WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Helmut Lang New York, LLC v. Kailong Wen
Case No. D2013-0147
1. The Parties
The Complainant is Helmut Lang New York, LLC of New York, New York, United States of America, represented by Katten Muchin Rosenman LLP, United States of America.
The Respondent is Kailong Wen of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <helmutlangshop.com> (the “Domain Name”) is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2013. On January 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 24, 2013, 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 January 25, 2013, the Center transmitted an email to the Parties in both Chinese and English language regarding the language of proceedings. On January 25, 2013, the Complainant requested 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 January 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2013.
The Center appointed Karen Fong as the sole panelist in this matter on March 5, 2013. 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 a world famous designer, manufacturer and retailer of a wide range of apparel and accessories products, sold under the HELMUT LANG name and mark. The Complainant has used the HELMUT LANG trade mark continuously since its adoption in 1988. The Complainant sells apparel and accessories products bearing the HELMUT LANG name and mark throughout the world through diverse channels of distribution, and has established a significant on-line presence for its products on its “www.helmutlang.com” website.
The Complainant owns an extensive portfolio of trade marks for the mark HELMUT LANG. These include trade mark registrations in the United States of America, European Community and China. The earliest trade mark registration dates back to 1987. As a result of Complainant’s long and extensive use and promotion of the HELMUT LANG marks in interstate and international commerce, the HELMUT LANG mark has acquired goodwill and reputation in the name in connection with the Complainant’s business.
The Respondent registered the Domain Name on September 21, 2012. The Domain Name was connected to a website (the “Website”) which offered for sale unauthorized products bearing the HELMUT LANG mark. The Website had on it photographs which are identical to those appearing on the Complainant’s official website. The goods appear to be offered for sale at a discounted price. At the time of the writing of the decision, the Website does not appear to be active. The Respondent did not respond to the cease and desist letter sent by the Complainant’s legal representatives in relation to the registration and use of the Domain Name. The Respondent has had adverse UDRP decisions against him in connection with the registering of domain names of three well known fashion brands - J. Choo Limited. v. Kailong Wen, WIPO Case No. D2012-1770, in relation to <jimmychoostock.com>; Alice + Olivia, LLC. v. Kailong Wen, WIPO Case No. D2012-1022, in relation to <aliceandoliviashop.com>; and Orlebar Brown Limited v. Kailong Wen, WIPO Case No. D2012-2435 in relation to <oleabarbrownshop.com>.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its HELMUT LANG trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
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 Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is 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 Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Name is Chinese.
The Complainant submits in section IV of the Complaint and in an email to the Center on January 25, 2013, that the language of the proceeding should be English. The Complainant contends amongst other things that:
1) The text and content on the Website is in English and no other language;
2) All the pricing information on the Website is in English and the currency used, US dollars, is that of a currency used in an English speaking country;
3) The Domain Name is made up of English words;
4) It would be financially onerous for the Complainant to bear the burden of translating the Complaint into Chinese;
5) The Respondent has been party to other prior UDRP proceedings (J. Choo Limited. v. Kailong Wen, WIPO Case No. D2012-1770, in relation to, <jimmychoostock.com> and Alice + Olivia, LLC. v. Kailong Wen, WIPO Case No. D2012-1022, in relation to <aliceandoliviashop.com>) in which English has been the language of the proceedings.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. Further, the Respondent did not respond to the Complaint or the language of the proceeding by the specified due dates. Having considered all the circumstances of this case, the Panel is satisfied that the Respondent is familiar with the English language and determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights to the mark HELMUT LANG through use and registration that predate the Domain Name.
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. The Domain Name integrates the Complainant’s registered trade mark HELMUT LANG with the descriptive word “shop” and the generic top level domain (gTLD) “.com”. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD suffix. Further, the addition of the descriptive term “shop” does not negate the confusing similarity encouraged by the Respondent’s complete integration of the HELMUT LANG trade mark in the Domain Name.
The Panel finds that the Domain Name is confusingly similar to the HELMUT LANG trade mark of the Complainant, and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled.
D. Rights or Legitimate Interests
The Complainant contends that the Respondent has not been licensed or authorized by the Complainant to use the HELMUT LANG mark. Further the Respondent is not commonly known by the Domain Name nor owns any trade marks for the HELMUT LANG mark. The Respondent has not shown that it is an authorized re-seller of the Complainant’s products.
The consensus view under paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) says this:
“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. The respondent must also not try to ‘corner the market’ in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”
In this case, the Respondent is not an authorised reseller. There is also nothing on the Website that adequately explains the relationship between the Complainant and the Respondent. It seems to this Panel that the content of the Website is intended to mislead Internet users that there is a connection between the Complainant and the Respondent. Therefore, the Panel finds the Oki Data principles for rights or legitimate interests are not satisfied in this case.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and 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 Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
E. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the domain name has been both registered and is being used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Complainant’s well-known trade mark when it registered the Domain Name. The Complainant has provided sufficient evidence that the Domain Name registration post dates the HELMUT LANG trade mark registrations.
The very incorporation of the Complainant’s trade mark in the Domain Name and the display of the Complainant’s trade marks, photographs of its products on the Website confirm the Respondent’s awareness of the trade marks. Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The Website was set up to deliberately mislead Internet users that it is connected to, authorised by or affiliated to the Complainant. The Website contains the Complainant’s HELMUT LANG trade marks and images from its official website. Further, the Respondent failed to respond to the cease and desist letter from the Complainant’s representatives. Such behavior is inconsistent with what one would expect from a good faith registrant accused of cybersquatting. (See Bayerische Motoren Werke AG v. This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s website is and the products sold on it are those of or authorised or endorsed by the Complainant.
Further the Respondent has three adverse UDRP decisions against him in connection with the registering of domain names of well known fashion brands, JIMMY CHOO, ALICE + OLIVIA and OLEBAR BROWN. The Consensus View in the WIPO Overview 2.0 relating to what constitutes a pattern of conduct of preventing a trademark holder from reflecting the mark in a corresponding domain name is as follow:
“A pattern of conduct can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to trademarks. However the registration of two domain names in the same case is not generally sufficient to show a pattern, nor is a single prior example of apparent bad faith domain name registration. Although panels will generally look to the specific circumstances, a pattern normally requires more than one relevant example.”
The Panel concludes that the registration of the four domain names is sufficient to constitute a pattern of conduct preventing the Complainant from reflecting the mark in a corresponding domain name.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraphs 4(b)(ii) and 4(b)(iv) of 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 <helmutlangshop.com> be transferred to the Complainant.
Date: March 18, 2013