World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Levitas S.p.A. v. Zhao Sha

Case No. D2013-0370

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 Zhao Sha of Jiangyou, Sichuan, China.

2. The Disputed Domain Name and Registrar

The disputed domain name <bikkembergsparis.com> (the “Disputed Domain Name”) is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2013. On February 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 26, 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 February 27, 2013, the Center transmitted an email to the Parties in both Chinese and English language regarding the language of proceedings. On February 27, 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 March 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2013.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on April 2, 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 facts pertinent to the decision in this case are:

(i) The Complainant is the owner of numerous registrations for the trademarks DIRK BIKKEMBERGS and BIKKEMBERGS, inter alia, Community Trademark Registration No. 3474046 for the word mark of DIRK BIKKEMBERGS, registered on April 27, 2005; Community Trademark Registration No. 629386 for the figurative mark of DIRK BIKKEMBERGS, registered on October 11,1999; International Registration No. 875256 for the word mark of DIRK BIKKEMBERGS, registered on January 6, 2006, designating Albania, Australia, Bahrain, Belarus, Bosnia and Herzegovina, Bulgaria, China, Croatia, Egypt, Kazakhstan, Republic of Korea, the former Yugoslav Republic of Macedonia, Montenegro, Morocco, Norway, Romania, Russian Federation, Serbia, Singapore, Switzerland, Syrian Arab Republic, Turkey, Ukraine, United States of America, Viet Nam; Community Trademark Registration No. 5509823 for the figurative mark of BIKKEMBERGS, registered on November 9, 2007; Community Trademark Registration No. 5947965 for the figurative mark of DIRK BIKKEMBERGS SPORT COUTURE, registered on March 7, 2008. These registrations cover, inter alia, shoes, clothing, bags, belts and other fashion accessories, in classes 18 and 25 of the Nice International Classification of goods and services for the registration of trademarks.

(ii) The trademarks DIRK BIKKEMBERGS and BIKKEMBERGS, on which the Complaint is based, have been used by the Complainant on its products of shoes and garments. The Complainant’s products are available online at the website “www.store.bikkembergs.com”.

(iii) The Disputed Domain Name was registered on August 17, 2012.

(iv) The Disputed Domain Name resolves to a website which offers for sales of products of shoes and garments that include reference to the Complainant’s trademarks DIRK BIKKEMBERGS and BIKKEMBERGS.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

(i) The Disputed Domain Name is identical or confusingly similar to the registered trademark of the Complainant.

The Disputed Domain Name contains the “bikkembergs” element in its entirety, which is identical to the Complainant’s BIKKEMBERGS trademark. The incorporation of a postfix “Paris” is a descriptive and geographical term that does not assist to distinguish the Disputed Domain Name from the Complainant’s trademarks. The top-level domain “.com” is irrelevant for the purpose of determining whether the Disputed Domain Name is identical or confusingly similar to the trademark in which the Complainant has rights.

(ii) The Respondent has no rights or legitimate interests in the Disputed Domain Name.

The Complainant has never authorized nor otherwise given consent to the Respondent to use the Complainant’s trademark BIKKEMBERGS or any other trademark, and yet the Respondent has been offering shoes and garments by reference to marks of DIRK BIKKEMBERGS and BIKKEMBERGS for sale via the website to which the Disputed Domain Name resolves.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

The Disputed Domain Name was registered and is being used for the purpose of attracting Internet users for commercial gain by offering products purporting to be BRIKKEMBERGS branded goods for sale with significant reduction in price in the range of 40% - 60%. By reproducing images associated with the Complainant’s trademarks and displaying a copyright notice regarding the Disputed Domain Name, the website to which the Disputed Domain Name directs creates confusion to the public as to the source, affiliation, sponsorship or endorsement of this website and the products offered for sale thereon, thereby showing that the Respondent registered and is using the Disputed Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Preliminary Procedural Issues

Language of Proceedings

Paragraph 11(a) of the Rules provides that “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 language of the Registration Agreement in relation to the Disputed Domain Name <bikkembergsparis.com> is Chinese. The Complainant requested, in its email dated February 27, 2013 to the Center, that the language of the proceeding be English. The Complainant raised the following arguments to support its request: First, the Respondent is capable of communicating in English, which the Complainant claims to be established in pre-complaint correspondence in English with the Respondent (as shown in Annex 2 to the Complaint provided by the Complainant). Also, the fact that a number of domain names registered under the name of the Respondent resolve to websites in English suggests that the Respondent is familiar with English. Finally, if the language of the proceeding is Chinese, the Complainant would be unfairly prejudiced due to the substantial added expense and inconvenience in having the Complaint and all annexes translated into Chinese as the Complainant is not familiar with Chinese language.

Paragraph 11(a) of the Rules allows the Panel to determine the language of proceedings having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of proceedings. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceedings should not be prejudicial to either of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:

“[I]n certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (See paragraph 4.3 of WIPO Overview 2.0).

The Panel notes the following facts:

(i) The Respondent’s website at the Disputed Domain Name <bikkembergsparis.com> appears to contain text in the English language, and appears to have been directed to Internet users worldwide rather than exclusively to Chinese speakers (as evidenced by the screen shot provided by the Complainant in Annex 14 to the Complaint). The Panel is satisfied that the Respondent is familiar with the Complainant’s requested language.

(ii) The Panel notes that all the Center’s communications to the Respondent were made in both Chinese and English and that the Respondent was given an opportunity to object to the Complainant’s request that English be the language of proceedings. The Respondent was also advised that, in the absence of any response from the Respondent, the Center would proceed on the basis that the Respondent has no objection to the Complainant’s request that English be the language of proceedings. The Panel finds that the Respondent has been given a fair chance to object, and has not done so.

(iii) The Panel finds that the Complainant, being an entity incorporated under the laws of Italy, is not in a position to conduct these proceedings in Chinese without additional expense and delay due to the need for translation of the Complaint and supporting Annexes.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of proceedings and the decision will be rendered in English.

7. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established that it is the proprietor of the DIRK BIKKEMBERGS and the BIKKEMBERGS trademarks, which have been registered as Community Trademarks since October 11, 1999 and November 9, 2007 respectively.

It is established that incorporation of a complainant’s distinctive trademark in its entirety into a disputed domain name is sufficient to establish that the disputed domain name is identical or confusingly similar to the complainant’s trademark and the addition of a descriptive geographical indicator to the disputed domain name does not sufficiently differentiate the disputed domain name from the trademark (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662; Time Warner Entertainment Company L.P. v. HarperStephens, WIPO Case No. D2000-1254; eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307, also see the generally adopted UDRP panel views under paragraph 1.9 of WIPO Overview 2.0). Further, it is well-established that in considering whether a disputed domain name is identical or confusingly similar to a registered trademark, the top-level domain (for example, “.com” and “.net”) should be disregarded. (GA Modefine SA v. Yonghui Huang, WIPO Case No. D2008-0355; Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409; Florida Department of Management Services v. Anthony Gorss, WIPO Case No. D2009-1194)

In the present case, the Disputed Domain Name incorporates the Complainant’s distinctive trademark BIKKEMBERGS in its entirety and adds only a non-distinctive descriptive geographical indicator “Paris” and a top-level domain “.com”. Accordingly, the Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations 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; or

(ii) where [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or

(iii) where [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of WIPO Overview 2.0, whereby:

“[…] 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 Complainant has established that it is the owner of the DIRK BIKKEMBERGS and BIKKEMBERGS trademarks, and that the Complainant has used its trademarks on the Internet through its website “www.store.bikkembergs.com” from which it sells and delivers shoes and garments. The Complainant states that the Respondent has never received any authorization or consent to use the Complainant’s trademarks in the Disputed Domain Name.

Furthermore, the Panel notes that the Registrar disclosed the registrant of the Disputed Domain Name to be “Zhao Sha” and there is no evidence in the record to suggest that the Respondent might be commonly known by a name similar to the Disputed Domain Name. There is no evidence that the Respondent has any trademark or service mark rights in the Disputed Domain Name.

Having considered the above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Thus, the burden of production shifts to the Respondent to provide allegations or evidences demonstrating rights or legitimate interests in the Disputed Domain Name. The Respondent did not respond to the Complaint or give any explanation as to why the Disputed Domain Name was chosen and registered.

Therefore, given the allegations and evidence provided by the Complainant, and in the absence of any reply from the Respondent, the Panel finds it is reasonable to conclude that the Respondent deliberately chose to include the Complainant’s BIKKEMBERGS trademark in the Disputed Domain Name for the purpose of achieving commercial advantage by misleadingly diverting consumers to the website at the Disputed Domain Name and that such use cannot be considered a legitimate noncommercial or fair use. Therefore, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides, in relevant part, that if the Panel finds the following circumstances, it shall be evidence of the registration and use of a domain name in bad faith:

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online 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 [the respondent’s] website or location.

In relation to bad faith at the time of registration, the Panel notes that the Complainant has established that its DIRK BIKKEMBERGS and BIKKEMBERGS trademarks were registered as Community Trademarks since October 11, 1999 and November 9, 2007, respectively, and had acquired an international reputation prior to the date the Disputed Domain Name was registered (August 17, 2012). The Respondent’s choice to incorporate the identical “bikkembergs” element as the primary distinctive element of the Disputed Domain Name strongly suggests that the Disputed Domain Name was registered in bad faith. The Respondent did not reply to the Complaint nor submit any evidence to the contrary, and the Panel therefore finds that the Disputed Domain Name was registered in bad faith.

Further, the evidence of the content available on the website to which the Disputed Domain Name resolves (as shown on the screen shot provided by the Complainant in Annex 14 to the Complaint), clearly shows that the website to which the Disputed Domain Name resolves offers for sale purported DIRK BIKKEMBERGS and BIKKEMBERGS shoes and garments, and utilizing the Complainant’s trademark on the website without any disclaimers. The Panel finds that with such use, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark. Thus, the Panel finds that the Respondent is using the Disputed Domain Name in bad faith.

Based on the above findings, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith as provided in paragraph 4(b)(iv) of the Policy, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy.

7. Decision

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 <bikkembergsparis.com> be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: April 15, 2013

 

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