WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Levitas S.p.A. v. chen jiling
Case No. D2012-0808
1. The Parties
The Complainant is Levitas S.p.A. of Montegranaro, Italy, represented by Società Italiana Brevetti S.p.A., Italy.
The Respondent is chen jiling of Dongguan, China.
2. The Domain Name and Registrar
The disputed domain name <bikkembergsonsale.com> is registered with UK2 Group Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2012. On April 18, 2012, the Center transmitted by email to UK2 Group Ltd a request for registrar verification in connection with the disputed domain name. On April 18, 2012, UK2 Group Ltd transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 24, 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 amended Complaint on April 25, 2012.
The Center verified that the Complaint together with the amended 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 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2012.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on May 30, 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 the owner of the trademarks BIKKEMBERGS and DIRK BIKKEMBERGS. The Dirk Bikkembergs brand was launched in 1986 for shoes. The brand is now offered throughout the world and includes a diversified range of clothing, shoes and fashion accessories for women, men and children, offered through different collections, such as Bikkembergs, Dirk Bikkembergs Woman, Dirk Bikkembergs Man, Dirk Bikkembergs Sport Couture.
The trademarks DIRK BIKKEMBERGS and BIKKEMBERGS are registered in multiple jurisdictions through numerous registrations covering, inter alia, shoes, clothing, bags, belts and other fashion accessories, in International Classes 18 and 25. Some of these registrations are:
DIRK BIKKEMBERGS - Community Trademark Registration No. 629386;
DIRK BIKKEMBERGS - Community Trademark Registration No. 3474046;
BIKKEMBERGS and Design - Community Trademark Registration No. 5509823;
DIRK BIKKEMBERGS - Madrid International Trademark Registration No. 875256 designating the following countries, among others: Australia, United States of America, China, Russian Federation, Switzerland, Singapore, Republic of Korea and Vietnam;
DIRK BIKKEMBERGS SPORT COUTURE - Community Trademark Registration No. 5947965;
MBERGSBIKKEMBERGSBIKKE - Community Trademark Registration No. 6300008.
The Complainant owns numerous domain name registrations that incorporate the BIKKEMBERGS trademark such as <bikkembergs.eu>, <bikkembergs.it>, <bikkembergs.org> and <bikkembergs.net>.
The Respondent registered the disputed domain name <bikkembergsonsale.com> on March 1, 2012.
5. Parties’ Contentions
With respect to paragraph 4(a)(i) of the Policy, the Complainant alleges that:
It is the owner of the BIKKEMBERGS and DIRK BIKKEMBERGS trademark registrations listed above as well as other trademark registrations worldwide.
The “on sale” component of the disputed domain name is generic and descriptive since it refers to the sale of shoes and clothing.
The likelihood of confusion between the disputed domain name and the Complainant’s DIRK BIKKEMBERGS and BIKKEMBERGS trademarks and domain names cannot be mitigated by the presence of the “on sale” or the “.com” terms.
With respect to paragraph 4(a)(ii) of the Policy, the Complainant alleges that:
Because the disputed domain dame comprises the Complainant’s trademark BIKKEMBERGS and a generic or descriptive expression (i.e. “on sale”), it means that the disputed domain name was registered by the Respondent with the Complainant’s BIKKEMBERGS trademark and the Complainant’s business in mind.
The Complainant has neither authorized, nor given its consent to anyone to register and use the disputed domain name <bikkembergsonsale.com>.
The Complainant has neither authorized, nor given its consent to anyone to use its BIKKEMBERGS and DIRK BIKKEMBERGS trademarks and related distinctive signs at the disputed domain name website.
The Respondent is not known and cannot be known by the disputed domain name, which clearly refers to trademarks and distinctive signs in and to which the Complainant only has rights.
The Respondent does not make a legitimate noncommercial use of the disputed domain name, since the website is evidently aimed at disrupting, for commercial gain, the Complainant’s business.
With respect to paragraph 4(a)(iii) of the Policy, the Complainant alleges that:
The trademarks DIRK BIKKEMBERGS and BIKKEMBERGS are highly distinctive and renowned throughout the world because of their intensive use and promotion by the Complainant and its predecessor.
The disputed domain name resolves to a website that:
(i) reproduces, without any authorization or approval, the Complainant’s registered trademarks DIRK BIKKEMBERGS SPORT COUTURE and MBERGSBIKKEMBERGSBIKKE;
(ii) offers for sale shoes and garments bearing the Complainant’s trademarks DIRK BIKKEMBERGS, BIKKEMBERGS, MBERGSBIKKEMBERGSBIKKE, which are likely to be fake, applying significant reductions in the range of 50 - 70%;
(iii) reproduces images associated with the Complainant’s brands Dirk Bikkembergs and Bikkembergs that the Respondent has taken without any authorization or approval from sources and materials owned by the Complainant;
(iv) displays the following misleading notice at the bottom of the homepage: “Copyright © 2007-2012 bikkembergs On Sale Now. All Rights Reserved”.
The above demonstrates that the Respondent must therefore have been well aware of the Complainant’s rights in and to the trademarks DIRK BIKKEMBERGS and BIKKEMBERGS and must have consciously and deliberately adopted the Complainant’s trademark BIKKEMBERGS in the disputed domain name.
The Respondent’s use of the disputed domain name is in fact clearly aimed at attracting consumers for commercial gain, taking unfair advantage of the reputation and distinctiveness of the Complainant’s trademarks DIRK BIKKEMBERGS and BIKKEMBERGS.
The website at the disputed domain name is obviously targeted at distracting Internet users away from the official Dirk Bikkembergs website as well as away from the Complainant’s business under the trademarks DIRK BIKKEMBERGS and BIKKEMBERGS, so as to attain commercial gain from users where they are misled as to the source, affiliation, sponsorship or endorsement of this website and the products offered for sale thereon.
The Respondent’s conduct is therefore clear evidence of registration and use in bad faith of the disputed domain name.
The Respondent did not respond to the Complainant’s contentions and has thereby defaulted. The Complaint was sent to the email address and Written Notice was sent to the physical address for the Respondent according to WhoIs information that was confirmed by the Registrar. Thus, the Respondent appears to have been properly identified and notified of the Complaint.
Because of the Respondent’s default, the Panel may accept as true the factual allegations in the Complaint, and may draw appropriate inferences. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; See paragraph 5(e) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”).
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Given the Complainant’s long and extensive use of the BIKKEMBERGS and DIRK BIKKEMBERGS trademarks and its ownership of numerous worldwide registrations for the marks, the Panel finds that the Complainant has trademark rights in the BIKKEMBERGS mark.
The Panel also finds that the disputed domain name is nearly identical to Complainant’s BIKKEMBERGS mark. The disputed domain name incorporates the Complainant’s entire trademark and then adds the descriptive words “on sale” along with the “.com” generic top level domain (gTLD). Previous UDRP panelists have consistently held that the mere addition of descriptive wording to well-known marks, or confusingly similar derivatives thereof, does not avert a finding that the domain name is confusingly similar. Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (“the addition of the generic top-level domain (gTLD) name “.com” is … without legal significance since use of a gTLD is required of domain name registrants”). The descriptive or generic wording (in this case the addition of “on sale”) to a trademark owned by a complainant to create a domain name consisting of multiple words that implies a relationship between the words can and in this case does actually increase rather than decrease the likelihood of confusion. See, e.g., Fairmont Hotel Management L.P. v. Puts, WIPO Case No. D2001-0431 (“given that the added words describe the business services for which the Complainant’s trademark is registered and used by the Complainant, the additions merely compound the confusion created by the incorporation of the Complainant’s trademark”); and Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896 (“if the addition is a term associated with the business of the Complainant […] it can even add to the similarity between the domain name and the trademark in question”).
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
In order for the respondent to demonstrate rights or legitimate interests in the domain name, it may show:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a 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.
There is no evidence that the Respondent has ever been commonly known by the disputed domain name. Further, the Complainant has never licensed nor otherwise permitted the Respondent to use its BIKKEMBERGS trademark or to apply for any domain name incorporating the mark. There is no relationship between the Complainant and the Respondent.
Further, the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has used the disputed domain name, or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(i) of the Policy, the Panel finds that there is no evidence in this case that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
If the Respondent is a bona fide reseller of the Complainant’s products, it may under the appropriate circumstances prevail under paragraph 4(c)(i) of the Policy. The standards for evaluating such use are well known, namely:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site only to sell the trademarked goods (otherwise its activities could be viewed as a “bait and switch” operation);
(iii) the respondent’s site should accurately disclose the respondent’s relationship with the trademark owner; it should not falsely suggest that it is that of the trademark owner, or that it is the official site;
(iv) the respondent must not try to corner the market in domain names pertaining to the trademark. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
The first question is whether the Respondent is actually offering legitimate Bikkembergs products. The Complainant alleges that the Respondent “offers for sale shoes and garments bearing the Complainant’s trademarks DIRK BIKKEMBERGS, BIKKEMBERGS, MBERGSBIKKEMBERGSBIKKE, which are likely to be fake, applying significant reductions in the range of 50 - 70%.” The Panel does not find these allegations (with only conclusory statements) sufficient to prove that the offered goods are counterfeit. In this Panel’s view, it is not enough for the Complainant to allege that the goods are “likely to be fake.” The Complainant does not explain why it cannot state definitively that the goods are not authentic. What prevented the Complainant from ordering product, inspecting the delivered products, and submitting a declaration stating whether the goods are counterfeit? There is no explanation in the record and it would seem that inspecting the challenged goods ought to be considered a minimum requirement, absent an explanation of circumstances making this impractical. Moreover, the Panel is not willing to accept the Complainant’s assertion that offering deep discounts is prima facie evidence of counterfeiting. Consequently, the Panel does not find that the Complainant has proved that the products offered on the Respondent’s website are counterfeit.
However, the Panel nonetheless finds that the Respondent’s use does not satisfy the Oki Data requirement that “the respondent’s site should accurately disclose the respondent’s relationship with the trademark owner; it should not falsely suggest that it is that of the trademark owner, or that it is the official site.” Even assuming that the offered goods are legitimate, the Respondent has made no effort to inform Internet users that it has no relationship to the Complainant. On the contrary, the Respondent uses the Complainant’s registered trademark, BIKKEMBERGS SPORT COUTURE, prominently on the face of its website. The Respondent makes no effort to prevent visitors believing that they are at an official Bikkembergs website operated by the Complainant. Consequently, the Respondent fails the Oki Data test.
Finally, it is a complainant’s burden to prove that a respondent lacks rights or legitimate interests in a domain name. National Construction Rentals, Inc. v. Toilets.com, Inc., WIPO Case No. D2009-0147. Because it is difficult to prove a negative assertion, the threshold is low. A complainant need only make a prima facie showing on this element, at which point the burden shifts to the respondent to present evidence that it has some rights or legitimate interests in the domain name at issue. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 2.1. The ultimate burden of proof, however, remains with the complainant. Id. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141. The Panel finds that the above facts establish a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Moreover, the Respondent has not rebutted such a prima facie showing.
C. Registered and Used in Bad Faith
The Respondent was well aware of the Complainant’s long established rights in the BIKKEMBERGS and DIRK BIKKEMBERGS trademarks when it registered the disputed domain name on March 1, 2012. This supports a finding of bad faith registration. Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. HostMonster.com INC / Stephen Lee, WIPO Case No. D2010-1355. See also, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith); AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440. The Panel finds that the Respondent intended to exploit the fame of the Complainant’s mark to attract for commercial gain Internet users to its website.
The Complainant’s uncontested allegation of bad faith use is also well founded. Under the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.” See paragraph 4(b)(iv) of the Policy.
As additional evidence of bad faith use and registration, the Panel notes that the disputed domain name was registered with a privacy service and the underlying registrant information was inaccurate. The relevance of the use of a privacy service to the question of bad faith is one that has been addressed by a large number of UDRP decisions. Paragraph 3.9 of the WIPO Overview 2.0 summarizes the “consensus view” among UDRP panelists on this position as follows:
“Although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. For example, registrant use of a privacy service in combination with provision of incomplete contact information to such service or a continued concealment of the ‘true’ or ‘underlying’ registrant (possibly including that registrant’s actual date of acquisition) upon the institution of a UDRP proceeding may be evidence of bad faith.”
WSFS Financial Corporation v. Private Registrations Aktien Gesellschaft 2, WIPO Case No. D2012-0033. In the present case, the Respondent did not furnish complete and accurate contact information to the privacy service. This is further evidence of bad faith registration and use.
Therefore, the Panel finds that the disputed domain name has been registered and is being used 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 disputed domain name <bikkembergsonsale.com> be transferred to the Complainant.
Lawrence K. Nodine
Dated: June 13, 2012