WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dolce Vita Footwear, Inc. v. Guanjing / Xiamen eNameNetwork Co., Ltd.

Case No. D2015-0988

1. The Parties

The Complainant is Dolce Vita Footwear, Inc. of New York, New York, United States of America, represented by Tucker & Latifi, LLP, United States of America.

The Respondent is Guanjing of Tianjin, China; Xiamen eNameNetwork Co., Ltd. of Xiamen, Fujian, China.

2. The Domain Name and Registrar

The disputed domain name <dolcevitaoutlet.net> is registered with eName Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2015. On June 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 2015, the Registrar 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 June 17, 2015 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 June 18, 2015.

On June 17, 2015, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. On June 17, 2015, the Complainant submitted its request that English be the language of the proceeding by email to the Center. The Respondent did not submit any comments regarding the language of the proceeding within the specified due date.

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 in English and Chinese, and the proceeding commenced on June 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2015.

The Center appointed Francine Tan as the sole panelist in this matter on July 27, 2015. 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 was founded in 2001 and is a leading retailer of footwear and footwear accessories which it designs and manufactures under various trade marks including DOLCE VITA. The Complainant’s primary website selling its products is “www.dolcevita.com”. Its net sales for the year 2013 were approximately USD111 million.

The Complainant has spent millions of dollars in advertisements and the promotion of the DOLCE VITA trade mark. It owns the DOLCE VITA trade mark in numerous countries including the United States of America (U.S.) and China. Its trademark rights in DOLCE VITA date back over 10 years.

The disputed domain name was registered on July 13, 2014.

5. Parties’ Contentions

A. Complainant

1. The Complainant contends that the disputed domain name is confusingly similar to the trade mark DOLCE VITA in which it has rights.

2. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name as:

(a) the Complainant has not authorized or licensed the Respondent to use the DOLCE VITA trade mark;

(b) the Respondent is not commonly known by the disputed domain name and there can be no legitimate business reason for the Respondent to own and/or use the disputed domain name aside from wanting to wrongfully lead the public to believe that the Respondent’s website is associated with, authorized by, or sponsored by the Complainant; and

(c) there can be no legitimate business reason for the Respondent’s use of the disputed domain name incorporating the DOLCE VITA trade mark.

3. The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent used the disputed domain name in connection with a website selling DOLCE VITA-branded (possibly counterfeit) shoes without the Complainant’s consent. The Respondent is thereby attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s DOLCE VITA trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceeding

Paragraph 11(a) of the Rules states 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 Complaint was filed in English but the language of the registration agreement is Chinese. The Complainant requested that the language of the proceeding be English on the ground that it can only understand proceedings in English, it being a U.S. company incorporated in the State of Washington. On the other hand, the Respondent created and has operated its website, “www.dolcevitaoutlet.net”, in English. This gives rise to a presumption that the Respondent understands English well enough.

Having had regard to the circumstances of this case including the fact that the Respondent has not objected to the Complainant’s request, in the exercise of its discretion pursuant to paragraph 11 of the Rules, the Panel holds that English shall be the language of the administrative proceeding. The Panel agrees that the Respondent must be familiar with English, seeing that its website is entirely in English and the disputed domain name comprises English and Italian terms. “Dolce vita” is also a commonly-used foreign term adopted in English parlance to refer to a life of pleasure and luxury.

The Panel finds it appropriate for English to be the language of the proceeding.

B. Identical or Confusingly Similar

The Complainant has provided evidence of its rights in the trade mark DOLCE VITA. The next question to be addressed in connection with paragraph 4(a)(i) of the Policy is whether the disputed domain name is confusingly similar to the said trade mark.

The Panel is of the view that the disputed domain name is indeed confusingly similar to the Complainant’s DOLCE VITA trade mark. The said trade mark has been incorporated in its entirety in the disputed domain name. In view of the fact that it has been well established by earlier panel decisions under the Policy that:

(i) when assessing whether a domain name is confusingly similar, the generic Top-Level Domain (gTLD) domain suffix (in this case, “.net”) may typically be disregarded, and

(ii) the addition of a generic or descriptive term(s) in the disputed domain name does not serve to remove the confusing similarity with a complainant’s trade mark where the trade mark has been incorporated therein,

the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.

The first criterion of paragraph 4(a) of the Policy has therefore been established.

C. Rights or Legitimate Interests

In the absence of a Response from the Respondent nor any evidence to show it has rights or legitimate interests in the disputed domain name, the Panel is only able to make a determination based on the case that the Complainant has presented. There is no evidence before the Panel that the Respondent has rights in the trade mark DOLCE VITA or that it has legitimate interests in the disputed domain name.

Paragraph 4(c) of the UDRP provides examples of ways in which the Respondent could have demonstrated its rights or legitimate interests in the disputed domain name:

“(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.”

The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name. The Respondent does not appear to be using the disputed domain name in connection with a bona fide offering goods or service, among other reasons because the website contains no disclaimer as to relationship between the Parties.. The Respondent’s offering of DOLCE VITA-branded goods on its website without the Complainant’s authorization or consent does not constitute a legitimate noncommercial or fair use of the disputed domain name. There is no relationship whatsoever between the Respondent and the Complainant, and neither has the latter authorized the use of the trade mark DOLCE VITA or the registration of the disputed domain name.

The second criterion of paragraph 4(a) of the Policy has therefore been established.

D. Registered and Used in Bad Faith

The Panel also finds that the registration and use of the disputed domain name have been in bad faith. It is unlikely that the Respondent did not have any knowledge of the Complainant and of its trade mark DOLCE VITA when it registered the disputed domain name. The evidence of how the Respondent’s website appears suggests that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant, and/or by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 its web site or location or of a product or service on its web site or location (paragraph 4(b)(iii) and (iv) of the Policy).

The fact that the Respondent’s physical address in the WhoIs database for the disputed domain name proved to be fictitious/non-existent is also an indication of bad faith registration.

The Panel therefore finds that the Respondent has registered and used the disputed domain name in bad faith, and that the third criterion under paragraph 4(a) of the Policy has been satisfied.

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 <dolcevitaoutlet.net> be transferred to the Complainant.

Francine Tan
Sole Panelist
Date: July 28, 2015