WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Belstaff S.R.L. v. wenfei zheng
Case No. D2012-0788
1. The Parties
The Complainant is Belstaff S.R.L. of Milan, Italy, represented by Hogan Lovells International LLP, Germany.
The Respondent is wenfei zheng of Fujian, China.
2. The Domain Names and Registrars
The disputed domain name <belstaffdeutschland.org> is registered with HiChina Zhicheng Technology Ltd.
The disputed domain names <belstaffclub.com>, <belstaffgiacche.com>, <belstaffjackenherren.com>, <belstaffjackenverkauf.com>, <belstaffjacketsclub.com>, <belstaffonlineuk.com>, and <thebelstaffjackets.com> are registered with Xin Net Technology Corp.
The disputed domain names <belstaffdeutschland.org>, <belstaffclub.com>, <belstaffgiacche.com>, <belstaffjackenherren.com>, <belstaffjackenverkauf.com>, <belstaffjacketsclub.com>, <belstaffonlineuk.com> and <thebelstaffjackets.com> are hereinafter collectively referred to as the Domain Names.
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 HiChina Zhicheng Technology Ltd. and Xin Net Technology Corp. (the “Registrars”) a request for registrar verification in connection with the Domain Names. On April 18, 2012, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. On April 23, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On April 24, 2012, the Complainant confirmed its request that English be the language of proceeding. 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 May 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2012.
The Center appointed Linda Chang as the sole panelist in this matter on June 19, 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, originally founded in 1924 in Staffordshire, United Kingdom of Great Britain and Northern Ireland, is an Italian company and manufacturer of high-quality clothing and accessories.
The Complainant invests substantial time and resources in the design, manufacture, advertising and sale of its products. The Complainant’s mark BELSTAFF has been widely publicized and the Complainant successfully introduces its products into markets all across the globe. The Complainant also manages a number of official Belstaff online stores, including “www.belstaff.com”, “www.belstaff.it”, “www.belstaff.co.uk” and “www.belstaff.de”.
The Complainant owns a number of BELSTAFF trademarks, among others, Community Trademark No. 335810 registered on September 15, 1998 in Class 25, Community Trademark No. 2189025 registered on September 5, 2002 in Classes 3, 9 and 18, and Community Trademark No. 7439102 registered on June 9, 2009 in Classes 14, 16, 24 and 35.
The Domain Names <belstaffjackenherren.com> and <belstaffonlineuk.com> were registered on September 9, 2011, <belstaffgiacche.com> was registered on September 21, 2011, <belstaffjacketsclub.com> was registered on September 22, 2011, <thebelstaffjackets.com> was registered on September 24, 2011, <belstaffjackenverkauf.com> was registered on September 26, 2011, <belstaffclub.com> was registered on September 28, 2011 and <belstaffdeutschland.org> was registered on October 24, 2011. As evidenced by the documents presented by the Complainant, each of the Domain Names was once resolving to an online shop selling purported Belstaff products.
5. Language of the Proceedings
Under paragraph 11 of the Rules, the language of the proceedings shall be the language of the registration agreement, unless both parties agree otherwise, or the registration agreement specifies otherwise, or the panel determines otherwise.
The Complainant filed its Complaint in English and requested for English to be the language of the proceedings for the following reasons:
(a) There is no connection between the Domain Names or the websites connected to the Domain Names (the “Websites”) to the Chinese language, including i) the Domain Names consist of Latin letters rather than Chinese letters; ii) the Domain Names are partly in English (i.e., “club”, “jackets”) and partly in German (i.e., “deutschland”); and iii) the content of the Websites has no connection to the Chinese language.
(b) The English language can be understood most likely by all parties. The Respondent must be capable of the English language as the Domain Names consist of Latin letters and four of the Websites are exclusively held in English. On the part of the Complainant, though it is based in Italy while its representative is based in Germany, it would be possible to work without translations if the proceeding is conducted in English.
(c) It would be disproportionate to require the Complainant to submit a translated Complaint. The activities carried out via the Domain Names are illegal, and requesting the Complainant to submit a translated Complaint would trigger delays and unduly protect the illegal activities of the Respondent.
As confirmed by the Registrars, the language of the Registration Agreements is Chinese. Based on the evidence presented on the record, no agreement appears to have been reached between the Complainant and the Respondent that the language of the proceedings should be English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings by taking into consideration all relevant circumstances, and it is established practice to take paragraphs 10(b) and 10(c) of the Rules into consideration for the purpose of determining the language of the proceedings to ensure fairness to the parties.
Based on the reasons stated in the Complaint, the Panel finds that the Complainant has adduced sufficient evidence to prove that the Respondent is most likely proficient in the English language. The Panel also notes that the Respondent has been given a fair opportunity to object to the use of English as the language of the proceedings but did not do so.
The Panel therefore holds that using English as the language of the proceedings will not be prejudicial to the Respondent in its ability to articulate the arguments for the case, while if the proceedings are to be conducted in Chinese, the Complainant would be unfairly disadvantaged by being forced to translate the Complaint into Chinese and the proceedings would be unduly delayed, which would be contrary to the purpose of maintaining an inexpensive and expeditious avenue for resolving domain name disputes.
Considering all of these circumstances, the Panel decides that the language of the proceedings shall be English and the decision will be rendered in English.
6. Parties’ Contentions
The Complainant contends that the Domain Names are confusingly similar to its BELSTAFF trademark. The Complainant’s trademark BELSTAFF is the only distinctive element of the Domain Names and the addition of descriptive terms at the beginning or the end of the Domain Names does not serve sufficiently to distinguish or differentiate the Domain Names from the Complainant’s BELSTAFF trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant’s preliminary search revealed that the Respondent does not have any trademark rights in BELSTAFF or any variations thereof and the Complainant has never authorized, licensed or permitted the Respondent to use its BELSTAFF trademark. Moreover, the Respondent cannot demonstrate its rights or legitimate interests in the Domain Names.
The Complainant finally contends that the Respondent has registered and is using the Domain Names in bad faith. The Complainant is well-known and it is inconceivable that the Respondent was unaware of the Complainant and its BELSTAFF trademark when registering the Domain Names. Besides, the Respondent tries to internationally attract Internet users to visit the Websites with the intention of fraudulently benefiting from public confusion by creating a likelihood of confusion among Internet users between the Complainant’s famous trademark and the source or affiliation of the Websites. Moreover, the Respondent’s offer for sale of counterfeit or unauthorized imitations of products that bear the Complainant’s trademark BELSTAFF is detrimental to the Complainant’s reputation, interests and legitimate commercial activities.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
To succeed in a complaint, the complainant must, in accordance with paragraph 4(a) of the Policy, satisfy the panel of the following three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Based on the evidenced presented by the Complainant and the relevant provisions of the Policy, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Complainant has adduced sufficient evidence to demonstrate its established rights in the BELSTAFF trademark. The Complainant holds a number of BELSTAFF trademarks, among others, Community Trademark No. 335810 registered on September 15, 1998 in Class 25, Community Trademark No. 2189025 registered on September 5, 2002 in Classes 3, 9 and 18, and Community Trademark No. 7439102 registered on June 9, 2009 in Classes 14, 16, 24 and 35. By the time when the Respondent registered the Domain Names, the BELSTAFF mark of the Complainant has been registered and used for many years.
The Panel notes that each of the Domain Names consists of the BELSTAFF trademark in its entirety, supplemented with the following descriptive terms:
- <belstaffjackenverkauf.com>: “jackenverkauf” (“jackets sale” in German);
- <belstaffdeutschland.org>: “deutschland” (“Germany” in German);
- <belstaffclub.com>: “club”;
- <belstaffgiacche.com>: “giacche” (“because” in Italian);
- <belstaffjackenherren.com>: “jacken” (“jackets” in German) and “herren” (“gents” in German);
- <belstaffjacketsclub.com>: “jacketsclub”;
- <belstaffonlineuk.com>: “onlineuk”;
- <thebelstaffjackets.com>: “the” and “jackets”.
The Panel finds that it is an accepted principle among UDRP panels that an addition of suffix such as “.com” and “.org” as the generic top-level domain indicator is not a distinguishing factor for purposes of the Policy. The Panel further agrees that the mere addition of descriptive terms such as “club” and “online” to the Domain Names does not sufficiently differ the Domain Names from the Complainant’s trademark BELSTAFF, and in the current case, it somehow strengthens the likelihood of confusion as the Domain Names directly refer to the business of the Complainant. See Wal-Mart Stores, Inc. vs. Kuchora, Kal, WIPO Case No. D2006-0033 (“It is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion”) and also PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027.
Moreover, the Panel holds that incorporating the Complainant’s distinctive BELSTAFF trademark in the Domain Names by itself is sufficient under the circumstances to support the claim that the Domain Names are confusingly similar to the Complainant’s trademark. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (“When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar”), and also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (“a domain name is ‘identical or confusing similar’ to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”).
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Names are confusingly similar to the Complainant’s BELSTAFF trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services;
(ii) the fact that respondent has been commonly known by the domain name; or
(iii) legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the circumstances where the Complainant possesses exclusive rights to the BELSTAFF trademark while the Respondent seems to have no trademark rights in BELSTAFF or any variations thereof and the Complainant claims it has never authorized, licensed or permitted the Respondent to use its trademark BELSTAFF, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in respect of the Domain Names.
It is well-established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to demonstrate rights or legitimate interests. See Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
As the Respondent has chosen to remain silent on the Complainant’s contentions, the Panel holds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy and the Respondent has no rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the following circumstances which, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The word “belstaff” is distinctive and the Complainant has developed goodwill in its BELSTAFF mark which is exclusively associated with the high quality merchandise manufactured and marketed by the Complainant. Given the widespread fame of the Complainant and its BELSTAFF mark, the Panel finds it inconceivable that the Respondent was not aware of the BELSTAFF mark when registering the Domain Names. In fact, the Respondent’s copying of the Complainant’s trademark BELSTAFF (both word and device trademarks) on the Websites, as well as its offering of purported Belstaff products, is clear indication that it had knowledge of the BELSTAFF mark at the time of registration. Incorporation of the BELSTAFF mark in the Domain Names in the absence of any rights or legitimate interests and reasonable justification is, to the Panel, sufficient evidence of bad faith by the Respondent under the Policy. See LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; and Caixa D’Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464.
As evidenced by the documents presented by the Complainant, the Panel notes that the Websites were offering for sale of purported BELSTAFF products, with which the Complainant claims has no business relationship. After reviewing the case, the Panel finds that there is no evidence that the Respondent has used or intends to use the Domain Names for purposes of bona fide offering of goods or services. To be bona fide, one of the minimum requirements is for the respondent to accurately disclose its relationship with the trademark holder, while in the current case, the Respondent uses the Complainant’s BELSTAFF mark not only in the Domain Names but also prominently on the home pages as well as on various products, but without identifying itself as being a separate and independent entity from the Complainant by placing a disclaimer on the Websites. Absent evidence to the contrary, the Panel determines that the act of the Respondent does not constitute a bona fide offering of goods or service. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
In the context of a virtual world like the Internet, the Panel agrees that consumers who are seeking genuine products from the Complainant on the Internet may be attracted to the Domain Names comprising of the Complainant’s mark and may most likely be misled into believing that the Websites are the official sites the Complainant and/or the Respondent is affiliated with or has been authorized by the Complainant to sell products of the Complainant, which is not true in fact. The Panel holds that bad faith is found when the Respondent is using the Domain Names to capitalize on the fame of the Complainant and to internationally attempt to attract, for commercial gain, Internet users to the Websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Websites or of the products being offered for sale there.
The Complainant claims that the offered goods on the Websites are counterfeit products as the Complainant has neither manufactured the goods nor authorized or permitted the production of such goods. The Respondent could have countered with some persuasive arguments but did not do so. The Panel also notes these goods are offered at low prices compared to the genuine goods of the Complainant. In all the circumstances, the Panel is satisfied that the Respondent is using the Domain Names to facilitate the sale of counterfeit products. Previous UDRP decisions have ruled that selling counterfeit goods via a disputed domain name is sufficient evidence of bad faith. See Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019.
Besides, failure of the Respondent to rebut the contentions made in the Complaint may be further indicative of its bad faith. See The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “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)”.
In light of the above facts and reasons, the Panel therefore determines that the Domain Names were registered and are being used in bad faith pursuant to 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 <belstaffdeutschland.org>, <belstaffclub.com>, <belstaffgiacche.com>, <belstaffjackenherren.com>, <belstaffjackenverkauf.com>, <belstaffjacketsclub.com>, <belstaffonlineuk.com> and <thebelstaffjackets.com> be transferred to the Complainant.
Dated: July 5, 2012