WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LeSportsac, Inc. v. Yang Zhi
Case No. D2013-0482
1. The Parties
The Complainant is LeSportsac, Inc. of Reno, Nevada, United States of America, represented by Kenyon & Kenyon LLP, United States of America.
The Respondent is Yang Zhi of Wuhan, Hubei, China.
2. The Domain Name and Registrar
The disputed domain name <lesportsacitalia.com> is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2013. On March 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 11, 2013, 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 12, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On March 12, 2013, the Complainant confirmed its request that English be the language of the proceeding. The 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2013.
The Center appointed Colin Yee Cheng Ong as the sole panelist in this matter on April 19, 2013. 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
4.1 The Complainant has presented evidence that the Complainant is the owner of the LESPORTSAC marks who had since 1974 continuously used and widely promoted LESPORTSAC as its principal trademark for soft-sided handbags, shoulder bags, backpacks, cosmetic bags, tote bags, travel bags, luggage and accessories.
4.2 The Complainant has provided evidence to show that it owns the worldwide rights, title and interest in and to the LESPORTSAC trademark. The Complainant has registered, among other marks, the LESPORTSAC trademark, the LESPORTSAC and design trademark and the design element of the LESPORTSAC and design trademark alone (the “LeSportsac Ellipse Logo”) (collectively, the “LESPORTSAC Marks”), in over ninety (90) countries throughout the world, including the United States, China and Italy.
4.3 The Complainant has asserted that it has invested a substantial amount of time and resources in promoting and advertising the LESPORTSAC Marks and the goods and services associated therewith. It has asserted that for each of the four years prior to the registration date of the disputed domain name, the Complainant spent approximately USD14,000,000 to advertise and promote its business and goods worldwide under the LESPORTSAC Marks. It has also asserted that its worldwide sales for each of those years were approximately USD300,000,000. Whilst the Panel has not been able to find any evidence that could back up any of these assertions, the Complainant has provided an index showing that it had at some point in time retained a number of celebrities to advertise its products. The Complainant had also included photographs of a number of celebrities that have been photographed carrying products bearing the LESPORTSAC Marks.
4.4 The Complainant had become aware of the registration and use of the disputed domain name <lesportsacitalia.com> and had established that the disputed domain name resolves to a website that purports to sell genuine LeSportsac goods.
5. Parties’ Contentions
5.1 The Complainant contends that the disputed domain name is confusingly similar to its LESPORTSAC Marks for the following reasons:
(i) In addition to selling purportedly authentic LeSportsac bags, the website at the disputed domain name appears to be selling bags that bear confusingly similar marks that incorporate the entirety of the LeSportsac Ellipse Logo. The Complainant has asserted that these bags are not authentic or authorized by the Complainant. All authentic LeSportsac backpacks and laptop bags are supposed to bear a LESPORTSAC Mark. However, the disputed website appears to be selling bags that are purportedly authentic LeSportsacbackpacks and laptop bags which all lack any branding whatsoever on these products.
(ii) The Complainant also submits that customers are deceived into believing that the merchandise offered for sale on the website is authentic LeSportsac merchandise, but it is, in fact, counterfeit, infringing or stolen. Even though many of the bags on the website prominently display the LESPORTSAC Mark, such use of the mark is unauthorized and without the Complainant’s permission. None of the bags on the website are manufactured by or under the control of the Complainant.
(iii) The Complainant complains that the disputed domain name is almost identical to the Complainant’s LESPORTSAC Mark, with the only difference being that the term “lesportsac” is followed by “Italia” and the generic top-level domain (gTLD) “.com.” The Complainant submitted that UDRP panels have consistently held that domain names are confusingly similar to established marks if they incorporate the mark or a variation of the mark. The addition of a gTLD to a trademark to create a domain name is irrelevant when considering the similarity of a domain name to the trademark.
(iv) The Complainant additionally submits that the second-level of the disputed domain name merely adds to the LESPORTSAC Mark the geographic designation “Italia.” This geographic designation merely describes the fact that Italy is a country in which LeSportsac goods are sold and in which the Complainant holds exclusive rights in and to the LESPORTSAC Marks. The Complainant asserted that where an added geographic designation has relevance to the Complainant or one of its products, there is an even stronger argument that the disputed domain name is confusingly similar to the Complainant’s mark. The Complainant relied upon the decision of LEGO Juris A/S v. Le Thi Ngoc Yen, WIPO Case No. D2012-1627. The Complainant asserted that even if Italy did not have significance vis-à-vis the Complainant, the disputed domain name would still be confusingly similar to the Complainant’s c Mark because “Italia” or “Italy” does not differentiate the disputed domain name from the LESPORTSAC Mark.
5.2 The Complainant contends that the Respondent has no rights and legitimate interests in the disputed domain name for the following reasons:
(i) The Respondent is not affiliated with the Complainant in any way, nor have the Respondent been authorized by the Complainant to register and use the Complainant’s LESPORTSAC Marks on the website at the disputed domain name, or to use any of the LESPORTSAC Marks as or as part of a mark or domain name.
(ii) The Respondent has never engaged, and is not engaging, in use of the disputed domain name in connection with a bona fide offering of goods or services. The Complainant has emphasized that the use of a domain name for purposes of trading on the goodwill of a well-known mark does not constitute a bona fide offering of goods and services.
(iii) The Respondent has not only used the disputed domain name to lure Internet users to the website at the disputed domain name but it is also using the disputed domain name to sell counterfeit, infringing or stolen LeSportsac products. The Complainant asserts that this is prima facie evidence that the Respondent has no rights or legitimate interests in the disputed domain name and it relies upon the decision of Guccio Gucci S.p.A. v. Zhou Guodong, WIPO Case No. D2010-1695 as authoritative.
(iv) The Complainant has asserted that the law is clear that a respondent’s mischaracterization of its relationship to the complainant is evidence that the respondent has no rights or legitimate interests in the disputed domain name. By stating that it is a discount wholesaler, or direct producer, that is able to “closely monitor the quality of all our products”, the Complainant asserts that the Respondent has falsely implied that it is authorized by it to manufacture LeSportsac bags.
(v) The Complainant asserts that the Respondent is not, and has never been commonly known by the disputed domain name or by “LeSportsac”. It concludes that the Respondent therefore has no rights or legitimate interests in the disputed domain name under paragraph 4(c)(ii) of the Policy. The Respondent only began using the disputed domain name after registering it.
Finally the Complainant asserts that the Respondent’s use of the disputed domain name misdirects Internet users attempting to visit the Complainant’s website to the website at the disputed domain name. This website offers for sale counterfeit, infringing or stolen LeSportsac merchandise for the Respondent’s profit. This concludes that the use of the disputed domain name cannot qualify as a legitimate noncommercial or fair use of the disputed domain name.
5.3 The Complainant, lastly, contends that the disputed domain name was registered and is being used in bad faith for the following reasons:
(i) The Complainant submits that the Respondent registered and uses the disputed domain name solely to misdirect Internet users interested in the Complainant’s LeSportsac products to the website at the disputed domain name, for purposes of selling counterfeit, infringing or stolen LeSportsac products.
(ii) The Complainant also submits that the Respondent registered, and uses, the disputed domain name to sell counterfeit, infringing or stolen LeSportsac products. In order to mislead consumers into believing that the Respondent is an authorized dealer of LeSportsac merchandise, the Respondent purposely mimics the distinctive elements of the Complainant’s website and even represents itself as a direct producer of LeSportsac bags.
(iii) The Complainant contends that prior UDRP panels have held that registering and using the famous LESPORTSACMark as part of a domain name that hosts a website selling counterfeit LeSportsac products is clear evidence of bad faith. The Complainant relies on earlier UDRP panel decisions including that of LeSportsac, Inc. v. Zhao Zhao, WIPO Case No. D2012-2505.
(iv) Finally, the Complainant assets that in light of (i) the Complainant’s well-established rights in the famous LESPORTSAC Marks, (ii) the extent to and duration in which the Complainant has promoted the LESPORTSAC Marks, (iii) the fact that the disputed domain name includes the LESPORTSAC Marks in its entirety, (iv) the fact that the Respondent sells counterfeit, infringing or stolen LeSportsac goods on the website, and (v) the fact that the Respondent has never been authorized to sell LeSportsac products, the Respondent cannot conceivably be using the disputed domain name in good faith.
The Complainant requests a decision that the disputed domain name be transferred.
5.4 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of Proceedings
6.1 The Complaint was filed in the English language. Pursuant to paragraph 11of the Rules, 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.
6.2 The Center has been informed by the concerned Registrar that the language of the registration agreement of <lesportsacitalia.com> is Chinese. The default language of proceedings is therefore Chinese, being the language of the registration agreement, pursuant to paragraph 11(a) of the Rules, and also in consideration of the fact that there is no express agreement to the contrary by the parties.
6.3 According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
6.4 The Complainant has submitted that “there is no reason to assume that Respondent speaks Chinese and only Chinese. The disputed domain name is in Italian and English. The website hosted at the Domain Name is in Italian and English, and the website advertises that it ships to the United States and other English-speaking countries, including Canada, Australia, New Zealand and the United Kingdom. In fact, Chinese does not even appear on the website. Thus, Respondent is clearly conversant and proficient in English.”
The Panel does not understand the legal rationale behind the Complainant’s submission on language as set out in Annex C to the Complaint. The Complainant takes the position that because the disputed domain name includes an English or Italian term, this is enough to suggest that the Respondent has knowledge of either English or Italian language. With the greatest respect, the Panel does not agree that this is enough to conclude that the Respondent is proficient with the English language and has therefore to decline to follow the Complainant’s assumptions. Furthermore, the fact that the Complainant has engaged United States counsel who is unable to read Chinese does not mean that the registration language can or should be ignored in favour of the language of the counsel of the Complainant.
6.5 The Complainant has also submitted that as it is a company located in the United States and is represented with United States counsel, “If this proceeding were to be conducted in Chinese, Complainant would be unduly burdened and disadvantaged, as it would need to hire a qualified translator to translate the Complaint and Annexes from English to Chinese, and then any response and decision from Chinese to English.” It then concluded to say that the use of another language than English in the proceeding would impose a burden on the Complainant which must be deemed significant in view of the cost for the present proceedings.
6.6 In the Panel’s view, the fact that the Complainant has to retain specialised translation services at a cost that is likely to be higher than the overall cost for the present proceedings is not legal reasoning nor a compelling reason to proceed in English.
6.7 However, considering the record, the website at the disputed domain name being displayed in English and that there has not been an objection made by the Respondent on the issue of language, see Compagnie Gervais Danone v. yunengdonglishangmao (beijing) youxiangongsi, WIPO Case No. D2007-1918, the Panel having considered this issue carefully bearing in mind its broad powers given to him by paragraph 11(a) of the Rules, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of proceedings in this case.
B. Overall Review of Formalities
6.8 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below. This Panel does not find any exceptional circumstances pursuant to paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.9 The Respondent has been accorded with the opportunity to provide submissions and evidence to dispute the claims of the Complainant. Some previous UDRP panels have suggested that if the respondent chooses not to present any such evidence, an inference may be made that such evidence would not have been favorable to the respondent, or that it accepts the claims of the complainant, or even that it does not wish to respond or defend its perceived interest in the domain name. (See cases set out by the Complainant above). However, this Panel respectfully views that any such adverse inference is not conclusive and the Complainant would still be obliged to prove its case in accordance with the Policy and the Rules. The burden of proof falls upon and remains on the Complainant.
6.10 In such case of silence by the Respondent, the Complainant shall then continue with its case and shall have to prove the three elements that are required by the Policy without opposition than the Complainant’s own ability to explain them. (See: PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700). Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel “shall draw such inferences there from as it considers appropriate”. Therefore, in a case where a respondent fails to put in a response, a panel may draw negative inferences from the respondent’s default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”). Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects as set out in paragraph 4(a) of the Policy (see, PRL USA Holdings, Inc. v. Yan Shif, supra). Namely, the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
C. Identical or Confusingly Similar
6.11 Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
6.12 In line with such provision, the Complainant must prove two limbs, i.e., that it holds the trademark or service mark rights; and that the disputed domain name is identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the domain name and the trademark alone, independent of the domain name’s use or other marketing factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).
6.13 The Complainant has appended to the Complaint a list of registered trademarks for the LESPORTSAC Marks. It is quite clear that the Complainant is the owner of a number of trademarks that simply comprise LESPORTSAC. The Respondent’s registration consisting of the Complainant’s LESPORTSAC Marks in its entirety with the exception of words added to the trademark does not prevent the disputed domain name from being confusingly similar to the Complainant’s registered mark.
6.14 Given this, the Panel has little difficulty in concluding that the disputed domain name is confusingly similar to a number of trademarks in which the Complainant has rights.
6.15 In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
6.16 The Panel accepts that the Complainant has satisfied it in the Complaint the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services. At the heart of the Complaint is the Complainant’s contention that the Respondent has taken the trademark of the Complainant with a view to attracting Internet users to a website offering services, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to their website. The Respondent had even displayed on the website the Complainant’s trademark LESPORTSAC. The Panel accepts that such activity clearly does not provide the Respondent with a legitimate interest in the disputed domain name.
6.17 According to paragraph 4(a)(ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is the prevailing view among UDRP panels that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests in the disputed domain name, and the respondent fails to show, inter alia, one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a right or legitimate interest in the disputed domain name.
6.18 As previously held by other UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. (See eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001).
6.19 As this Panel held in the case of Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Varentinuo inc. reg. by sopao.com, WIPO Case No. D2008-0186, if a respondent wants to argue that it has a right or legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.16 of that decision).
6.20 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to rights or legitimate interests in the disputed domain name. There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the disputed domain name, or that the Respondent has made noncommercial or fair use of the disputed domain name. The Respondent has also not used the disputed domain name in connection with a bona fide offering of goods or services. The Panel thus finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name which is confusingly similar to the Complainant’s mark.
6.21 Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
E. Registered and Used in Bad Faith
6.22 The Panel has not been provided with any supporting submission to link up and support the Complainant’s submission that it seems obvious to them that the Respondent knew or must have known about the Complainant’s trademarks at the time of the registration of the disputed domain name. However, having gone through the materials that have been provided, the Panel does accept that the Complainant’s trademark is very well-known throughout the world and does indeed appear to be immensely successful.
6.23 The Panel does not accept the Complainant’s assertion that findings of fact by other UDRP panels in previous UDRP decisions should be automatically accepted as conclusive in this case. The Complainant bears the burden of proving whatever allegations it chooses to make in any new case.
6.24 The Panel however accepts that the Respondent registered the disputed domain name with the likely knowledge of the Complainant’s business and its use of the trademark LESPORTSAC does show that the Respondent is using the disputed domain name to intentionally gain commercially by attracting Internet users to websites, by creating a likelihood of confusion with the Complainant’s mark.
6.25 Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt to attract for commercial gain Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source of a website.
6.26 Given that the Respondent has failed to demonstrate that it is using the disputed domain name genuinely for their own goods or services and that it have also failed to disclose on the site the true relationship between the Respondent and the Complainant, the Panel concludes that the Respondent in this case did intentionally attract for commercial gain Internet users to their websites by creating a likelihood of confusion with the Complainant’s mark. The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.
6.27 The Panel comes to the conclusion that the Respondent most likely registered the disputed domain name in order to prevent the Complainant from adopting the trademark in corresponding domain name. This has been done in bad faith.
6.28 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainant. The Panel has been able to conclude that the Respondent registered and is using the disputed domain name 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 disputed domain name <lesportsacitalia.com> be transferred to the Complainant.
Dr Colin Yee Cheng Ong
Dated: May 27, 2013