WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facton Ltd. and G-STAR RAW C.V. v. kezheng li
Case No. D2011-1108
1. The Parties
The Complainant is Facton Ltd. and G-STAR RAW C.V. of Amsterdam, Netherlands, represented internally.
The Respondent is kezheng li of Beijing, China.
2. The Domain Names and Registrar
The disputed domain names <g-star-raw.com> and <g-star-raw-shop.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2011. On June 30, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On July 2, 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 for the disputed domain names.
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 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1, 2011.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on August 15, 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 a company that manufactures and distributes premium jeans-wear among other products such as cosmetics, footwear, clothing, luggage and umbrellas.
The Complainant owns various G-STAR trademark registrations (Annex 3 to the Complaint). The trademark G-STAR is one of the leading fashion labels for premium jeans-wear. The trademark G-STAR and G-STAR RAW (hereinafter “G-STAR”) have been registered worldwide for a number of goods and services, such as cosmetics, footwear, clothing, luggage and umbrellas.
The Complainant has made extensive use of its trademarks and considerable investments have been made in advertising in magazines and newspapers as well as on billboards and at fashion fairs.
The Complainant also owns and has registered domain names that include or are associated with its G-STAR mark and/or its other branded products. Complainant's principal website is found at the domain name <g-star.com>.
The domain names <g-star-raw.com> and <g-star-raw-shop.com> were registered on April 8, 2011 and May 17, 2011 respectively.
5. Parties’ Contentions
The Complainant states that the domain names <g-star-raw.com> and <g-star-raw-shop.com> are identical or confusingly similar to the Complaint’s trademarks. The domain names incorporate without any modification the trademarks G-STAR which are owned and commercially used by the Complainant in and for the purposes of its business.
The addition of the suffix “.com” and/or the term “shop” is not sufficient to render the domain names distinct from the trademarks of the Complainant. Plus the descriptive and non-distinctive generic reference to a shop does not eliminate the similarity with the Complainant’s trademark; the "shop" term serves only to reinforce the connection in the public mind between the trademark G-STAR and the Complainant.
The Complainant further states that it has no relationship or association with the Respondent. The Respondent is not an authorized retailer of G-Star branded products. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks, nor has it licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of those marks. The Respondent is not commonly known by the disputed domain names, without infringing the exclusive trademark rights of the Complainant.
Finally the Complainant states that the Respondent is not making any legitimate noncommercial or fair use of the domain names. Instead, the Respondent uses the domain names for commercial gain by misleading consumers and tarnishing the G-STAR trademark. The Respondent has fully incorporated Complainant's G-STAR mark into the disputed domain names for the sole purpose of diverting Internet users from Complainant's website. Consequently it’s very clear that the Respondent has no legitimate rights or interests in the domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) the domain names registered by the Respondent are 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 names in question; and
(iii) the domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
This first element requires the Complainant to demonstrate that (1) it has trademark rights and (2) the disputed domain names are identical or similar to a trademark in which the Complainant has rights.
The Panel finds that the Complainant has established that it is the owner of the registered trademarks G-STAR based on the evidence provided by the Complainant (annex 3 to the Complaint).
The disputed domain names consist of two or three different words, the first two consisting of the Complainant’s registered trademark, and the third of a generic term “shop”. The issue often turns to the question of whether the addition of a generic term would change the overall impression of the domain name as being connected to the Complainant or the trademark owned by the Complainant. The Panel considers that the addition of the term “shop” merely adds to the confusing similarity and identity with the Complainant’s trademarks. Finally the addition of the generic denomination, especially when added to the famous trademark is not sufficient to avoid confusion; especially when a generic word added to a trademark, refers to a shop that sells items which clearly relate or can be confused with products of the Complainant.
The Panel therefore finds that the disputed domain names are confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the domain names in question.
By the terms used in paragraph 4(a) of the Policy it is clear that the overall burden of proof is on the Complainant, however the Policy provides the Respondent means to demonstrate its rights to and legitimate interests in the domain names in responding to the Complaint. Once the Complainant has established a prima facie case under sub paragraph 4(a)(ii), the burden is shifted to the Respondent to demostrate the contrary.
The Complainant asserts that the Respondent does not have rights or legitimate interests in the domain names and has not registered them as a trademark, service mark or company name anywhere in the world. The Respondent is not commonly known by the name G-Star or G-Star Raw. The Complainant has not licensed or otherwise permitted the Respondent to use the trademark G-STAR. There is no relationship between the Complainant and the Respondent.
The Respondent has not provided a Response to the allegations set forth by the Complainant, though given the opportunity.
There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interests in the domain names. Indeed, the websites associated with the disputed domain names offered for sale what appears to be the Complainant’s products without adequately disclosing the Respondent’s relationship with the Complainant.
In the absence of a Response, this Administrative Panel is satisfied that the Complainant has satisfied the second element, paragraph 4(a) of the Policy and has established a prima facie case that the Respondent has no rights or legitimate interest in said domain names.
C. Registered and Used in Bad Faith
This third element requires the Complainant to demonstrate that (1) the domain names have been registered in bad faith and (2) are being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
The disputed domain names are composed of the words, “g-star”, “raw” and “shop”. The first is a registered trademark owned by the Complainant; the second is also a term that has been trademark protected by the Complainant and the third is a generic term.
The Panel reviewed the website, currently it resolves to a parked website. However, after reviewing the evidence provided by the Complaint, annexes 4 and 6 to the Complaint, the Panel was able to effectively determine that the websites associated with the disputed domain names were oriented to the unauthorized wholesale of G-Star-only branded apparel.
Consequently, it is difficult to believe that the juxtaposition of these terms is a mere coincidence, taking into consideration that the Respondent’s websites at the time of the filing of the Complaint were active and referred to G-Star Raw items (annexes 4 and 6 to the Complaint). Therefore one can reasonably conclude that the Respondent must have had knowledge of the existence of the products manufactured by the Complainant, and that the G-STAR RAW was a registered trademark, demonstrating bad faith registration and use.
The Panel considers that by registering domain names corresponding to a well-known trademark, and selling such products via the Internet, being these products either legitimate or counterfeit, the Respondent has intentionally tried to divert Internet user’s to its webpage, for commercial gain. This behavior constitutes bad faith use and may tarnish the Complainant’s reputation by, among other things, attracting Internet users to a webpage that does not correspond to what they are looking for.
The above can only lead the Panel to conclude that the Respondent is attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the services provided on the website.
Therefore, in accordance with paragraph 4(b)(i) and (iii) of the Policy, the above findings lead to the conclusion that the domain name in disputes have been registered and used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <g-star-raw.com> and <g-star-raw-shop.com> be transferred to the Complainant.
Rodrigo Velasco Santelices
Dated: August 24, 2011