WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ecco Sko A/S v. tian yu, Karei, Wuxiaoman, xiao tian
Case No. D2011-1606
1. The Parties
The Complainant is Ecco Sko A/S of Bredebro, Denmark, represented by Chas. Hude A/S, Denmark.
The Respondents are tian yu, Karei, Wuxiaoman and xiao tian of Fujian, China.
2. The Domain Names and Registrars
The disputed domain names <eccoshoes-uk.org> and <eccoshoesuk.org> are registered with Xin Net Technology Corp.
The disputed domain name <eccoshoeuk.com> is registered with Jiangsu Bangning Science & technology Co. Ltd.
The disputed domain name <ukeccoshoes.com> is registered with GoDaddy.com, Inc. (together the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2011. On September 22, 2011, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names (the “Domain Names”). On September 22, 2011, September 23, 2011, and September 27, 2011, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants and providing the contact details. On September 28, 2011, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On September 29, 2011, the Complainant confirmed its request that English be the language of proceedings. The Respondent did not comment on the language of proceedings 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 the Respondent of the Complaint, and the proceedings commenced on October 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2011.
The Center appointed Karen Fong as the sole panelist in this matter on November 15, 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
Founded in 1963, the Complainant is a well-known manufacturer of shoes, bags, belts and shoe care products with its headquarters in Denmark. The Complainant’s net turnover in 2010 was DKK 6,111 million. The Complainant has a total workforce world wide of approximately 17,500 employees.
The Complainant is the owner of the trade mark ECCO registered in several jurisdictions worldwide including the following:
- Community Trademark Reg. No. 001149871, reg. date 06/02/2003
- Community Trademark Reg. No. 002967040, reg. date 02/05/2007
- U.S. Trademark Reg. No. 1935123, reg. date 14/11/1995
- U.S. trademark Reg. No. 3187658, reg. date 19/12/2006
- Chinese Trademark Reg. No. 208743, reg. date 30/05/1984
In addition, the Complainant has a large portfolio of domain names consisting of, or containing “ecco”, including: <ecco.com>, <eccoshoe.com>, <eccoshoes.com>, <eccoshoes.asia>, <eccobrandshop.com>, <eccoshops.com>, <eccoshops.dk>, <ecco-shop.dk>, and <eccoshopping.nl>.
The Domain Names were registered from December 24, 2010 to August 3, 2011. All the Domain Names were connected to active websites (the “Websites”) at the time of the filing of the Complaint. The Websites offered exclusively Ecco shoes. Almost all the shoes offered for sale on the Website were discounted. The Panel has reviewed the Websites. “www.eccoshoesuk.org” no longer resolves to “www.eccoshoeuk.com”. The content on “www.ecoshoesuk.org” appears to be the same as what used to appear on “www.eccoshoeuk.com”. The website at “www.eccoshoeuk.com” now resolves to “www.eccoshoeuk.net” (this domain name is not one of the Domain Names that is subject of the Complaint.) The content on this website is almost identical to that on “www.ecoshoesuk.org”. “www.eccoshoes-uk.org” appears to be blocked. “www.ukeccoshoes.org” is still active but the site looks slightly different to the way it looked prior to the fling of the Complaint. It still offers for sale Ecco shoes.
5. Parties’ Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the ECCO trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names which belong to four registrants, all of which it believes are connected to each other and are owned and controlled by the same person/organization.
The basis of its belief that there is a common link between the registrants and that all the Domain Names have been registered by the same entity/registrant are as follows:
1. The Domain Name <eccoshoesuk.org> resolved to <eccoshoeuk.com> at the time of the filing of the Complaint although they are owned by different registrants. The Complainant believes that the WhoIs information provided by one or both of the registrants might be false.
2. The registrants of all four domain names allegedly reside in Fujian, China.
3. The registrants of both <eccoshoes-uk.org> and <eccoshoesuk.org> are both allegedly from Xiamen City.
4. The Domain Names consist of the three words “ecco”, “UK” and “shoe(s)”.
5. The Websites all sold counterfeit shoes and the counterfeiters are probably using different fictitious names.
6. The Websites have a very similar look and feel as well as structure. They had the following features in common: they all display the ECCO logo, they all contain some pictures taken from the Complainant’s website/catalogue and they all have a menu with the different product categories on the left side and the pictures of some of the products on sale in the central part of the homepage. The Websites appeared to have been built using some kind of standard template which the counterfeiters probably repeatedly use in connection with the websites they set up under new domain names in order to circumvent the UDRP and sell counterfeit goods.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Preliminary Procedural Issues
(i) Consolidation of Proceedings
Paragraph 5(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings BV v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple respondents’ cases and extracted the following general principles:
1. Consolidation of multiples registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.
2. The administrative service provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
In the present case, each of the Domain Names incorporates the Complainant’s trade mark ECCO in its entirety together with the descriptive term, “shoe(s)” and the geographical term, “UK”. The Panel accepts the Complainant’s reasons set out in paragraph 5.A above as being indicative that the Domain Names are subject to common control by the same person or company. In addition, the Panel notes that the domain name <eccoshoeuk.net> which is connected to a website to which the Domain Name <eccoshoeuk.com> now resolves is registered in the name of yet another registrant shengyuanmao on October 7, 2011. This is just after the commencement of this proceeding. This reinforces the point that it is likely that the registrants’ contact details are fictitious and that the registrants are connected.
The Respondent had the opportunity but did not respond substantively to the Complaint.
Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to the common ownership or control of the same person or company. The Panel finds such common control to justify consolidation of the Complainant’s claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.
(ii) Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceedings shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement in relation to the Domain Names is as follows:
<ukeccoshoes.com> - English; <eccoshoeuk.com> <eccoshoesuk.org> and <eccoshoes-uk.org> - Chinese.
The Complainant submits in Section IV of the Complaint that irrespective of the language of the registration agreements, the language of the proceeding should be English. The Domain Names, the content of the Websites and email addresses are all in English. This indicates that the Respondent who is in control of the Domain Names is able to communicate in English.
In response to the Center’s email of September 28, 2011, regarding the language of the proceeding of the Domain Names, the Complainant submitted a 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 Panel accepts the Complainant’s submissions in the Complaint regarding the language of the proceeding and is satisfied that the Respondent appears to be familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade mark ECCO.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Complainant’s registered trade mark ECCO is the dominant portion of the Domain Names. The addition of the descriptive term, “shoe(s)” and geographical term “UK” does nothing to minimise the risk of confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic top-level domain suffix “.com”. The Panel finds that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
The Complainant alleges that it has not licensed or otherwise authorized the Respondent to use its ECCO trade mark in the Domain Names or in any other manner. The Respondent is also using pictures taken from the Complainant’s website and catalogue without authorization. The Complainant also alleges that it has strong reasons to believe that the shoes bearing the trade mark ECCO being offered for sale by the Respondent are counterfeit. The Complainant has alleged that the pictures of the shoes from the Respondent’s homepage are poor copies of the original Ecco shoes or different shoes bearing the ECCO mark. There can be no legitimate interest in the sale of counterfeits (see Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552 and Farouk Systems, Inc v. QYM, WIPO Case No. D2009-1572). Whilst the evidence of counterfeiting submitted by the Complainant is not the best evidence one could submit, the Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent.
In any event, whether the Respondent is selling genuine goods or counterfeits is irrelevant as the Respondent has failed to establish the criteria set out in Oki Data Americas, Inc v. ASD, Inc, WIPO Case No. D2001-0903, referred to in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). In particular, the Websites do not accurately or prominently disclose the relationship between the registrant and the trade mark owner. Further, as the Respondent failed to respond to the Complainant’s contentions, it therefore has failed to displace the assertion on the part of the Respondent that the Respondent has no rights or legitimate interests in the Domain Names. Paragraph 14 of the Rules provides that the Panel may draw such inferences from such a default as it considers appropriate. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
E. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent must have been aware of the Complainant’s ECCO mark when it registered the Domain Names. The fact that the Domain Names incorporate the Complainant’s trade mark in its entirety is in the Panel’s view evidence that the registration of the Domain Names was in bad faith.
The Panel also concludes that the actual use of the Domain Names is in bad faith. The Websites offer Ecco products for sale which are likely to be counterfeit. The Websites reproduce the Complainant’s ECCO trade mark and logo as well as pictures of the Complainant’s products taken from its website and catalogues without the Complainant‘s authorization, creating the impression that the Websites are owned or endorsed by the Complainant. The use of the Domain Names to sell products which are suspected to be counterfeit amounts to use in bad faith.
There is a clear intention to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s Websites are and the products sold on them are authorised or endorsed by the Complainant. The above is clearly bad faith under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <eccoshoes-uk.org>, <eccoshoesuk.org>, <eccoshoeuk.com> and <ukeccoshoes.com> be transferred to the Complainant.
Dated: November 29, 2011