WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alexander Wang, Alexander Wang Inc. v. Zhou Huang, Zhouhuang, Xu Fei, Chen Xiaodong, Li Yunlong aka Yunlong Li, chen chen
Case No. D2010-2134
1. The Parties
The Complainants are Alexander Wang, and Alexander Wang Inc. of New York, New York, the United States of America, represented by McCarter & English, LLP, the United States of America.
The Respondents are Zhou Huang, Zhouhuang, Chen Xiaodong, Li Yunlong aka Yunlong Li, chen chen of Beijing, and Xu Fei of Shanghai, the People’s Republic of China.
2. The Domain Names and Registrars
The disputed domain names <alexanderwangshop.com> and <alexanderwangstore.net> are registered with Bizcn.com, Inc.
The disputed domain name <alexanderwangstore.com> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn. (the “Registrars” hereinafter).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2010. On December 10, 2010, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On December 13, 2010, the Registrars transmitted by email to the Center their verification response confirming that the Respondents are listed as the registrants and providing the contact details. The Center sent an email communication to the Complainant on December 15, 2010 requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 16, 2010. On December 15, 2010, the Center also transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On December 16, 2010, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceeding by 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, and the proceedings commenced on December 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2011.
The Center appointed Douglas Clark as the sole panelist in this matter on January 18, 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.
The language of proceedings is dealt with in the Panel’s substantive decision.
4. Factual Background
The Complainant Alexander Wang is a designer of clothing, shoes and handbags. The Complainant Alexander Wang Inc. manufactures, sells and distributes clothing, shoes and handbags designed by Mr. Wang and has been authorized by Mr. Wang to use the ALEXANDER WANG trademark and name. Mr. Wang has received numerous awards for his product designs, which are branded under the mark ALEXANDER WANG, including the 2008 Vogue/Council of American Fashion Designers Fashion Fund, Swarovski Womenswear Designer of the Year 2008, Swiss Textile Design Award of 2008, and the 2010 Swarovski Designer of the Year Award, Accessory Category. Each award resulted in significant press coverage and substantial monetary prizes.
The Complainants own trademark registrations throughout the world for the mark ALEXANDER WANG. Copies of the United States, International, Japan, Hong Kong and Chinese trademark registrations for ALEXANDER WANG were filed with the Complaint. In particular, the trademark ALEXANDER WANG has registered in Classes 18 and 25 in China since 2007. The Complainant, Alexander Wang Inc. also owns the domain name <AlexanderWang.com>, incorporating the ALEXANDER WANG mark as the primary URL for the Complainants’ website.
The Respondent registered the domain names <AlexanderWangStore.com>, <AlexanderWangShop.com> and <AlexanderWangStore.net> (the “Domain Names”) on different dates in 2010. The Complainants found the sites the Domain Names resolved to be selling what they allege to be counterfeit Alexander Wang products. The Complainants took a number of actions to have the Domain Names shut down. This had some success.
As of December 3,2010, <AlexanderWangStore.com> and <AlexanderWangShop.com> both resolve to error pages and <AlexanderWangStore.net> resolves to an active website marketing and selling counterfeit ALEXANDER WANG branded products.
5. Parties’ Contentions
The Complainant made the following submissions:
Identical or Confusingly Similar
The Complainants use the ALEXANDER WANG mark in connection with the marketing, distribution and sale of clothing, handbags and shoes and in its own website, “www.alexanderwang.com”. The Domain Names in dispute all incorporate the Complainants’ ALEXANDER WANG mark with the minor generic words “store” or “shop” together with the generic top level domains (gTLDs) “.com” and “.net”. These additional elements in the Domain Names do nothing to avoid confusion between them and the ALEXANDER WANG mark. WIPO decisions often involve disputes in which the respondent’s infringing domain name combines the complainant’s mark with additional words that fail to change the overall impression that the domain name is associated with the true trademark owner. See Formula One Licensing B.V. v. N/A, WIPO Case No. D2009-0217 (the addition of “rocks” in the domain name <f1rocks.com> did not eliminate the similarity between the domain name and complainant’s well-known F1 mark); Research In Motion Limited v. Georges Elias, WIPO Case No. D2009-0218 (the addition of words such as “always”, “bet”, “inside”, “magic”, etc. in the domain names containing complainant’s registered and distinctive BLACKBERRY mark was insufficient to avoid a likelihood of confusion).
Because each of the Domain Names at issue wholly incorporates the Complainants’ registered ALEXANDER WANG mark, the Complainants submit that the Domain Names and the Complainants’ ALEXANDER WANG mark are confusingly similar.
The addition of the gTLDs “.com” and “.net” are without legal significance from the standpoint of comparing the Domain Names to the ALEXANDER WANG mark since use of a gTLD is required of domain name registrants. Such an addition “does not serve to identify a specific enterprise as a source of goods or services.” See SBC Communications Inc. v. Fred Bell aka Bell Internet, WIPO Case No. D2001-0602. As such, the disputed Domain Names and the ALEXANDER WANG mark are virtually identical. Consequently, the Domain Names are confusingly similar to the ALEXANDER WANG mark.
No Rights or Legitimate Interests
The Respondents have no rights or legitimate interests with respect to the Domain Names. The Complainants have no evidence of the Respondents’ use of, or demonstrable preparations to use, the ALEXANDER WANG mark in connection with a bona fide offering of goods or services.
Furthermore, there is no evidence that the Respondents are known by the name “Alexander Wang”. The Respondents also do not make any legitimate noncommercial or fair use of the disputed Domain Names that the Complainants are aware of.
Moreover, the Complainants have never licensed or otherwise authorized the Respondents to use the ALEXANDER WANG mark. Nor have the Complainants ever authorized the Respondents to apply for and use any domain names incorporating all or part of the ALEXANDER WANG mark. See Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020, (a party does not have a legitimate interest or right in a domain name where the trademark owner has not licensed or otherwise permitted the use of its trademarks nor permitted the party to apply for any domain name incorporating any of those marks and the party has not been known by that trademark or registered the term itself).
Based on the evidence, it is clear that the Respondents intend only to mislead and divert the Complainants’ potential customers to the websites associated with the Domain Names for the Respondents’ own commercial gain, and to tarnish and dilute the ALEXANDER WANG mark. The Respondents are profiting from the Complainants’ goodwill in the ALEXANDER WANG mark by their use of the disputed Domain Names in the marketing, trafficking and selling of counterfeit goods, including counterfeit ALEXANDER WANG branded products.
Given these facts, the Complainants argue the only conclusion is that the Respondents have no legitimate interests in the disputed Domain Names.
Registered and Used in Bad Faith
The Complainants allege the Respondents could only have registered the disputed Domain Names to either reserve such Domain Names in a bad faith effort to capitalize on the goodwill associated with the ALEXANDER WANG mark, to sell the Domain Names to the Complainants for profit, and/or to profit from Complainants’ goodwill in the ALEXANDER WANG marks by redirecting would-be purchasers of the Complainants’ products to websites marketing and selling counterfeit goods branded with the mark ALEXANDER WANG.
The Complainants have never licensed or otherwise permitted the Respondents to sell genuine ALEXANDER WANG branded goods. The Respondent’s use of the ALEXANDER WANG mark in the Domain Names coupled with the words “store” and “shop” is clearly intended to call up an image of authority and genuineness to a searching consumer and to divert traffic from legitimate sellers of authentic ALEXANDER WANG branded goods to the Respondents as sellers of counterfeit goods. Until approximately November 25, 2010, when consumers went to the disputed domain name <AlexanderWangStore.com>, they were redirected to the second disputed domain name <AlexanderWangShop.com>, which resolved to a website that marketed and sold counterfeit ALEXANDER WANG branded goods. Beginning on approximately, November 25, 2010, consumers going to the disputed domain name <AlexanderWangStore.com> were redirected to <Alexanderwangstore.net>, which continues to resolve to a website that markets and sells counterfeit ALEXANDER WANG branded goods. As of December 3, 2010, <AlexanderWangStore.com> and <AlexanderWangShop.com> both resolve to error pages.
The Respondents’ registration and use of the Domain Names in connection with marketing and sale of fake goods bearing the world-renowned ALEXANDER WANG mark is thus clearly calculated to falsely suggest to Internet users that the Respondents are affiliated with the Complainants. See Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211 (finding bad faith registration when the respondent used <curiousgeorge.net> to offer “Curious George” merchandise for sale). When, as here, Domain Names are so obviously connected with the Complainants and their products, the very use by the Respondents, who have no connection to the Complainants, suggests “opportunistic bad faith”. See Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.
Therefore, the Complainant alleges it is apparent from Respondents’ actions that their registration and use of the Domain Names has been and continues to be in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Language of Proceedings
The Complainant submitted that English should be the language of these proceedings for the following reasons:
1. Pursuant to UDRP Rule 10(b), a panel should ensure that the each party is given a fair opportunity to present its case by objectively assessing each party’s language ability in the proceeding. Thus, both a respondent’s ability to clearly understand the language of the complaint, and a Complainants’ disadvantage from being forced to translate, may support a panel’s determination that the language of proceedings remains the language of the complaint, even if it is different from the language of the registration agreement. See L'Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585.
2. One important factor to consider is the language of the website to which a disputed domain name resolves. In Pandora Jewelry the panel concluded that “the Respondent [had] sufficient capacity to present its case in English ... based in part on the fact that the website established at the disputed domain name display[ed] the contents in English.” Pandora Jewelry, LLC v. Wang Feng, WIPO Case No. D2009-1533.
3. Other important factors to consider include the language proficiencies of both parties and the language/context of the mark. Thus, for example, in eNamix, Inc. v. Li Yen Chun, WIPO Case No. D2001-1499, the panel selected English as the language of the proceeding even though the registration agreement was in Chinese. Therein, the panel determined that since the respondent spoke and wrote English based on the evidence introduced before the panel, the English language in the proceedings would not be prejudicial to the interests of the respondent. Furthermore, the panel found that both parties used the mark in connection with the English language.
4. As in Pandora, each of the disputed Domain Names forming the subject of the instant action resolves or resolved to an English language website. Moreover, the websites to which the Domain Names resolve specifically target English speaking countries as evidenced, e.g., by the websites providing live chat functionality in English.
5. On the other hand, similar to the situation in eNamix, supra, it is genuinely difficult for the Complainants to translate all the submissions into and take part in the proceeding in Chinese (the language of the registration agreements) because the Complainants’ counsel does not speak Chinese. Thus, considering all the circumstances, it is respectfully requested that the Panel determine, under UDRP Rule 11(a), that English should be the language of the proceeding.
In this case, points 2-4 above are determinative to the Panel. Each of the websites operate or operated solely in English. It is clear from reviewing the evidence submitted that the Respondent actively does business in English and will suffer no prejudice from the proceedings being in English. The Panel therefore determines that these proceedings shall be in English.
There being no Response, paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint.
Under paragraph 4(a) of the Policy, the Complainant must prove the following three elements in order to make out a successful case:
(i) The domain name is identical or confusingly similar to a trademark 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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has registered trademark rights in the ALEXANDER WANG mark worldwide and in China. The Respondents have registered the disputed domain names <AlexanderWangStore.com>, <AlexanderWangShop.com> and <Alexanderwangstore.net>, which merely add the generic words “store” and “shop” to the Complainant’s mark.
The Panel is satisfied from the evidence filed that the ALEXANDER WANG mark is distinctive of the Complainant’s business. The addition of the words “store" or “shop” does not in anyway detract from the similarity to the ALEXANDER WANG mark. Rather in the Panel's view the words clearly indicate that the website under the domain name is designed to be a place to buy ALEXANDER WANG products.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark ALEXANDER WANG.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Respondents registered the disputed domain names in 2010, well after the Complainants registered their trademarks and domain name. The Respondents are not known by the disputed domain names and have never been authorized by the Complainants to use the registered marks.
The Respondents have not provided evidence of the type specified in paragraph 4(c) of the Policy giving rise to rights or legitimate interests in the Domain Names.
The Panel is satisfied from the evidence filed that the use made by the Respondents of the Domain Names is not bona fide, and cannot give rise to rights or legitimate interests on the part of the Respondents under paragraph 4(a) of the Policy.
Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The evidence filed by the Complainants clearly demonstrates that at the time of the Respondents’ registration of the disputed domain names in 2010, the Complainant had already established a global reputation in the ALEXANDER WANG marks including in China. The subsequent use made by the Respondents of the Domain Names to sell ALEXANDER WANG branded clothes on the websites is also clear evidence of use in bad faith.
The Panel accordingly has no hesitation in finding that the Domain Names were registered in and are being used in bad faith.
Accordingly, the Complainant has satisfied the third element under paragraph 4(a) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <alexanderwangstore.com>, <alexanderwangshop.com> and <alexanderwangstore.net>, be transferred to the Complainants.
Dated: January 23, 2011