WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Belstaff S.R.L. v. xi yang
Case No. D2012-0794
1. The Parties
The Complainant is Belstaff S.R.L. of Milan, Italy represented by Hogan Lovells International LLP, Germany.
The Respondent is xi yang of Beijing, China.
2. The Domain Names and Registrars
The disputed domain names <belstaffcazadoras.net>, <belstaff-chaquetas.org>, <belstaffdamenjacken.com>, <belstaffgermany.org>, <belstaffgiubbottiuomo.com>, <belstaffjackenaustria.com>, <belstaffjackenaut.com>, <belstaffjacketsru.com> and <belstafflederjackende.com> are registered with HiChina Zhicheng Technology Ltd.
The disputed domain name <belstaffjackenshop.org> is registered with Xin Net Technology Corp.
The disputed domain names above are referred together 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. a request for registrar verification in connection with the Domain Names registered with it, listed above. On April 18, 2012, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On April 17, 2012, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name <belstaffjackenshop.org>. On April 18, 2012, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On April 19, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of the proceeding. On April 20, 2012, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit any comments.
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 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2012.
The Center appointed Karen Fong as the sole panelist in this matter on June 12, 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.
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified 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 Registrars, the language of the registration agreements in relation to the Domain Names is Chinese.
The Complainant has in the Complaint and in its email in response to the Center, regarding the language of the proceeding submitted that English be the language of the proceeding for the following reasons: there is no connection between the Domain Names or the content of the websites connected to the Domain Names (the “Websites”) to the Chinese language; the English language is one which is most likely to be understood by all parties especially given the fact that the Domain Names consist of Latin letters rather than Chinese characters and the Websites appear to be directed at Europeans rather than Chinese speakers and it would be disproportionate to require the Complainant to submit a translated Complaint. 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.
4. Factual Background
The Complainant is the internationally recognised company and manufacturer of high-quality clothing and accessories under the trade mark BELSTAFF. It was founded in 1924 and specialises in the creation of high technology protective garments, boots, helmets, gloves, goggles for motorcyclists, aviators, the army and those involved in active outdoor activities. The BELSTAFF brand has over the years achieved iconic status and is worn by many famous people from Che Guevara to Tom Cruise. It has been featured in many films including the various Batman, Mission Impossible and Terminator movies.
The Complainant has stores around the world as well as online stores connected to the following domain names <belstaff.com>, <belstaff.it>, <belstaff.co.uk>, <belstaff.de>, <belstaff.at>, <belstaff.us>, <belstaff.net> and <belstaff.org>.
The BELSTAFF trade mark is registered all over the world including the following Community trade mark registration numbers: 335810 (since August 2, 1996) and 2189025 (since April 23, 2001).
The Domain Names were registered by the Respondent as follows:
November 4, 2011 for <belstaffjackenaustria.com>;
November 17, 2011 for <belstaffjackenshop.org>;
November 9, 2011 for <belstaffgermany.org>;
November 18, 2011 for <belstaffdamenjacken.com>;
November 5, 2011 for <belstaffgiubbottiuomo.com>;
November 10, 2011 for <belstaffjackenaut.com>;
October 31, 2011 for <belstaffjacketsru.com>;
November 7, 2011 for <belstafflederjackende.com>;
November 16, 2011 for <belstaffcazadoras.net>;
November 10, 2011 for <belstaff-chaquetas.org>.
The Websites offered for sale Belstaff products that appeared to be counterfeit and/or are unauthorised by the Complainant. The Websites also featured the Complainant’s BELSTAFF trade mark and logo. The Websites appear to be no longer active since the filing of the Complaint.
5. Parties’ Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the BELSTAFF 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.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
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.
B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade mark BELSTAFF and that BELSTAFF is a widely-known trade mark.
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 BELSTAFF is the dominant portion of the Domain Names. The addition of the descriptive and geographical terms:
“jacken” meaning “jacket” in German and “Austria”;
“jacken” and “shop”;
“damen” meaning “women” in German and “”jacken”;
“giubbotti” meaning “jackets” in Italian and “uomo” meaning “man” in Italian;
“jacken” and “aut” which is the 3 letter country code for Austria;
“jackets” and “ru” which is the country code top level domain for the Russian Federation;
“lederjacken” meaning “leather jackets” in Germany and “de” which is the country code top level domain for Germany;
“cazadoras” meaning “leather jacket” in Spanish;
“chaquetas” meaning “jackets” in Spanish;
do nothing to minimise the risk of confusion for this Panel. 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 domain suffix “.com”, “.net” and “.org”. The Panel finds that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant submits that it has not authorized, licensed or permitted the Respondent to use the BELSTAFF trade mark in the Domain Names or in any other way. The Panel finds the Respondent is not commonly known by the Domain Names. Further the Complainant alleges that the BELSTAFF products offered for sale by the Respondent are counterfeit as they are sold at much lower prices than genuine BELSTAFF products. Another circumstance supporting the Complainant’s assertion of the sale of counterfeit goods at the websties is the fact that there was no contact information for the Respondent on the Websites. 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). 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, the Panel finds in this case that 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”, paragraph 2.3. In particular, the Websites did 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 Complainant 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.
D. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s BELSTAFF trade mark when it registered the Domain Names. The fact that the Domain Names incorporate the Complainant’s well-known trade mark in its entirety is in the Panel’s view evidence that the registration of the Domain Names was in bad faith.
With respect to the use of the Domain Names, the Panel observes that the Respondent were using the Complainant’s trade marks on the Websites and were also using the Websites to sell likely counterfeit Belstaff products. This shows a clear intention to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s Websites and the products sold on them were authorised or endorsed by the Complainant. The above is clearly bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Panel also concludes that the actual use of the Domain Names were in bad faith.
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, <belstaffcazadoras.net>, <belstaff-chaquetas.org>, <belstaffdamenjacken.com>, <belstaffgermany.org>, <belstaffgiubbottiuomo.com>, <belstaffjackenaustria.com>, <belstaffjackenaut.com>, <belstaffjackenshop.org>, <belstaffjacketsru.com> and <belstafflederjackende.com> be transferred to the Complainant.
Dated: June 25, 2012