WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Levitas S.p.A. v. Yang Gongfei

Case No. D2013-1026

1. The Parties

The Complainant is Levitas S.p.A. of Montegranaro, Fermo, Italy, represented by Società Italiana Brevetti S.p.A., Italy.

The Respondent is Yang Gongfei of Gongyi, Henan, China.

2. The Domain Name and Registrar

The disputed domain name <bikkembergsenmadrid.com> (the “Disputed Domain Name”) is registered with ChinaNet Technology (SuZhou) CO., LTD (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2013. On June 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 13, 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 June 14, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On June 14, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding 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 June 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2013.

The Center appointed Kar Liang Soh as the sole panelist in this matter on July 19, 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 the owner and assignee of a portfolio of trademarks from International Heroes B.V. The portfolio comprises the trademarks DIRK BIKKEMBERGS and BIKKEMBERGS (the Complainant’s Marks). The Complainant’s Marks were derived from the name of the fashion designer Dirk Bikkembergs and were first used in relation to shoes in 1986. The Complainant’s Marks are now used in relation to clothing, shoes and fashion accessories. Products under the Complainant’s Marks are sold through official stores, distributors, dealers as well as online via the website at “store.bikkembergs.com”.

The Complainant’s Marks are registered in various jurisdictions. Some of these registrations are:

The Complainant is the holder of various domain name registrations (e.g., <bikkembergs.eu>, <bikkembergssport.eu>, <dirkbikkembergs.it>, <bikkenbergs.cn> and <bikkembergssport.cn>). The Complainant has previously filed a number of successful complaints under the UDRP (e.g., Levitas S.p.A. v. Zhao Sha, WIPO Case No. D2013-0370; Levitas S.p.A v. jin zhe, WIPO Case No. D2012-0669) in relation to domain names which incorporate the trademark BIKKEMBERGS.

The Disputed Domain Name was registered on March 27, 2013. On or before the date of the Complaint, the Disputed Domain Name resolved to a website which prominently displays the trademark BIKKEMBERGS and goods (e.g., shoes) associated with the trademark BIKKEMBERGS.

The address of the Respondent as reflected in the WhoIs record of the Disputed Domain Name refers to a village in a province without an street number or name. A reverse WhoIs search on the Respondent’s name reveals a long list of domain name registrations, including <abercrombie-fitchoslo.com>, <newmanoloblahnikshoes.com>, <nikeairshoesshop.com> and <wilsontennisstore.com>. On or before the date of the Complaint, these domain names resolved to websites which incorporate the trademarks incorporated in the domain names (e.g., NIKE, WILSON). The email address associated with these domain name registrations on the list is the same address contained in the WhoIs record of the Disputed Domain Name.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

a) The Disputed Domain Name is confusingly similar to the Complainant’s Marks. The component “enmadrid” means “in Madrid” in Spanish. It is descriptive and does not counterbalance the reproduction of the trademark BIKKEMBERGS in the Disputed Domain Name;

b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is neither authorized nor given consent to register and use the Disputed Domain Name. The Complainant has neither authorized nor given consent to anyone to use the Complainant’s Marks on the website resolved from the Disputed Domain Name. The Respondent is not known by the Disputed Domain Name and is not making legitimate commercial use of the Disputed Domain Name; and

c) The Disputed Domain Name was registered and is being used in bad faith. The Complainant’s Marks are renowned. The website resolved from the Disputed Domain Name reproduces the Complainant’s Marks without any authorization or approval and offers for sale shoes and garments bearing the Complainant’s Marks at significantly reduced prices. The Respondent is well-aware of the Complainant’s Marks and is deliberately adopting the Complainant’s Marks to attract consumers for commercial gain, misleading them as to the source, affiliation, sponsorship or endorsement of the website and the products offered for sale thereon. The Respondent has registered numerous domain names, some of which incorporate well-known third parties’ trademarks, which resolve to websites displaying and offering for sale goods bearing third parties’ trademarks.

B. Respondent

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

6. Discussion and Findings

6.1 Language of Proceeding

The registration agreement of the Disputed Domain Name is in the Chinese language. The default language of the proceeding is accordingly Chinese. The Complainant has requested for English to be the language of the proceeding. The Panel hereby grants the Complainant’s request, having regard to the circumstances, in particular:

a) The Disputed Domain Name resolved to a website which is entirely in English. Some of the other domain names disclosed by the reverse WhoIs search on the Respondent’s name also resolved to websites which are entirely in English. This indicates that the Respondent is conversant or capable of dealing with the English language;

b) The Complainant is not familiar with Chinese and is likely to incur additional expenses and inconvenience to translate the Complaint into Chinese;

c) The Respondent has not filed a Response;

d) The Respondent did not oppose the Complainant’s language request; and

e) The Complaint has already been submitted in English and requiring Chinese to be adopted instead would lead to delay in the proceeding.

6.2 Discussion

The Complainant must establish the following elements of paragraph 4(a) of the Policy to succeed in this proceeding:

(i) the Disputed 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 Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has trademark rights in the trademarks DIRK BIKKEMBERGS and BIKKEMBERGS by virtue of the trademark registrations. The Disputed Domain Name incorporates the trademark BIKKEMBERGS in its entirety. The suffix “enmadrid” in the Disputed Domain Name are descriptive Spanish words which mean “in Madrid”. The Panel agrees with the Complainant that such descriptive words are unable to distinguish the Disputed Domain Name from the trademark BIKKEMBERGS. Hence, the Panel holds that the first limb of paragraph 4(a) of the Policy is established on the facts.

B. Rights or Legitimate Interests

The Complainant has confirmed that the Respondent has not been authorized or permitted to use the Complainant’s Marks. There is no evidence to suggest that the Respondent is known by the Disputed Domain Name. There is also no evidence that the Respondent is making any legitimate noncommercial use of the Disputed Domain Name. On the contrary, the website resolved from the Disputed Domain Name indicates that the Respondent is using the Disputed Domain Name for commercial gain by association with the Complainant’s Marks. In accordance with the practice established by previous panels, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. In the absence of a Response having been filed, the prima facie case remains. Accordingly, the second limb of paragraph 4(a) of the Policy is also established on the facts.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy identifies the following circumstance as bad faith registration and use:

“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.”

The content of the website resolved from the Disputed Domain Name demonstrates unequivocally an intention for commercial gain. The prominent use of the trademark BIKKEMBERGS on the website and association to the products offered for sale thereon without disclosing the Respondent’s (lack of a) relationship with the Complainant indicates that the Respondent is intentionally creating a likelihood of confusion with the trademark BIKKEMBERGS as to the source, sponsorship, affiliation, or endorsement of the website and the goods offered thereon. The Panel finds that the factual circumstances fall squarely within that outlined in paragraph 4(b)(iv) of the Policy.

The Panel has also noted the evidence of the reverse WhoIs report showing the numerous domain names registered by an individual having an identical name and email address to the Respondent. The Panel accepts that a good number of these domain names incorporate well-known trademarks. Of course, it may be argued that the Respondent is not the same registrant as that of these other domain names or that the Respondent is in fact authorized to use all these well-known trademarks and register them as part of domain names. However, there is no such evidence or arguments before the Panel. On the other hand, very serious allegations have been allayed against the Respondent which the Respondent chooses to either ignore or refuse to answer. The Panel therefore makes an adverse inference that the Respondent is unable to deny or refute these allegations, and finds that this is additional evidence of bad faith.

Therefore, the Panel holds that bad faith registration and use has been established in the circumstances.

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 <bikkembergsenmadrid.com> be transferred to the Complainant.

Kar Liang Soh
Sole Panelist
Date: August 15, 2013