WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Belstaff S.R.L. v. Yang Yan
Case No. D2012-0799
1. The Parties
The Complainant is Belstaff S.R.L. of Milan, Italy, represented by Hogan Lovells International LLP, Germany.
The Respondent is Yang Yan of Hangzhou, Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <belstaffjacken.net> (the “Domain Name”) is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2012. On April 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 18, 2012, the Registrar 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 26, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On April 26, 2012, the Complainant confirmed their 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 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2012.
The Center appointed Linda Chang as the sole panelist in this matter on June 25, 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 several official online stores to promote and sell its BELSTAFF marked products, 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 Name was registered on July 22, 2011 and once resolving to an online store selling purported BELSTAFF marked products.
5. Language of the Proceedings
As confirmed by the Registrar, the language of the Registration Agreement is Chinese.
Under paragraph 11(a) 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. No agreement appears to have been reached between the Complainant and the Respondent about the language of the proceedings.
The Complainant filed its Complaint in English and requested for English to be the language of the proceedings for the following reasons:
(a) the Domain Name consists of Latin letters, rather than Chinese letters;
(b) the corresponding website of the Domain Name (the “Website”) is displayed partly in English and partly in German, and has no connection to the Chinese language;
(c) as the Respondent is internationally offering goods through the Website, the Respondent is more likely than not to have a sufficient understanding of the English language;
(d) though the Complainant is based in Italy while its representative is based in Germany, they are able to participate in an English proceedings; and
(e) requesting the Complainant to submit a translated Complaint would incur additional expense and delay and unduly protect the illegal activities of the Respondent.
The Respondent did not file any submissions to object to the use of English as the language of the proceedings after it was notified by the Center of the language request of the Complainant.
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 and maintenance of an inexpensive and expeditious avenue for resolving domain name disputes.
After reviewing the case, the Panel finds the Complainant has introduced sufficient evidence to prove the likely possibility that the Respondent is capable of communicating in the English language. The Panel therefore holds that using English to conduct the proceedings would not be prejudicial to the Respondent and would facilitate a timely and inexpensive proceeding in the spirit of paragraph 11 of the Rules.
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 Name is confusingly similar to its BELSTAFF trademark. The addition of descriptive terms adds nothing or little to the Domain Name and does not serve sufficiently to distinguish or differentiate the Domain Name from the Complainant’s BELSTAFF trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant’s preliminary search revealed that the Respondent does not have any trademark rights in BELSTAFF or any variations thereof. The Complainant has never authorized, licensed or permitted the Respondent to use its trademark BELSTAFF. Moreover, the Respondent cannot demonstrate its rights or legitimate interests in the Domain Name and cannot assert that its use of the Domain Name is in connection with a bona fide offering of goods and services.
The Complainant finally contends that the Respondent has registered and is using the Domain Name 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 Name. Besides, the Respondent tries to intentionally attract Internet users to visit the Website by creating a likelihood of confusion among Internet users between the Complainant’s famous trademark and the source or affiliation of the Website. 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, a 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
As evidenced by the documents on the record, 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. The registration of the above-mentioned BELSTAFF trademarks predates that of the Domain Name. The Panel is satisfied that the Complainant has prior rights in the BELSTAFF trademark.
Apart from “.net”, the Domain Name integrates the BELSTAFF trademark in its entirety, followed with the term “jacken” (“jackets” in German). The Panel finds it an accepted principle that the addition of a suffix such as “.net” as the generic top-level domain indicator is not sufficient to distinguish a domain name from a trademark. The Panel further agrees that the mere addition of the above generic descriptive term to the Domain Name is insufficient to dispel the confusing similarity arising from the incorporation of the Complainant’s trademark BELSTAFF. 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 distinctive BELSTAFF trademark in the Domain Name by itself is sufficient to support the claim that the Domain Name is confusingly similar to the Complainant’s trademark. The Domain Name incorporating the trademark BELSTAFF would cause Internet users to believe that the Website enjoys some form of sponsorship from or affiliation with the Complainant and its BELSTAFF 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 Name is 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 appears 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 Name under paragraph 4(c) of the Policy. 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.
The Panel further finds there is no evidence that the Respondent has used or intends to use the Domain Name for purposes of a 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 Name but also displays the mark prominently on the website 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 Website. 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. Besides, the Respondent intentionally registered and uses the Domain Name in an attempt to capitalize on the fame of the trademark BELSTAFF and to exploit the marketing efforts expended by the Complainant, which shall not be deemed as bona fide. See Madonna Ciccone, p/k/a Madonna v. Dan Parisis and “Madonna.com”, WIPO Case No. D2000-0847 (“use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services”).
As the Respondent has chosen not to respond to 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 Name.
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 expended substantial efforts to create and maintain the reputation of the mark BELSTAFF. Use of the Domain Name by the Respondent took place only long after the trademark BELSTAFF had become known among the related public, therefore, the Respondent should have been aware of the mark BELSTAFF. In this Panel’s view, the Respondent’s reproduction of the Complainant’s trademark BELSTAFF on the Website, as well as its offering of purported Belstaff products, is sufficient indication that it knew of the BELSTAFF mark when registering the Domain Name. Incorporation of the BELSTAFF mark in the Domain Name without any reasonable justification is sufficient evidence of bad faith by the Respondent. See Government Employees Insurance Company v. Michael Gonzalez, WIPO Case No. D2011-1130 (“What does show bad faith, however, is the very domain name itsel… Complainant’s mark is ‘distinctive and not an everyday word or phrase’… ‘a coined term that is today known primarily as an identifier of Complainant’s products and services’. There is, or could be, no contention that Respondent selected the disputed domain name for its value as a generic term or random combination of letter”).
As evidenced by the documents presented by the Complainant, the Panel notes that the Website was 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 Name 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 Name 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 Website. 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.
The Panel views there can be no plausible explanation for the Respondent’s selection of the mark BELSTAFF as part of the Domain Name other than to misleadingly divert Internet users to the Website for commerical gain. In the context of a virtual world like the Internet, the Panel finds that consumers who are seeking genuine products from the Complainant on the Internet may be attracted to the Domain Name comprising of the Complainant’s mark and may most likely be misled into believing that the Website is the official site of the Complainant and/or the Respondent is affiliated to or has been authorized by the Complainant to sell products of the Complainant, which is not true in fact.
The Complainant claims that the offered goods on the Website 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 arguments and evidence to prove otherwise but has chosen to remain silent. The Panel also notes the goods offered on the Website are of low prices compared to the genuine goods of the Complainant. In all the circumstances, the Panel is satisfied that the Respondent appears to be using the Domain Name to facilitate the sale of counterfeit products. The Panel holds that the use of the Domain Name by the Respondent in connection with the sale of apparently counterfeit products 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 Name was registered and is 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 Name <belstaffjacken.net> be transferred to the Complainant.
Dated: July 5, 2012