WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktieselskabet af 21. November 2001 A/S v. Xing Zhang
Case No. DCC2011-0004
1. The Parties
The Complainant is Aktieselskabet af 21. November 2001 A/S of Brande, Denmark, represented by Bech-Bruun Law Firm, Denmark.
The Respondent is Xing Zhang of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <veromoda.cc> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2011. On July 18, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 19, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2011. The Center notified the Respondent’s Default on August 11, 2011. On the same day, the Center received an email communication from the Respondent.
The Center appointed Francine Tan as the sole panelist in this matter on August 17, 2011. 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 part of the Bestseller Group (“the Group”), a global manufacturer and retailer of clothing and accessories which are sold under various trade marks including VERO MODA. The Group is a family-owned group of companies founded in Denmark in 1975. The Complainant states that it currently has more than 9,600 people in its employ and is represented in more than 2,500 stores and in 46 countries worldwide. In the years 2009 and 2010, the Group opened 474 new stores.
The Complainant claims that its VERO MODA mark is well-known, having been registered in numerous jurisdictions worldwide including Denmark (applied for in 1988), the European Union (applied for in 2000), United States of America (applied for in 2008) and China (applied for in 1996). The Complainant has a domain name registration for <veromoda.com> which is used in relation to its online shop. The Complainant submitted evidence of 20 million hits in Internet searches using the Google search engine for “Vero Moda” and 12.5 million hits in searches for “Vero Moda” and “clothing”.
The disputed domain name was registered on October 21, 2010. The Respondent’s website allegedly uses, without authorization, the Complainant’s pictures to market and advertise different links to various websites including links guiding users to the Complainant’s online store on “www.taobao.com” (“Taobao”), the Chinese language website for online shopping.
5. Parties’ Contentions
The Complainant submits, firstly, that the disputed domain name is identical or confusingly similar to the Complainant’s mark as the words “vero moda” are incorporated in its entirety.
Secondly, it is submitted that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent’s reasons for registering the disputed domain name must have been for the purpose of attracting Internet users to his/her website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the website. The Respondent’s webpage is in the nature of a landing site which generates “pay-per-click” revenue by the sponsored links and advertisements displayed. The Complainant submits that this does not constitute a bona fide offering of goods. The Respondent does not run any business activity as such in connection with the disputed domain name but is benefitting from the reputation and goodwill associated with the VERO MODA trade mark. Internet users would be led to believe that the Respondent’s website is owned by or related to the Complainant. The Respondent was not licensed nor otherwise permitted by the Complainant to use the VERO MODA mark or to apply for the registration of a domain name incorporating the said mark.
Thirdly, the Complainant submits that the disputed domain name has been registered and is being used in bad faith:
(1) It is highly unlikely that the Respondent was unaware of the Complainant and its trade mark, VERO MODA and this is evidenced by the following:
- the Complainant’s original pictures and trade mark VERO MODA are used on the Respondent’s website without permission;
- the Respondent’s website also refers to other trade marks owned by the Complainant, e.g. ONLY and JACK & JONES; and
- the Respondent’s website has links to the Complainant’s online shop on Taobao.
(2) The Complainant’s mark was registered a number of years prior to the date of registration of the disputed domain name.
(3) There is no evidence of any actual or contemplated good faith use of the disputed domain name. Instead, the Respondent’s website to which the disputed domain name resolves contains infringing material.
The Respondent did not file a Response but on the same day that the Center issued the Respondent’s Default, the Center received an email from the Respondent which read as follows: “veromoda.cc for personal registration site content is compatible with VEROMODA are independent of this website only for personal use, never involved in commercial sales This domain name is the personal collection, does not infringe any intellectual property VEROMODA.com official”.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established it has rights in the trade mark VERO MODA, both by virtue of its trade mark registrations and use in commerce. The Panel is of the view that the disputed domain name is, effectively speaking, identical to the Complainant’s VERO MODA mark as the entire mark is incorporated therein. The country code TLD is to be disregarded when considering the issue under paragraph 4(a)(i) of the Policy, and this is a principle which has been well established by earlier UDRP panel decisions under the Policy.
In the circumstances, the Panel finds that the Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances which, if found by a panel to be proved, shall demonstrate the respondent’s rights to or legitimate interests in a domain name.
In this case, the Panel finds that there is no evidence of any of the following: the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; or that the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if he/she has acquired no trade mark rights; or that 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 trade mark.
The Complainant has denied it has any relationship with the Respondent or that it had permitted or licensed the Respondent to use the VERO MODA trade mark or to register a domain name incorporating the trade mark. This has not been disputed by the Respondent. Neither has the Respondent proffered evidence to prove he/she has rights or legitimate interests to the disputed domain name. In any event, taking into account how the Respondent has allegedly incorporated the Complainant’s original pictures as well as its VERO MODA trade mark on his/her webpage, it would be difficult to envisage how the Respondent would be able to justify his/her actions or to prove that he/she has independent rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the Complainant has discharged its burden of establishing a prima facie case under paragraph 4(a)(ii) of the Policy. In the absence of a substantive response and/or evidence to the contrary from the Respondent, the Panel concludes that the second element that the Complainant is required to prove under the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel is of the view that the facts presented in this case do reflect that the Respondent had, by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to his/her website by creating a likelihood of confusion with the Complainant's VERO MODA mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product on the website or location. The disputed domain name which incorporates in its entirety a well-established trade mark of the Complainant, without any explanation as to how the Respondent independently came to devise and adopt the disputed domain name, and its use in relation to a website with pay-per-click advertising, all suggest an intentional attempt to attract Internet traffic by creating confusion. The brief statement made by the Respondent in his/her email to the Center is unsubstantiated and appears to be totally incongruent with what is reflected on the Respondent’s website.
Consequently, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.
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 <veromoda.cc> be transferred to the Complainant.
Dated: August 22, 2011