WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Levitas S.p.A. v. Guoqiang Meng
Case No. D2013-1019
1. The Parties
The Complainant is Levitas S.p.A. of Montegranaro, Fermo, Italy, represented by Società Italiana Brevetti S.p.A., Italy.
The Respondent is Guoqiang Meng of Yongji, Shanxi, China.
2. The Domain Name and Registrar
The disputed domain name <chaussuresbikkembergs.com> (the“Domain Name”) is registered with Shanghai Yovole Networks, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2013. On June 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 9, 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 June 13, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On June 13, 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 June 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2013.
The Center appointed Karen Fong as the sole panelist in this matter on July 18, 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
The Complainant is the owner and assignee of the trade marks DIRK BIKKEMBERGS and BIKKEMBERGS (the “Brand”). The trade marks are registered in many different jurisdictions including the European Union, United States of America and China. The earliest trade mark registration for DIRK BIKKEMBERGS was in 1987. The earliest trade mark registration for BIKKEMBERGS was 2005.
The Brand was launch by the designer Dirk Bikkembergs in 1986 for a range of shoes. The Brand has now grown into a diversified fashion brand featuring clothing, shoes and fashion accessories for men, women and children. The Brand is also well known in the football world as it has designed football kit and shoes for international teams including F.C. Inter Milan, Toronto F.C. and the Slovenia national team.
Products under the Brand are sold through official stores, distributors and dealers worldwide as well as through an online store connected to the Complainant’s website at “www.bikkembergs.com”. Over the past few years, the Brand has acquired reputation and goodwill. Besides the above domain name, the Complainant also owns a variety of domain names which includes the Brand within the name.
The Domain Name was registered on March 14, 2013. It was connected to a website which features the brand BIRKENSTOCK prominently including adverts and a sketch of the BIRKENSTOCK sandal (the “Website”). However the products offered for sale are those bearing the Brand. These products appear to be counterfeit as they are being sold for about 40-70% less than the Complainant’s official products. At the time of writing the decision, the Website is not in operation.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Brand, 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.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
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:
(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.
B. Preliminary Procedural Issue – Language of the Proceeding
Paragraph 11 of the Rules provides 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 proceedings. According to the information received from the Registrar, the language of the registration agreement is Chinese.
The Complainant submits in Part IV of the Complaint that the language of the proceeding should be English. The Respondent is the registrant of 57 domain names many of which resolve to websites in the English language. The Complainant is not familiar with the Chinese language. Conducting proceedings in the Chinese language would be a disadvantage to the Complainant as it would have to incur substantial added expense and inconvenience in getting the papers filed translated into Chinese. The Respondent did not comment on the language of the proceeding by the specified due date.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding and is satisfied that the Respondent appears to be familiar with the English language. The Website was also in the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the DIRK BIKKEMBERGS and BIKKEMBERGS trade marks.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Name is made up primarily of the trade mark BIKKEMBERGS. The addition of the word “chaussures” which is French for “shoes” and therefore describes the products bearing the trade mark does nothing to minimise the risk of confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic Top Level Domain suffix “.com”. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
The Complainant contends that the Respondent is not authorized to use the Brand within the Domain Name. The Respondent is not known by the Domain Name. Further, the prices for the products offered for sale on the Website are about 40-70% lower than the retail price of the Complainant’s official products which makes it likely that the products are counterfeit. There can be no legitimate interest in the sale of counterfeits (see Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552 and Farouk Systems, Inc v. QYM, WIPO Case No. D2009-1572).
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 responded 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.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
E. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the disputed domain name has been registered and is being used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Complainant’s trade marks when it registered the Domain Name. The Complainant has provided sufficient evidence that the Domain Name registration post dates the registration of the Brand as trade marks around the world. The very incorporation of the Brand in the Domain Name and the offer for sale of imitation products bearing the Brand confirms the Respondent’s awareness of the Complainant’s trade mark.
Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The products offered for sale on the Website appear to be counterfeit for reasons set out in paragraph 6D above. The use by a respondent of a domain name which includes a trade mark to resolve to a website which offers and sells counterfeit products under that trade mark is evidence of bad faith registration and use. (See Burberry Limited v Jonathan Schefren, WIPO Case No. D2008-1546 and Prada S.A. v Domains for Life, WIPO Case No. D2004-1019).
In addition, the Website was set up to deliberately mislead Internet users that it is connected to, authorised by or affiliated to the Complainant. The Website displayed the following notices at the bottom of the home page: “Chaussures Bikkembergs pas cher, chausseres Bikembergs soldes, chausseures Bikkembergs home”. The Website also prominently displayed one of the Complainant’s competitors, BIRKENSTOCK trade mark and products.
From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s website is and the products sold on it are those of or authorised or endorsed by the Complainant.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) 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 disputed domain name <chaussuresbikkembergs.com> be transferred to the Complainant.
Date: July 30, 2013