WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dolce & Gabbana S.r.l. v. Qing Liao

Case No. D2013-1761

1. The Parties

Complainant is Dolce & Gabbana S.r.l. of Milan, Italy, represented by Studio Turini, Italy.

Respondent is Qing Liao of Kunming, Yunnan, China.

2. The Domain Name and Registrar

The disputed domain name <dolcegabbanafrance.net> is registered with Shanghai Yovole Networks, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2013. On October 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On October 21, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On October 21, 2013, Complainant confirmed its request that English be the language of the proceeding. 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 Respondent of the Complaint, and the proceedings commenced on October 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 21, 2013.

The Center appointed Yijun Tian as the sole panelist in this matter on November 29, 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

Complainant, Dolce & Gabbana S.r.l., is a company incorporated in Milan, Italy. Complainant is the exclusive licensee of numerous DOLCE & GABBANA trademarks (see Annex 4 to the Complaint), such as the international trademark registration number 555568, DOLCE & GABBANA (registered since 1990), and Community trademark registration number 004938023, DOLCE & GABBANA THE ONE (registered since 2007) (see Annexes 5-12 to the Complaint). DOLCE & GABBANA marks are famous in the world in the field of fashion.

Respondent is Qing Liao of Kunming, Yunnan, China. The disputed domain name <dolcegabbanafrance.net> was registered on March 2, 2013, long after the DOLCE & GABBANA marks became internationally well known.

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

- “Dolce” and ”Gabbana” are last names of two famous stylists Domenico Dolce and Stefano Gabbana, founders of the “Dolce & Gabbana” maison in the mid 1980’s.

- Complainant is the exclusive licensee of numerous DOLCE & GABBANA trademarks. (See Annexes 4-12 to the Complaint).

- “Dolce & Gabbana” is Complainant’s company name and a famous trademark in the world in the field of fashion. (See “www.dolcegabbana.com”). It is also an extremely well-known trademark internationally.

- The disputed domain name <dolcegabbanafrance.net> and Complainant’s trademarks are confusingly similar. The disputed domain name is composed by the same root of Complainant’s trademarks and website (“dolcegabbana”), with the added suffix “france”, which does not extenuate the likelihood of confusion with Complainant’s trademark.

- Rather, the additional generic term increases the likelihood of confusion because it suggests that Complainant’s products are being offered by Respondent in France (a country universally known for fashion), and so it relates directly to Complainant’s business and goods associated with the DOLCE & GABBANA trademarks.

- Complainant sells its products also by its official online stores: “store.dolcegabbana.com” and “www.dolcegabbana.com/store”.

- It is therefore likely that consumers would be confused by the use of distinctive portions of the trademark in the disputed domain name.

(b) Respondent has no rights or legitimate interests in respect of the disputed domain name.

- Respondent was not authorized, licensed or otherwise allowed by Complainant or by the owner of the DOLCE & GABBANA trademarks to use the name “dolcegabbana”, nor to apply for any domain name incorporating its trademark under any circumstances.

- Complainant is the exclusive licensee of the DOLCE & GABBANA trademarks.

- This establishes prima facie evidence that Respondent has neither rights nor legitimate interests in the disputed domain name.

- Respondent is not commonly known by the disputed domain name. There is also no evidence to suggest that the use of the disputed domain name is a legitimate noncommercial use.

- It is evident from the content of the website (resolved from the disputed domain name) that Respondent is using the DOLCE & GABBANA trademarks and associating them with goods (e.g. fashion apparel and accessories) offered for sale on the website. (See Annexes 13-14 to the Complaint).

(c) The disputed domain name was registered and is being used in bad faith.

- Previous WIPO decisions found that DOLCE & GABBANA is a worldwide famous trademark.

- It is hardly believable that Respondent was not aware of the existence of Complainant’s trademarks and reputations before registering the disputed domain name (March 2013), and this proves the mala-fides of Respondent.

- There is no evidence of any reasonable efforts made by Respondent in order to find out about third party rights in the disputed domain name.

- The registration of the disputed domain name prevents Complainant from reflecting its mark in a corresponding domain name.

- Furthermore, Respondent is not making a “bona fide offering of goods or services” with the disputed domain name. The disputed domain name was selected with clear intent for commercial gain, achieved by using it to sell counterfeit products of Complainant (see Annexes 13-14 to the Complaint).

- Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

- Respondent has been offering for unauthorized sales counterfeit copies of original goods branded with Complainant’s trademarks through the website to which the disputed domain name resolves (see Annex 13 to the Complaint).

- The products are counterfeit because the hand bag tags are not original, and there are not any anti-counterfeiting elements, such as holograms and plastic guarantee seals, as stated by the report regarding counterfeit articles (see Annex 14 to the Complaint).

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceedings should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceedings for the following reasons:

(a) Many previous UDRP decisions have found that, in certain situations, where Respondent can apparently understand the language of the Complaint, and Complainant would be unfairly disadvantaged by being forced to translate, the Center as a provider may accept the language of the Complaint, even if it is different from the language of the registration agreement;

(b) Respondent has been using the disputed domain name to sell counterfeit products of Complainant (Annexes 13 and 14 of the Complaint) and the texts published are in English or French language, not in Chinese. This demonstrates that Respondent has a working knowledge of the English and French languages;

(c) Furthermore, the disputed domain name features a non-Chinese language word added to a portion of Complainant’s DOLCE & GABBANA trademark. The disputed domain name is composed by the same root of Complainant’s trademarks and website (“dolcegabbana”), with the added suffix “france”;

(d) English is the most widely spoken international auxiliary language, widely-known all over the world, a language that makes the proceeding easy for both of the parties;

(e) Complainant is an Italian corporation, and its authorized representative in this administrative proceeding is an Italian lawyer, while Respondent would appear to be a Chinese person with, at least, a working knowledge of English and French;

(f) Many UDRP decisions have recognized that using the language of the registration agreement would lay an undue burden on Complainant. Neither English nor French is the native language for either party. Given that, if English or French will be the language of the administrative proceeding, both parties will have to use a foreign language, and this circumstance will ensure fairness.

Respondent did not make any submissions with respect to the language of the proceedings and did not object to the use of English as the language of the proceedings.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the 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 the 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; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceedings should not be prejudicial to either one of the parties in its 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:

“in 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”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from Italy, and Complainant will be spared the burden of working in Chinese as the language of the proceedings. The Panel has also taken into consideration the facts that the disputed domain name includes Latin characters “dolcegabbana” and English word “france” (see Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds adequate grounds in the present proceeding to accept Complainant’s request and to proceed in English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <dolcegabbanafrance.net> is registered in Latin characters and English word, rather than Chinese script; (b) the website at the disputed domain name is a mainly English or French-based website. In addition to “DOLCE & GABBANA” logo, the webpages do contain some English words, such as “promotions”, “sale”, “leather handbag” and so forth in the website directory structure; (c) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceedings; (d) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant is the exclusive licensee of the registered DOLCE & GABBANA trademark. The DOLCE & GABBANA trademarks have been registered worldwide, including the international trademark registration number 555568, DOLCE & GABBANA (registered since 1990), and Community trademark registration number 004938023, DOLCE & GABBANA THE ONE (registered since 2007) (see Annexes 5-12 to the Complaint). “Dolce & Gabbana” is Complainant’s company name and a famous trademark in the field of fashion internationally. (See previous UDRP Decisions, e.g. Dolce & Gabbana S.r.l. v. Domains by Proxy, Inc/Renee Carr, WIPO Case No. D2011-0597; and Dolce Gabbana s.p.a. v. Victory SA, WIPO Case No. D2001-1174.)

The disputed domain name <dolcegabbanafrance.net> comprises the DOLCE & GABBANA trademark in its entirety (except “&”). The disputed domain name only differs from Complainant’s trademark by the addition of the English word “france” to the trademark DOLCE & GABBANA. This does not seem to eliminate the similarity between Complainant’s registered trademark and the disputed domain name.

Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent may not avoid a likelihood of confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it. (see The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).

The mere addition of the descriptive term “france” suffix to Complainant’s trademark fails to distinguish to the Panel the disputed domain name from Complainant’s trademark. By contrast, it may increase the likelihood of confusion. France is a country universally known for fashion. Internet users who visit <dolcegabbanafrance.net> are likely to be confused and may falsely believe that <dolcegabbanafrance.net> is an online shop operated by Complainant for selling DOLCE & GABBANA branded products or services in France. Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the DOLCE & GABBANA trademark.

The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the fact that Respondent has commonly been known by the disputed domain name; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant is the exclusive licensee of famous registered trademark DOLCE & GABBANA in the fashion industry around the world (with international registrations since 1990; Annexes 5-12 to the Complaint), which long precedes Respondent’s registration of the disputed domain name (March 2013).

Moreover, Respondent is not an authorized dealer of DOLCE & GABBANA branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “dolcegabbana” in its business operation or the use of the DOLCE & GABBANA trademark and design on its website (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the DOLCE & GABBANA trademark or to apply for or use any domain name incorporating the DOLCE & GABBANA trademark;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name <dolcegabbanafrance.net> on March 2, 2013. The disputed domain name is confusingly similar to Complainant’s DOLCE & GABBANA trademark.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported DOLCE & GABBANA products at <dolcegabbanafrance.net> (Annexes 13-14 to the Complaint), when in fact the Respondent is not an authorized dealer of DOLCE & GABBANA branded products or services.

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name in light of Complainant’s prima facie case. The Panel therefore holds that Complaint fulfills the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the DOLCE & GABBANA trademark with regard to its products. DOLCE & GABBANA trademarks are registered internationally (since 1990). Moreover, the website to which the disputed domain name resolve advertises for sale various purported DOLCE & GABBANA products. Respondent would not have advertised products purporting to be DOLCE & GABBANA products on the website to which the disputed domain name resolve if it was unaware of DOLCE & GABBANA’s reputation. In other words, it is not conceivable that Respondent would not have had actual notice of DOLCE & GABBANA trademark owner’s right at the time of the registration of the disputed domain name. The Panel therefore finds that the DOLCE & GABBANA mark not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s DOLCE & GABBANA branded products.

b) Used in Bad Faith

Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” offering purportedly Complainant’s DOLCE & GABBANA branded products and services without authorization. Complainant claimed that the disputed domain name was selected by Respondent “with clear intent for commercial gain, achieved by using it to sell counterfeit products of Complainant”. Complainant further claimed that “Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location”.

To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the DOLCE & GABBANA mark (as well as the content on Respondent’s homepage - mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves (see Annexes 13 to the Complaint). In other words, Respondent has, through the use of a confusingly similar domain name and webpage contents, created a likelihood of confusion with the DOLCE & GABBANA mark. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential partners and end users are led to believe that the website at <dolcegabbanafrance.net> is either Complainant’s site or the site of official authorized partners of Complainant, which it is not. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain name was used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfills the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 <dolcegabbanafrance.net> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: December 18, 2013