WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skorpio Limited v. Wang Xin Zhong

Case No. D2018-0439

1. The Parties

Complainant is Skorpio Limited of Lugano, Switzerland, represented by Keltie LLP, United Kingdom of Great Britain and Northern Ireland.

Respondent is Wang Xin Zhong of Dongguan, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <rickowens.xyz> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2018. On February 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2018, 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 March 2, 2018, the Center sent an email to the Parties in English and Chinese regarding the language of the proceeding. Complainant requested that English be the language of the proceeding on the same day. 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 and 4, the Center formally notified Respondent in English and Chinese of the Complaint, and the proceedings commenced on March 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 3, 2018.

The Center appointed Yijun Tian as the sole panelist in this matter on April 13, 2018. 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

A. Complainant

Complainant, Skorpio Limited, is a company incorporated in Lugano, Switzerland. Complainant manages the intellectual property rights of American fashion designer Rick Owens. Rick Owens began his fashion designer career in Los Angeles, United States of America (“United States”) in 1994 and moved his production to Italy, starting worldwide distribution, in 2001. In 2002, Rick Owens won the Council of Fashion Designers of America Perry Ellis Emerging Talent Award and, in 2007, he was awarded a Cooper-Hewitt National Design Award, as well as the “Rule Breakers” award, by the Fashion Group International. His clothing designs have been worn by many celebrities, including Courtney Love, Madonna, and Kobe Bryant. Rick Owens has opened up stores in Paris, New York, London, Seoul, Tokyo, and Hong Kong.

Complainant has registered a number of trademarks for RICK OWENS, including trademark registrations in China (since August 7, 2014, the Chinese trademark registration number 6162781), trademark registrations in the United States (since June 29, 2004, the trademark registration number 2857230), and European Union (“EU”) trademark registration (since May 21, 2003, the trademark registration number 002493294) (Annex 2 to the Complaint).

B. Respondent

Respondent is Wang Xin Zhong of Dongguan, Guangdong, China. Respondent registered the disputed domain name <rickowens.xyz> on November 25, 2017, which is long after Complainant’s registration of the RICK OWENS trademarks in the United States (since 2004), and in China (since 2014). At the time of this decision, the disputed domain name directed to a website which is currently inactive.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar to the RICK OWENS marks.

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

Complainant contends that the disputed domain name was registered and is being used in bad faith.

Complainant requests that the disputed domain name <rickowens.xyz> be transferred to it.

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 proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

a) English is most widely used in international relations and is one of the working languages of the Center.

b) Respondent has registered a substantial number of domain names in English including the disputed domain name, such that Respondent must have a working knowledge of English.

d) Costs incurred in translating the Complaint into Chinese would place a disproportionate burden on Complainant.

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

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding 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 proceeding. 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 proceeding should not be prejudicial to either one 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, Third Edition (“WIPO Overview 3.0”) further states:

“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.

Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.”

(WIPO Overview 3.0, section 4.5.1; 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 the Switzerland, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain name includes Latin characters and English name (“Rick Owens”) and is registered in the generic Top-Level Domain (“gTLD”) space comprising of the Latin characters “xyz” (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 that persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <rickowens.xyz> includes Latin characters “xyz” and English name “Rick Owens” rather than Chinese script; (b) Respondent has registered many domain names, which contain English words, such as “star”, “fly”, “lab” and “for all mankind” (Annex 5 to the Complaint); (c) the Center has notified Respondent of the proceeding in both Chinese and English; (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. Substantial Issues

Paragraph 4(a) of the Policy requires that Complainant 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;

(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 regards to the content of the relevant provisions of the Policy (paragraphs 4(a) - (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the RICK OWENS marks acquired through registration. The RICK OWENS marks have been registered worldwide including in United States and China (see Annex 2 to the Complaint), and Complainant has a widespread reputation in the fashion industry around the world.

The disputed domain name <rickowens.xyz> comprises the RICK OWENS mark in its entirety. The disputed domain name only differs from Complainant’s trademarks by the addition of the gTLD suffix “.xyz”. This does not eliminate the identity between Complainant’s registered trademarks and the disputed domain name. In relation to the gTLD suffix, WIPO Overview 3.0 further states:

“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” (WIPO Overview 3.0, section 1.11)

Thus, the Panel finds that disregarding the gTLD suffix “.xyz”, the disputed domain name is identical to the RICK OWENS marks.

The Panel therefore holds that the Complaint fulfils 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) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent has been commonly known by the disputed domain names, even if Respondent has acquired no trademark or service mark rights; or

(iii) 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 Complainant’s trademarks.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a 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 3.0, section 2.1 and cases cited therein).

According to the Complaint, Complainant manages the intellectual property rights of American fashion designer Rick Owens. Rick Owens began his fashion designer career in United States in 1994 and moved his production to Italy, starting worldwide distribution, in 2001. In 2002, Rick Owens won the Council of Fashion Designers of America Perry Ellis Emerging Talent Award and, in 2007, he was awarded a Cooper-Hewitt National Design Award, as well as the “Rule Breakers” award, by the Fashion Group International. His clothing designs have been worn by many celebrities, including Courtney Love, Madonna, and Kobe Bryant. Owens has opened up stores in Paris, New York, London, Seoul, Tokyo, and Hong Kong. Complainant has rights in the RICK OWENS marks since 2014 in China, 2003 in EU, and 2004 in the United States, which long precede Respondent’s registration of the disputed domain name (2017).

Moreover, Respondent is not an authorized dealer of Rick Owens-branded products or services. The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifts the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; 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 words “Rick Owens” in the disputed domain name and in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the RICK OWENS marks or to apply for or use any domain name incorporating the RICK OWENS mark, and Respondent has, through the use of an identical domain name created a likelihood of confusion with the RICK OWENS marks.

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 in 2017, long after the RICK OWENS marks became internationally known. The disputed domain name is identical or confusingly similar to Complainant’s RICK OWENS marks.

c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The website resolved by the disputed domain name is currently inactive.

The Panel finds that Respondent has failed to produce any evidence to rebut Complainant’s prima facie showing on Respondent lack of rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils 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 website 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 website or location or of a product or service on the website or location.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the RICK OWENS mark with regard to its products. Complainant has registered its RICK OWENS mark internationally, including registration in EU (since 2003,) the United States (since 2004) and China (since 2014). It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name (in 2017). The Panel therefore finds that the RICK OWENS mark is 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 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.

b) Used in Bad Faith

The disputed domain name <rickowens.xyz> is currently inactive. In terms of inactive domain name, the WIPO Overview 3.0 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.” (Section 3.3, WIPO Overview 3.0).

The WIPO Overview 3.0 further states:

“While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

As discussed above, Complainant’s RICK OWENS marks, arguably, are widely known. Taking into account all the circumstances of this case, the Panel concludes that the current inactive use of the disputed domain name by Respondent is in bad faith also.

In summary, Respondent, by choosing to register and use a domain name, which is confusingly similar to Complainant’s well-known trademarks, intended to disrupt Complainant’s business. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent are indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils 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 <rickowens.xyz> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: May 4, 2018