WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dolce & Gabbana s.r.l. v. Xiaohua Lin
Case No. D2013-0604
1. The Parties
The Complainant is Dolce & Gabbana s.r.l.of Milano, Italy, represented by Studio Turini, Italy.
The Respondent is Xiaohua Lin of Leizhou, Guangdong, China.
2. The Domain Names and Registrar
The disputed domain names <dolcegabbanabuy.com>, <dolcegabbanasoldes.com> (the “Disputed Domain Names”) are registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2013. On April 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On April 7, 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 April 8, 2013, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings 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 April 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2013.
The Center appointed Kar Liang Soh as the sole panelist in this matter on May 21, 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
“Dolce” and “Gabbana” are the last names of the stylists who founded the “Dolce & Gabbana” maison in the mid 1980’s. “Dolce & Gabbana” is the Complainant’s name. The Complainant is the exclusive licensee of the trademark DOLCE & GABBANA, including the following trademark registrations:
October 4, 1985
February 14, 1990
July 13, 1994
It has been held by a previous UDRP panel that the trademark DOLCE & GABBANA is a well-known trademark (see Dolce & Gabbana S.r.l. v. Domains by Proxy, Inc. / Renee Carr, WIPO Case No. D2011-0597).
The Disputed Domain Names were both registered on October 27, 2012. The Disputed Domain Names each resolved to different websites on or before the Complaint. Both websites use the words “Dolce Gabbana” and the letters “D&G” in relation to offerings for sale of fashion apparel and accessories. The websites appear to present online shopping cart facilities.
Besides the WhoIs records of the Disputed Domain Names, no further information about the Respondent is available in this proceeding.
5. Parties’ Contentions
The Complainant contends that:
1) The Disputed Domain Names are identical or confusingly similar to the trademark DOLCE & GABBANA. They are composed of the same root of the trademarks licensed to the Complainant and the Complainant’s website. The added suffix “buy” or “soldes” does not extenuate the likelihood of confusion with the mark DOLCE & GABBANA;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Respondent was not authorized, licensed or otherwise allowed by the Complainant or the owners of the trademark DOLCE & GABBANA to use the trademark or to register a domain name incorporating the trademark. The Respondent is not commonly known by that name; and
3) The Disputed Domain Names were registered and are being used in bad faith. The trademark DOLCE & GABBANA is well-known. The Respondent knew or should have known of the trademark prior to registering the Disputed Domain Names. There is no evidence of any reasonable efforts by the Respondent to find out about third party rights in the Disputed Domain Names. Registration of the Disputed Domain Names prevents the Complainant from reflecting their mark in corresponding domain names. The Respondent is not offering a bona fide offering of goods or services with the Disputed Domain Names. The Respondent has intentionally attempted 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 products on the website. The products offered on the websites resolved from the Disputed Domain Names offered counterfeit products under the trademark DOLCE & GABBANA for sale.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of Proceeding
The default language of the proceeding in this case is Chinese as the registration agreement is in the Chinese language. The Complainant has requested that English (or alternatively French) be adopted as the language of proceeding instead. Having considered the circumstances and the Complainant’s submissions, the Panel determines that English be adopted as the language of the proceeding for the following reasons:
1) The websites resolved from the Disputed Domain Names were entirely in English and French. The Respondent has a demonstrable working knowledge of the English language.
2) The Complainant is an Italian corporation and the Complainant’s authorized representative is also Italian. The Complaint has been submitted in English. The Complainant also has a demonstrable working knowledge of the English language.
3) Although the Complainant did not specifically say so, it would appear to the Panel from the submissions of the Complainant that the Complainant is not conversant in Chinese and that the Complainant would feel unfairly burdened if Chinese were to be maintained as the language of the proceeding.
4) The Respondent has not filed any response or commented on the language of the proceeding.
5) Requiring the Complainant to submit a Chinese translation of the Complaint would lead to unnecessary delay to the proceedings and potentially increase the Complainant’s cost of proceeding.
To succeed in this proceeding, the Complainant must show that the 3 limbs of paragraph 4(a) of the Policy are established on the facts, namely:
1) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
3) The Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant’s trademark rights are properly evidenced by the trademark registrations in the mark DOLCE & GABBANA and the exclusive licence granted to them by the trademark owners. The ampersand sign “&” is not a valid character in a domain name and registrants, in registering a sign comprising an ampersand as a domain name will typically either omit it or spell it out as “and”. The omission of an ampersand or its conversion to the word “and” in a domain name should not normally result in a sign which is distinguishable from the original. In the present case, the Panel is of the view that the mark DOLCE & GABBANA remains readily recognizable and distinctive in the Disputed Domain Names. The only other difference between the Disputed Domain Names and the mark DOLCE & GABBANA is the respective addition of the suffix “soldes” (which means “sales” in French) and “buy”. Both of these are words descriptive of the goods associated with the mark DOLCE & GABBANA. The Panel agrees with the Complainant that neither suffix serves to distinguish the respective Disputed Domain Name from the mark DOLCE & GABBANA. Therefore, the Panel holds that the Disputed Domain Names are confusingly similar to the mark DOLCE & GABBANA and the first limb of paragraph 4(a) of the Policy is established.
B. Rights or Legitimate Interests
The Complainant has confirmed that the Respondent is not authorized, licensed or otherwise allowed by the Complainant or the owner of the trademark DOLCE & GABBANA to use the trademark DOLCE & GABBANA or to register a domain name incorporating the same. There is no evidence to indicate that the Respondent is commonly known by either of the Disputed Domain Names. There is also no evidence before the Panel to suggest that such use of the Disputed Domain Names is a legitimate noncommercial use. On the other hand, it is evident from the content of the websites resolved from each Disputed Domain Name that the Respondent is using the trademark DOLCE & GABBANA and associating the same with goods (i.e., fashion apparel and accessories) it is offering for sale on the websites. In the circumstances, the Panel is of the view that the evidence before the Panel establishes a prima facie case that the Respondent does not have any rights or legitimate interests in either of the Disputed Domain Names. In view of the absence of a Response, the Respondent has failed to rebut the prima facie case and the Panel goes on to hold that the second limb of paragraph 4(a) of the Policy is also established.
C. Registered and Used in Bad Faith
Based on the evidence submitted, the Panel accepts that the trademark DOLCE & GABBANA is a well-known mark. It is inconceivable that the Respondent was unaware of the trademark DOLCE & GABBANA. The content of the websites resolved from the Disputed Domain Names contradicts any assumption otherwise. The websites clearly exhibit the Respondent’s familiarity and knowledge of the DOLCE & GABBANA trademark and its associated goods. The websites are obviously intended for commercial gain with their shopping cart facilities and extensive listing of prices associated with goods under the trademark DOLCE & GABBANA. The Panel is convinced that the Respondent by using the Disputed Domain Names, has intentionally attempted to attract, for commercial gain, Internet users to the websites resolved therefrom by creating a likelihood of confusion with the Complainant’s DOLCE & GABBANA trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites and the products on the website. Such a circumstance falls squarely within the situation of bad faith outlined in paragraph 4(b)(iv) of the Policy. The Panel therefore holds accordingly that the third limb of paragraph 4(a) of the Policy is established.
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 Names, <dolcegabbanabuy.com> and <dolcegabbanasoldes.com>, be transferred to the Complainant.
Kar Liang Soh
Date: June 25, 2013