WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Belstaff S.R.L. v. xiao fei
Case No. D2012-0803
1. The Parties
The Complainant is Belstaff S.R.L. of Milan, Italy, represented by Hogan Lovells International LLP, Germany.
The Respondent is xiao fei of Beijing, China.
2. The Domain Names and Registrar
The disputed domain names <belstafftienda.org> and <neubelstaffjacken.com> (the "Domain Names") are registered with eNom Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 17, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names and the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Domain Names and providing the relevant contact details.
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 April 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Response was May 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2012.
The Center appointed Michael A. R. Bernasconi as the sole panelist in this matter on May 22, 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. Language of the proceedings
Paragraph 11(a) of the Rules provides:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding 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 proceeding."
The Complainant has submitted the Complaint in English, stating different reasons why English should be the language of the proceedings. The Complainant particularly argues that the Domain Names consist of Latin, not Chinese, letters, that the parts of the Domain Names attached to "Belstaff" constitute Spanish ("tienda") respectively German ("neu" and "jacken"), not Chinese, words, that <belstafftienda.org> is mainly connected to a Spanish and <neubelstaffjacken.com> to a German website, that leading the proceedings in Chinese would mean a lot of additional expenses and delay due to the necessity of translating all documents, that it can be assumed that the English language is understood by both parties and that it would be disproportionate to require the Complainant to file its documents in Chinese.
The Respondent did not object to the use of English as the language of the proceedings.
From the evidence presented, no agreement appears to have been entered into between the Complainant and the Respondent concerning the language of the proceedings. The Registrar informed by email dated April 17, 2012, to the Center that the Registrar's Registration Agreement is written in English. Therefore and as the Registration Agreement does not provide another language than English, the Panel determines that English shall be the language of the proceedings and that the decision will be rendered in English.
5. Factual Background
The Complainant is domiciled in Milano, Italy. The Complainant sells clothes for men and women as well as accessories, such as bags, shoes, gloves and belts. These products are advertised in particular in international magazines, movies as well as musical video-clips.
The Complainant has registered the BELSTAFF word trademark in various countries on September 15, 1998, for the class 25 (No. 000335810), and on September 5, 2002, for the classes 3, 9 and 18 (No. 002189025). In addition, it has registered BELSTAFF figurative trademarks, namely on April 3, 2006, for the classes 18 and 25 (No. 004313334), on June 9, 2009, for the classes 14, 16, 24 and 35 (No. 007439102) and on November 9, 2011, for the classes 3, 9, 14 and 18 (No. 010060028).
The Respondent has registered the Domain Name <belstafftienda.org> on January 13, 2012 (expiration date: January 13, 2013) and the Domain Name <neubelstaffjacken.com> on January 17, 2012 (expiration date: January 17, 2013).
6. Parties’ Contentions
The Complainant argues that the Domain Names are confusingly similar to its registered trademarks and that this confusing similarity cannot be avoided by the addition of "tienda" (the Spanish expression for "store" or "shop") and "neu" and "jacken" (the German words for "new" and "jackets", respectively), as these terms are solely descriptive and non-significant elements. The Complainant also affirms that the top-level domains ".org" and ".com" do not prevent the Domain Names from being confusingly similar to its trademarks.
Further, the Complainant contends that the Respondent cannot rely on any of the circumstances set out in the Policy, paragraph 4(c)(i-iii), in order to demonstrate any right or legitimate interest in respect of the Domain Names.
The Complainant states that the Respondent does not use or prepare to use the Domain Names in connection with a bona fide offering of goods or services, as the offered goods on "www.belstafftienda.org" (resulting from the Domain Name <belstafftienda.org>) and "www.belstaffjackebillig.com" (resulting from the Domain Name <neubelstaffjacken.com>) are counterfeit or unauthorized imitations. The Complainant alleges that by doing this, the Respondent misleads the Internet users for commercial gain which cannot constitute a bona fide offering of goods or services, but rather a commercial business conducted in bad faith. Besides, the Complainant states that it never authorized, licensed or permitted the Respondent to use any of the trademarks BELSTAFF. In addition, the Complainant contends that the Respondent is neither commonly known by the Domain Names nor has he/she any trademark rights containing said term.
Finally, the Complainant asserts that the Domain Names have been registered as well as used in bad faith, as the Respondent was aware of the Complainant and its trademarks when registering the Domain Names. The Complainant alleges that by using the Domain Names, the Respondent attempts to attract Internet users by creating a likelihood of confusion with the Complainant's trademarks for commercial gain.
The Respondent did not reply to the Complainant’s contentions. Accordingly, and based on paragraph 14(b) of the Rules, the Panel shall draw such inferences from this default of the Respondent as it considers appropriate.
7. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and that
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that the Complainant is the owner of different word and figurative trademarks containing the term "Belstaff".
The Domain Names are not identical with the Complainant's trademarks. Therefore, the question is whether they are confusingly similar to them.
The Domain Names <belstafftienda.org> and <neubelstaffjacken.com> incorporate the Complainant's well-known and distinctive BELSTAFF trademark in its entirety. The addition of the merely generic terms "tienda", which is the Spanish word for "store" or "shop", as well as "neu" and "jacken", the German expressions for "new" and "jackets", respectively – which give a strong association to the Complainant’s business activity and products – cannot be deemed sufficient to avoid confusion between the Domain Names and the Complainant’s trademarks (see GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; see also Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistic Corp., WIPO Case No. D2000-0464: "The use of […] a generic word is an irrelevant distinction, which does not change the likelihood for confusion."; Wal-Mart Stores, Inc. v. Walsucks & Walmarket Puerto Rico, WIPO Case No. D2000-0477: "The addition of a common or generic term following a trademark does not create a new or different mark in which Respondent has rights."). The addition of the suffixes ".org" and ".com" does not affect this finding (see Wal-Mart Stores, Inc. v. Walsucks & Walmarket Puerto Rico, WIPO Case No. D2000-0477; Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630).
Thus, the Panel finds that the Domain Names are confusingly similar to the Complainant’s trademarks pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy defines circumstances which, if proved, establish the rights or the legitimate interests of a respondent in respect of a domain name.
The Complainant has provided a prima facie case showing that it has no relationship with the Respondent and has not granted the Respondent any right to register or use the BELSTAFF trademarks. Therefore, in line with prior UDRP decisions, the burden of production shifts to the Respondent to demonstrate his/her rights or legitimate interests in the Domain Names (see for example Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630). In this regard, paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In the present case, the Respondent failed to submit a Response, which speaks for a nonexistence of any right or legitimate interest with respect to the Domain Names (see Spenco Medical Corporation v. Transure Enterprise Ltd, WIPO Case No. D2009-1765: "As no Response has been filed, the Respondent has failed to discharge that onus, and the Complainant therefore succeeds on this part of its Complaint."). Besides, the lack of Response makes it difficult for the Panel to reasonably make findings differently from those stated in the Complaint (see Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493).
Furthermore, there is no evidence that the Respondent has used or prepared to use the Domain Names in connection with a bona fide offering of goods or services, that the Respondent has been known by the Domain Names or that he/she makes a legitimate noncommercial or fair use of the Domain Names (paragraph 4(c)(i-iii) of the Policy).
The Domain Name <belstafftienda.org> leads to a website offering jackets and bags at reduced prices (status June 12, 2012). This means that the Domain Name is linked to a website which presents kinds of products protected by the trademarks BELSTAFF. The Complainant alleges that the goods sold on "www.belstafftienda.org" must be counterfeit, because the Complainant neither manufactured nor authorized or permitted the production of the praised goods. But even if the products offered for sale under the Domain Name were genuine Belstaff products, the use of the Domain Name waned not amount to a bona fide offering of goods under paragraph 4(c)(i) of the Policy and therefore to a legitimate interest with regard to the Domain Name. As summarized in paragraph 2.3 of the WIPO Overview 2.0:
"Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. (…)" (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 with further references; also Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630)
At least the latter condition is not fulfilled by the Respondent. The website corresponding to <belstafftienda.org> states under the link "Best Price Guarantee" at the bottom of the homepage the following:
"Our Best Price Guarantee, including the following contractual arrangements
1. We get all the products from the manufacturer Belstaff […)"
This means that the website does not accurately and prominently disclose the Respondent’s relationship with the Complainant. Moreover, by using the BELSTAFF logo, the Respondent creates the impression that the website "www.belstafftienda.org" is an official homepage for the sale of Belstaff products.
The same holds true for the Domain Name <neubelstaffjacken.com>. The Complainant alleges that the goods sold on “www.neubelstaffjacken.com” must also be counterfeit. As with the other Domain Name, even if the products offered for sale here were genuine Belstaff products, the use of the domain Name would not be bona fide. The domain Name leads to the webpage "www.belstaffjackebillig.com", on which the Internet user can buy jackets, bags and boots (status June 12, 2012). On said website, it is written that the Respondent obtains the goods directly from the licensed manufacturers ("Wir bekommen unsere Ware direkt aus Lagern der lizensierten Herstellern."). Further, the homepage maintains that the manufacturer produces a large number of goods in order that a small quantity can be abandoned and – without papers – resold to other retailers ("Wie Sie wissen, sie pruduzieren eine grosse Menge von Waren, damit ein kleiner Teil von zusätzlichen Volumen überlassen und ohne Papiere an andere Händler weiterverkauft werden kann…"). This means that also the website "www.belstaffjackebillig.com" does not disclose accurately the Respondent's relation to the Complainant. The Respondent misleads the Internet users by using the Complainant's trademark and popularity (see Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847: "(…) use which intentionally trades on the fame of another can not constitute a "bona fide" offering of goods or services").
Therefore, for all the above mentioned reasons, the Panel concludes that paragraph 4(a)(ii) of the Policy is established and that the Respondent has no rights or legitimate interests in respect of the Domain Names.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires proof of bad faith concerning both the registration and the use of the Domain Names.
When assessing bad faith in the registration requirement, it should be considered (1) whether the Respondent knew of the Complainant and its trademarks (see Janet E. Sidewater v. Worldwide Media Inc., WIPO Case No. 2006-1281), and (2) whether the Respondent targeted the Complainant to benefit from confusion generated by the similarity between the Domain Names and the trademarks (see Align Technology Inc., v. Web Reg/ Rarenames/ Aligntechnology.Com, WIPO Case No. D2008-0103 with reference to Gold Medal Travel Group plc v. Damir Kruzicevic, WIPO Case No. D2007-1902).
At the time when the Respondent registered the Domain Names, the Complainant had registered and used its trademarks already for many years. Moreover, the Complainant's trademarks are valid in several countries and became well-known in the markets they have entered and for the goods they are protected for, also due to the Complainant's extensive advertising and use of its trademarks (see Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630, with reference to other cases with the same complainant). Thus, the Respondent must have known about the Complainant's trademarks. This is also shown by the fact that the Domain Names encompass the term "Belstaff" in its entirety.
Furthermore, and as already explained above, in the context of the missing rights or legitimate interests of the Respondent regarding the Domain Names (see above 7.B.), the Respondent took advantage of the Complainant's fame and registered the Domain Names in order to create confusion among the Internet users and divert them to his/her websites.
However, not only the registration, but also the use of the Domain Names has been in bad faith. As stated above, the Respondent intentionally attempts to attract Internet users to his/her homepages, by creating a likelihood of confusion with the Complainant's trademarks in the sense of paragraph 4(b)(iv) of the Policy.
Under these circumstances and taking into consideration that the Respondent has not provided any evidence of an actual or contemplated legitimate use, the Panel considers that the Respondent has registered as well as used the Domain Names in bad faith and that the third requirement of paragraph 4(a) of the Policy is satisfied.
Therefore, and in consideration of the Complainant's compliance with the formal requirements for these domain name dispute proceedings, of the Respondent’s default in submitting a Response, of the factual evidence and the legal contentions that were submitted, of the confirmation of the presence of each of the elements contemplated in paragraphs 4(a)(i)(ii) and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14 and 15(a) of the Rules, it is found:
(1) that the Domain Names are confusingly similar to the Complainant's trademarks;
(2) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(3) that the Domain Names have been registered and are being used in bad faith by the Respondent.
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 <belstafftienda.org> and <neubelstaffjacken.com> shall be transferred to the Complainant.
Michael A. R. Bernasconi
Dated: June 12, 2012