WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Belstaff S.R.L. v. PrivacyProtect.org / Robert Parker
Case No. D2012-0787
1. The Parties
The Complainant is Belstaff S.R.L. of Milano, Italy, represented by Hogan Lovells International LLP, Germany.
The Respondent is PrivacyProtect.org / Robert Parker of Queensland, Australia and Arizona, United States respectively.
2. The Domain Names and Registrar
The disputed domain names <belstaffdeutschland.net> and <belstaffoutletch.com> are registered with UK2 Group Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2012. On April 17, 2012, the Center transmitted by email to UK2 Group Ltd. a request for registrar verification in connection with the disputed domain names. On April 17, 2012, UK2 Group Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 30, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 18, 2012.
The Center verified that the Complaint together with the amendment to 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 June 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 22, 2012.
The Center appointed Anders Janson as the sole panelist in this matter on June 28, 2012. 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 is a manufacturer of clothes and accessories on the worldwide market. The Belstaff group was founded in England in 1924. The Belstaff group has at present over 1,000 selling points worldwide. Currently, the Belstaff group maintains an online store on the following websites: “www.belstaff.com”, “www.belstaff.it”, “www.belstaff.co.uk”, “www.belstaff.de”, “www.belstaff.at”, “www.belstaff.us”, “www.belstaff.net” and “www.belstaff.org”.
The trademark BELSTAFF was registered as a word mark in different classes on September 15, 1998 and on September 5, 2002 in the official European trademark register upheld by the Office for Harmonization in the Internal Market (“OHIM”). The trademarks AVIATOR BY BELSTAFF, BELSTAFF and BELSTAFF were registered by OHIM as figure marks on April 3, 2006, June 9, 2009 and November 9, 2011 respectively.
The disputed domain names were registered on November 14, 2011 (<belstaffdeutschland.net>) and on November 10, 2011 (<belstaffoutletch.com>).
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is met in the present case:
1. The disputed domain names are confusingly similar to inter alia the registered trademark BELSTAFF in which the Complainant has rights. The only difference between BELSTAFF and the disputed domain names is the addition of descriptive terms at the end. In this regard, it shall be noted that “deutschland” means Germany in German and that “outlet” serves as a description of a market place where consumers may purchase goods from the manufacturer directly. The further addition of the letters “ch”, i.e. the country code for Switzerland, is intended to convey the impression that the domain name <belstaffoutletch.com> has a Swiss country code top-level domain. A number of UDRP panels have ruled that the mere addition of such non-significant elements is not sufficient to distinguish domain names from registered trademarks. Therefore the additions should be disregarded when considering similarity and risk of confusion between the disputed domain names and the Complainant’s trademark BELSTAFF. The same principle applies to the element of “.net” and “.com” in the disputed domain names, which also should be disregarded in this respect.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain names. The websites to which the disputed domain names are linked offer identical newly produced goods (jackets and bags) as the Complainant’s. The Complaint has not manufactured or permitted the production of the offered goods, which bear the BELSTAFF trademark, hence they must be counterfeited goods or unauthorized imitations of original BELSTAFF goods. The Complainant has received complaints about the very poor quality of goods from consumers who have bought goods from comparable online shops. The disputed domain names are being used by the Respondent to direct Internet users towards websites containing counterfeited goods, at low prices compared to the Complainant’s original, high-quality and upscale luxury goods, which is misleading consumers and detrimental to the Complainant’s customers, reputation and business. Concurrently, the Respondent is gaining commercially due to the confusion. Therefore, the Respondent’s registrations were not bona fide uses of the disputed domain names. Further, the Respondent has not been commonly known by the disputed domain names and is not making a legitimate noncommercial or fair use of them. The Respondent is not in any way related to the Complainant’s business.
3. The disputed domain names were registered and are being used in bad faith. The Complainant is well-known for the production of luxury clothing and accessories, and the trademark BELSTAFF had already been registered for many years at the time when the disputed domain names were registered. It is implausible that the Respondent was unaware of the Complainant and the BELSTAFF trademark at this time. In fact, the Complainant’s word and figure marks BELSTAFF are reproduced at the websites to which the disputed domain names are linked. It is clear that the Respondent is intending to free ride on the goodwill of the BELSTAFF trademark in which the Complainant enjoys exclusive rights.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Given the case file and the Respondent’s failure to file a formal Response, the Panel, where appropriate, accepts as true the contentions of the Complainant. The Respondent’s default does not however automatically lead to a ruling decision for the Complainant. To the contrary, the Complainant still must establish a showing that under the Policy, it is entitled to a transfer of the disputed domain names.
The Policy provides that, to justify a transfer of a domain name, a complainant must prove each of the following (paragraph 4(a) of the Policy):
i) that the disputed domain names registered by the respondent are identical or confusingly similar to a trademark or service mark in which the complainant has rights;
ii) that the respondent has no rights or legitimate interests in respect of the disputed domain names; and
iii) that the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain names are <belstaffdeutschland.net> and <belstaffoutletch.com>. The disputed domain names contain the Complainant’s registered trademark BELSTAFF in its entirety with the added suffixes “deutschland” and “outletch”, together with the generic and functional top level domain name (“gTLD”) “.net” and “.com” respectively. When determining whether a domain name and a trademark are identical or confusingly similar, the gTLD shall typically be disregarded.
The question is therefore if the addition of the suffixes renders the disputed domain names dissimilar from the Complainant’s registered trademark.
In a large number of previous decisions, UDRP panels have found that the fact that a domain name incorporates a complainant’s registered mark is sufficient to establish identical or confusingly similarity for the purpose of the Policy, despite the addition of other words to such marks (see for instance Oki Data Americas Inc. v. the ASD Inc., WIPO Case No. D2001-0903 and CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273).
The Panel finds it established that the BELSTAFF trademark is widely known and that the ownership belongs to the Complainant. The Panel further finds that the suffix “deutschland”, meaning Germany in German, adds little to the overall impression of the disputed domain name <belstaffdeutschland.net>. Relevant Internet users are very likely to assume that the addition of the word “deutschland” to the trademark signifies a website associated with the Complainant, inasmuch as the Complainant is a well-known company and the website is published in German. Further and with regards to the addition of the suffix “outletch”, which may refer to the English word “outlet” and the country code for Switzerland, the Panel finds that this addition does not serve sufficiently to distinguish the disputed domain name <belstaffoutletch.com> from the Complainant’s BELSTAFF trademark. For those reasons the Panel holds that the disputed domain names must be considered confusingly similar to the Complainant’s registered trademark. The Panel finds that the Complainant has established the first element of the Policy, paragraph 4(a).
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent has no derived rights to use the Complainant’s trademark as a licensee or otherwise according to any agreement with the Complainant. The Complainant further asserts that the Respondent has chosen the disputed domain names only because they are similar to the Complainant’s trademarks, for the purpose of generating traffic to the disputed domain names and to attract Internet users who are looking for the Complainants’ goods to the Respondent’s websites. The Complainant furthermore asserts that the Respondent has not made a bone fide offering of goods and services pursuant to paragraph 4 (c) of the Policy, but rather has used the disputed domain names to sell counterfeit goods by exploiting the Complainant’s goodwill.
In certain circumstances where a respondent clearly has no obvious connection with a disputed domain name, and indeed when the respondent is not making a noncommercial or fair use of the domain name, a prima facie showing from a complainant that the respondent has no rights or legitimate interests may be enough to shift the burden of production to a respondent to demonstrate that such rights or legitimate interests exist. Here, the Respondent has not submitted a formal Response in accordance with the Rules, paragraph 5. The Panel notes that a registration of a domain name in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy. In conclusion, the Panel finds that the Complainant has made a prima facie showing and the Respondent has not participated in these proceedings or presented any evidence of rights or legitimate interests in using the disputed domain names.
The Panel therefore holds, also in view of the Panel’s further findings below, that the Complainant has established the second element of the Policy, paragraph 4(a).
C. Registered and Used in Bad Faith
Finally, the Panel has to consider the question whether the disputed domain names have been registered and being used in “bad faith”. Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 6(a)(iii) of the Policy, i.e.
i) Circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of pocket costs directly related to the domain name; or
ii) The respondent has registered the 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 it has engaged in a pattern of such conduct; or
iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a like hood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its website or location.
The Complainant has asserted that the Respondent must have known of the Complainant’s line of business and the Complainant’s trade name and registered domain names at the time of registration and subsequent operation of its websites.
With reference to the above-mentioned and the fact that it is highly unlikely that the Respondent, by utter accident, registered the disputed domain names, which differ from the Complainant’s trademark only by the addition of the suffixes “deutschland” and “outletch”, the Panel finds it more likely than not that the Respondent, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source of the goods on its websites, is trying to mislead consumers in order to attract them to an intended website making them believe that the website is associated with or recommended by the Complainant. The Panel finds that this act constitutes bad faith.
The Panel therefore concludes that the Complainant has proven that the Respondent was acting in bad faith pursuant to paragraph 4(a)(iii) 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 disputed domain names <belstaffdeutschland.net> and <belstaffoutletch.com> be transferred to the Complainant.
Dated: July 19, 2012