websites. Using domain names to facilitate the sale of counterfeit goods is strong evidence of bad faith (Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019).
Even if the goods on the Websites are not counterfeit, the Panel finds the Respondent’s conduct in registering the disputed domain names and setting up the Websites using the Trade Mark, images of the Complainant’s goods and the look and feel of the Complainant’s official website, all without the authorisation, approval of licence of the Complainant, amounts to bad faith registration and use under paragraph 4(b)(iv) of the Policy, irrespective of whether the goods offered for sale on the Websites are indeed counterfeits.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
There are further grounds for determining bad faith due to the apparent conduct of the Respondent in registering the disputed domain names in the name of an unrelated French company and in failing to provide full, proper and accurate contact details. The Panel notes that some of the entries in the WhoIs searches for the disputed domain names suggest the Respondent is based in China.
The <raybande.com> and <raybansonnenbrillench.com> domain names appears to be no longer in use by the Respondent. It has been established in many UDRP cases that passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Action S.A. v. Robert Gozdowski, WIPO Case No. D2008-0028). The Panel finds that, in the circumstances of this case, the fact the Websites linked to these domain names appear to have been shut down by the Respondent following the filing of the Complaint amounts to additional grounds for finding bad faith on the part of the Respondent.
Given the circumstances of this case, the Panel also considers the failure of the Respondent to file a Response to the Complaint further evidence of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <raybande.com>, <rayban-sonnenbrille.com> and <raybansonnenbrillench.com> be transferred to Complainant A, Luxottica Group S.p.A.
Dated: April 8, 2011