The Complainant is Gianni Versace S.r.l., Italy, represented by Studio Barbero, Italy.
The Respondent is Xiulin Wang aka Wangxiulin, China.
The disputed domain name <versaceshop.com> (the “Domain Name”) is registered with 22net, Inc. (the “Registrar”).
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2020. On March 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 6, 2020, 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 March 6, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On March 6, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on March 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 2, 2020.
The Center appointed Karen Fong as the sole panelist in this matter on April 28, 2020. 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.
The Complainant is one of the world’s leading fashion houses. It designs, manufactures, distributes and retails fashion and lifestyle products including haute couture, prêt-à-porter, accessories, jewellery, watches, eyewear, fragrances and home furnishings under the trade mark VERSACE.
The Complainant’s business was founded in Milan by the designer and stylist Mr. Gianni Versace in 1978. He rose to international fame as did his products under the Versace brand and his fans and supporters included royalty and celebrities from the music, film and fashion industries. Those he dressed included the late Princess of Wales, Elton John, Michael Jackson and Kate Moss. With his tragic death in 1997, the running of the business was taken over by his siblings Donatella and Santo Versace. They continued to build the Versace brand and it continues to thrive. Versace branded products are sold all over the world including China where the Respondent is based.
The Complainant owns many trade marks globally. The earliest trade mark registration submitted in evidence for the VERSACE word mark under International Trade Mark Registration No. 648708 was registered in 1995. The registration includes a territorial extension to China (the “Trade Mark”).
The Complainant’s Versace brand is strongly supported by global advertising campaigns through television and different media including international magazines. It also has a strong presence on popular social media. The Complainant has a portfolio of over 500 domain names which include the Trade Mark with its main website at “www.versace.com”. It also operates a website dedicated to the China market connected to the domain name <versace.cn>.
The Respondent registered the Domain Name on May 29, 2011. The website connected to the Domain Name offers the Domain Name for sale. Through its representatives, the Complainant has offered to purchase the Domain Name by reimbursing the Respondent for his/her out of pocket costs. However, that was rejected and various amounts have been counter proposed by the Respondent or his/her representatives varying from EUR 1,500 to 5,500 (sometimes the offers from the Respondent were received in USD, but within such range).
The Respondent has registered other domain names which also includes third party well-known trade marks including <versusversace.com> (VERSUS and VERSACE), <taikoomotors.cn> (TAIKOO), <ebayinc.cn> (EBAY), <wolterskluwerfs.cn> (WOLTERS KLUWER), <converseshop.cn> (CONVERSE), <bosch-si.cn> (BOSCH) and <ford-finance.com> (FORD).
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
The Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should be English for the following reasons:
- The Complainant’s business is conducted primarily in English and it is unable to communicate in Chinese.
- The Respondent responded to the prior correspondence with the Complainant’s representatives in English demonstrating his/her fluency in the language.
- The Domain Name is in Latin rather than Chinese characters and it also includes an English word “shop”.
- The Respondent has registered many other domain names which include English words, e.g., <burgerbeer.cn>, <fixandgo.cn>, <hollandcolours.cn> and <remarkgroup.cn>.
- The Complainant would be put to great expense and inconvenience to have to translate the Complaint and its evidence which would cause undue delay.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding.
The Respondent has not challenged the Complainant’s request and in fact has failed to file a Response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.
The Panel is satisfied that the Complainant has established that it has registered rights to the Trade Mark.
The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Domain Name contains the Complainant’s distinctive Trade Mark in its entirety together with the descriptive term “shop”. The addition of this term does not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Mark in the Domain Name. E.g., N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org, WIPO Case No. D2011-0260; Oakley, Inc. v. wu bingjie aka bingjie wu/Whois Privacy Protection Service, WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that it has not authorised, licensed or otherwise permitted the Respondent to use the Trade Mark in the Domain Name or for any other purpose. The Complainant is not aware of any evidence which demonstrates that the Respondent is commonly known by a name corresponding to the Domain Name. The Trade Mark is well known and has no other significance other than being obviously connected to the Complainant. The Respondent has not made any 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, and is not making any legitimate noncommercial or fair use of the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not replied to the Complainant’s contentions to provide explanation of its rights or legitimate interests in relation to the Domain Name and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
In addition, the Panel notes the nature of the Domain Name which carries a risk of implied affiliation with the Complainant (section 2.5.1 of the WIPO Overview 3.0).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
To succeed under the Policy, the Complainant must show that the Domain Name has been registered and used in bad faith.
The Trade Mark is a distinctive and well-known trade mark and has been recognized by other UDRP panels as such.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s well-known Trade Mark when he/she registered the Domain Name given the fame of the Trade Mark. It is implausible that he/she was unaware of the Complainant when the Domain Name was registered.
In the WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.1.1 of the WIPO Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith.
The Domain Name is also being used in bad faith. The Domain Name directs to a page which offers the Domain Name for sale. In prior correspondence with the Complainant’s representatives, the Respondent has offered to sell the Domain Name for an amount exceeding the costs directly related to the registration of the Domain Name. This is evidence that the Respondent has registered the Domain Name primarily for the purpose of selling as set out in paragraph 4(b)(i) of the Policy.
Further, the Respondent is the owner of at least seven other domain names which comprise trade marks owned by different trade mark owners. One of the examples of a bad faith registration is contained in paragraph 4(b)(ii) of the Policy (“you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided you have engaged in a pattern of such conduct”). This is part of such a pattern of conduct as the Respondent is engaged in a pattern of registration of a series of domain names incorporating well-known trade marks and therefore the Respondent’s use of the Domain Name is in bad faith.
Accordingly, the Complaint has satisfied the third element of the UDRP, i.e., the Domain Name was registered and is being used in bad faith under paragraph 4(a) 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 Domain Name <versaceshop.com> be transferred to the Complainant.
Date: May 13, 2020