World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aktieselskabet af 21. November 2001 A/S v. su kezeng

Case No. D2011-1220

1. The Parties

Complainant is Aktieselskabet af 21. November 2001 A/S of Brande, Denmark, represented by Bech-Bruun Law Firm, Denmark.

Respondent is su kezeng of Suzhou, Jiangsu, China.

2. The Domain Name and Registrar

The disputed domain name <veromoda-only.com> is registered with HiChina Zhicheng Technology Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2011. On July 18, 2011, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On July 19, 2011, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On July 21, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On July 21, 2011, the Complainant submitted a request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.

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 Respondent of the Complaint, and the proceedings commenced on July 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 17, 2011.

The Center appointed Yijun Tian as the sole panelist in this matter on August 24, 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, Aktieselskabet af 21. November 2001 A/S, is part of the Bestseller Group who is a global manufacturer and retailer of clothing and accessories under such trademarks as ONLY, VERO MODA, JACK & JONES, SELECTED, etc. The Bestseller Group is a family-owned group of companies founded in Ringkøbing, Denmark, in 1975. Today, the Bestseller Group directly employs more than 9,600 people, and is represented in more than 2,500 chain-stores and more than 12,000 external multibrand stores in 46 countries around the world. (See Annex 4 to the Complaint).

The Bestseller Group trades inter alia under the well-known trademarks VERO MODA and ONLY. Today the trademarks are registered in numerous jurisdictions worldwide, including Denmark (Danish trademark registration on VERO MODA since 1989 and ONLY since 2000, see Annex 5 to the Complaint), the European Union (CTM registrations on VERO MODA since 2003 and on ONLY since 2000, see Annex 6 to the Complaint), USA (trademark registration on VERO MODA since 2010 and ONLY since 1996, see Annex 7 to the Complaint), and China (trademark registration on VERO MODA since 1997 and ONLY since 2000, see Annex 8 to the Complaint).

Furthermore, the Complainant is the owner of and maintains two websites under the domain names <veromoda.com> and <only.com>, which also feature online web shops, cf. (Annex 9 to the Complaint).

The disputed domain name <veromoda-only.com> was registered by Respondent on June 9, 2009.

5. Parties’ Contentions

A. Complainant

(a) Confusingly similar

The disputed domain name <veromoda-only.com> must clearly be considered to be confusingly similar with Complainant’s well-known trademarks VERO MODA and ONLY as Complainant's trademarks are fully incorporated in the disputed domain name.

The disputed domain name <veromoda-only.com> does not consist of any additional letters or numbers to distinguish it from Complainant's well-known trademarks.

The domain name is identical to Complainant's trademark VERO MODA and ONLY in that the disputed domain name is a combination of the two trademarks.

Therefore a likelihood of confusion between the disputed domain name and Complainant's trademarks clearly exists, as the disputed domain name is a contraction of two of the Complainant's well-known trademarks VERO MODA and ONLY.

(b) Rights or legitimate interests

Complainant submits that Respondent has no rights or legitimate interests in respect of the disputed domain name.

On the website under the disputed domain name <veromoda-only.com> a large quantity of clothing articles are being marketed and sold using Complainant's ONLY and VERO MODA trademarks without the permission from Complainant.

Irrespective of whether the goods are genuine ONLY and VERO MODA goods or counterfeit products, it is submitted that this does not have any impact of Respondent's lack of legitimate interest.

The relevant public could be lead to believe that the website is owned by or related to Complainant.

Respondent’s use of the disputed domain name <veromoda-only.com> will allegedly mislead existing and potential new customers to believe that Respondent is acting as an authorized dealer of VERO MODA and ONLY products.

The disputed domain name is not registered in fair use. The disputed domain name <veromoda-only.com> is registered for the purpose of selling articles of clothing using Complainant's ONLY and VERO MODA trademarks without authorization, and by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website under the disputed domain name.

The disputed domain name is not used in connection with a bona fide offering of goods.

(c) Bad faith

Complainant submits that the disputed domain name which incorporates Complainant’s registered trademarks VERO MODA (word mark), VERO MODA (figurative mark) and ONLY (word mark) has been registered and is being used in bad faith.

Complainant's trademarks mentioned above are well-known worldwide.

On the website under the disputed domain name <veromoda-only.com> articles of clothing are being marketed and sold using Complainant's trademarks, and logo corresponding to the logo used on Complainant's websites “www.only.com” and “www.veromoda.com” are being used without permission.

It is highly unlikely that Respondent is unaware of Complainant’s trademarks VERO MODA (word), VERO MODA (figurative mark) and ONLY (word mark).

The registration of the disputed domain name <veromoda-only.com> is to profit on an illegal exploitation of the goodwill and reputation related to Complainant’s well-known trademarks.

Respondent appears to have acquired the disputed domain name on June 9, 2009.

Complainant’s trademarks have been established several years prior to the registration of the disputed domain name.

Respondent has provided no evidence of any actual or contemplated good faith use of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. However, Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) Complainant’s trademarks VERO MODA and ONLY are fully incorporated in the disputed domain name, and Respondent hereby uses the English word “only” in the disputed domain name. Therefore, many English speaking consumers might be convinced that they are able to purchase or receive information on Complainant’s products from Complainant on Respondent’s website;

(b) Complainant is active in China, and has a number of registrations of the trademarks VERO MODA and ONLY in China.

(c) Respondent’s use of the English word “only” in the disputed domain name shows that Respondent is familiar with the English language.

(d) The website under the disputed domain name <veromoda-only.com> uses e.g. the following English headings: “Category”, “Brand” and “More” to guide the Internet user on the website. Thus, the content of the website at the disputed domain name is directed against Internet users who are familiar with the English language.

(e) Substantial additional expense and delay would likely be incurred if Complainant has to translate the Complaint submitted into Chinese.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

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. (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 language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:

“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a Danish company, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the website at the disputed domain name include Latin characters “Vero Moda” and English word “only” (See also Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600 ); Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <veromoda-only.com> is registered in Latin characters and particularly in English language, rather than Chinese script; (b) the website at the disputed domain name appears to be a Chinese-based website, but according to the information provided by Complainant, “Respondent uses e.g. the following English headings: ‘Category’, ‘Brand’ and ‘More’ to guide the visitor on the website”; (c) the Center has notified Respondent of the proceedings in both Chinese and English, and the Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding (“having been given a fair chance to object has not done so); (d) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. 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, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be transferred:

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

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

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

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the ONLY and VERO MODA trade marks (the “Trade Marks”) acquired through registration. The Trade Marks have been registered worldwide including in China.

The disputed domain name <veromoda-only.com> comprises the Trade Marks in their entirety. The disputed domain name <veromoda-only.com> only differs from the trade mark VERO MODA by the addition of the words “-only”. (Or alternatively, it could be viewed as a combination of the Trade Marks) The Panel finds that this does not eliminate the similarity between the Complainant’s registered and well-known trademarks and the disputed domain name.

Previous WIPO UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark 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).

Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; and PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK-0500065).

Moreover, in a recent case on the combination of trade marks, the panel found that “the combination of the two [trade marks] does not stop the disputed domain name being identical to the registered marks and the first part of the policy is therefore satisfied..” (Philip Morris USA Inc v. Lu Xi, WIPO Case No. D2011-1059).

Thus, the Panel finds that neither the word “-only” nor the combination of the two marks ONLY and VERO MODA with the hyphen “-” is sufficient to negate the confusing similarity between the disputed domain name and the Trade Marks in which Complainant has rights.

The Panel therefore holds that Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has commonly been known by the disputed domain name; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; see also, WIPO Overview 2.0 paragraph 2.1 and cases cited therein).

Complainant has rights in the ONLY and VERO MODA Trade Marks worldwide, including Denmark (Danish trademark registration on VERO MODA since 1989 and ONLY since 2000, see Annex 5 to the Complaint), the European Union (CTM registrations on VERO MODA since 2003 and on ONLY since 2000, see Annex 6 to the Complaint), USA (trademark registration on VERO MODA since 2010 and ONLY since 1996, see Annex 7 to the Complaint), and China (trademark registration on VERO MODA since 1997 and ONLY since 2000, see Annex 8 to the Complaint). Furthermore, the Complainant is the owner of and maintains two websites under the domain names <veromoda.com> (registered on June 27, 2003) and <only.com> (registered on April 14, 2004), which also features online web shops. (Annex 9 to the Complaint).

According to the information provided by Complainant, Complainant is part of the Bestseller Group, which is a family-owned group of companies founded in Ringkøbing, Denmark, in 1975. Today, the Bestseller Group directly employs more than 9,600 people, and is represented in more than 2,500 chain-stores and more than 12,000 external multi-brand stores in 46 countries around the world. Moreover, according to Complainant, Respondent is not an authorized dealer of ONLY and VERO MODA-branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of legitimate use of the disputed domain name or reasons to justify the choice of the words “Only” and “Vero Moda” in its business operations. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the Trade Marks or to apply for or use any domain name incorporating the Trade Marks;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. The disputed domain name <veromoda-only.com> was registered by Respondent on June 9, 2009.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

(a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the Trade Marks with regard to its products. Complainant has registered its ONLY and VERO MODA trademarks worldwide, including China (trademark registration in China on VERO MODA since 1997 and ONLY since 2000, see Annex 8 to the Complaint). It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name (in June 2009). The Panel therefore finds that the disputed domain name is not one that one could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith. (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).” Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s ONLY and VERO MODA branded products.

(b) Used in Bad Faith

Complainant has adduced evidence to prove that by using a confusingly similar domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondents’ websites” offering the Complainant’s ONLY and VERO MODA products.

According to the information provided by Complainant, on the website at the disputed domain name <veromoda-only.com> articles of clothing are being marketed and sold using Complainant's trademarks, and logo corresponding to the logo used on Complainant's websites “www.only.com” and “www.veromoda.com” are being used without permission. Thus, Respondent is arguably using the disputed domain name for personal or commercial gain. To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

In addition, according to WIPO Overview 2.0, “a panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name.” (paragraph 4.3.). The Panel did undertake limited factual research and visited the website at the disputed domain name, and found that the website also provides the links of Complainant’s competitors’ products. 1

Given the widespread reputation of the Trade Marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved (see Annexes 9 and 11 to the Complaint). In other words, Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with the Trade Marks. Noting also that apparently no clarification as to Respondent’ relationship to Complainant is made on the homepage of the website at the disputed domain name, potential partners and Internet users are led to believe that the disputed domain name <veromoda-only.com> is either Complainant’s site or the site of official authorized partners of Complainant, which it is not. Moreover, Respondent did not respond formally to the Complaint. The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith when this decision is rendered.

In summary, Respondent, by choosing to register and use the disputed domain name, which is confusingly similar to Complainant’s well-known trade marks, intended to ride on the goodwill of Complainant’s trade marks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website on to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

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 disputed domain name <veromoda-only.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: September 5, 2011


1 For example, links for NIKE products and LINING Products (“耐克代销” “李宁安踏代销”).

 

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