WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Levitas S.p.A. v. Privacyprotect.Org / lin yunting
Case No. D2013-1024
1. The Parties
The Complainant is Levitas S.p.A. of Montegranaro, Italy, represented by Società Italiana Brevetti S.p.A., Italy.
The Respondent is Privacyprotect.Org of Nobby Beach, Australia / lin yunting of Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <bikkembergsschuheoutlet.com> (“the Disputed Domain Name”) is registered with Cloud Group Limited (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 Disputed Domain Name. On June 7, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 14, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 18, 2013.
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 June 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 16, 2013.
The Center appointed Jacques de Werra as the sole panelist in this matter on July 26, 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 of a portfolio of trademarks and domain names as well as of other intellectual property rights related to the brands DIRK BIKKEMBERGS and BIKKEMBERGS. The Complainant's trademarks BIKKEMBERGS and DIRK BIKKEMBERGS come from the name of the fashion designer Dirk Bikkembergs, who launched in 1986 a collection of shoes under the brand DIRK BIKKEMBERGS.
The Complainant is the owner of numerous registrations for the trademarks DIRK BIKKEMBERGS and BIKKEMBERGS, which include the following trademarks covering, inter alia, shoes, clothing, bags, belts and other fashion accessories in classes 18 and 25 (together “the Trademark”):
- International Registration No. 875256 for the word mark DIRK BIKKEMBERGS, registered on January 6, 2006, designating Albania, Australia, Bahrain, Belarus, Bosnia and Herzegovina, Bulgaria, China, Croatia, Egypt, Kazakhstan, Republic of Korea, the former Yugoslav Republic of Macedonia, Montenegro, Morocco, Norway, Romania, Russian Federation, Serbia, Singapore, Switzerland, Syrian Arab Republic, Turkey, Ukraine, United States of America, and Vietnam;
Community Trademark Registration No. 3474046 for the word mark of DIRK BIKKEMBERGS, registered on April 27, 2005.
The Trademark has been used for several years for clothing, shoes and fashion accessories, making the brands BIKKEMBERGS and DIRK BIKKEMBERGS well-known in the European Union and around the world. The Complainant sells its products online at the website “www.store.bikkembergs.com”.
THE DISPUTED DOMAIN NAME WAS REGISTERED ON MARCH 26, 2013. IT RESOLVES TO A WEBSITE WHICH OFFERS FOR SALES PRODUCTS OF SHOES AND GARMENTS THAT BEAR THE COMPLAINANT'S TRADEMARK AND WHICH SEEM TO BE IMITATIONS OF COMPLAINANT'S ORIGINAL PRODUCTS.
5. Parties' Contentions
The Complainant claims that the Disputed Domain Name is confusingly similar to the Trademark because it contains the “bikkembergs” element in its entirety, which is identical to the Complainant's BIKKEMBERGS trademark and because the addition of the element “schuheoutlet” (German for “shoe outlet”) in the Disputed Domain Name is descriptive and as such cannot counterbalance the circumstance that the Disputed Domain Name reproduces the Complainant's BIKKEMBERGS trademark (which is also the main distinctive component of the Complainant's trademark DIRK BIKKEMBERGS).
The Complainant further claims that the Respondent has no rights or legitimate interests in the Disputed Domain Name already because the Disputed Domain Name was registered by the Respondent with the Complainant's Trademark and Complainant's business in mind. The Complainant has neither authorized, nor somehow given its consent to, anyone to register and use the Disputed Domain Name. The Complainant has neither authorized, nor somehow given its consent to anyone to use the Trademark and related distinctive signs at the Disputed Domain Name <bikkembergsschuheoutlet.com>. The Respondent is furthermore not known and cannot be known by the Disputed Domain Name, which clearly refers to the Trademark to which the Complainant only has rights. Moreover, the Respondent does not make a legitimate noncommercial use of the Disputed Domain Name, since the website associated with it is evidently aimed at disrupting, for commercial gain, the Complainant's business.
The Complainant finally claims that the Disputed Domain Name was registered and is being used in bad faith because the Disputed Domain Name resolves to a website which offers for sale shoes and other garments bearing the Complainant's Trademark, which are imitations of the Complainant's official products, and are offered at significant discount prices (in the range of 50 - 70%) compared to the original products of the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussions and Findings
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding. Thus, for the complainant to succeed, it must prove all of the three elements under the Policy:
(i) the respondent's 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 respondent's domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights to the Trademark in various countries, including in China where the Respondent is based.
The Panel also notes that the Trademark has reached a high degree of global distinctiveness and recognition, as evidenced by the documents filed by the Complainant, which has not been disputed by the Respondent.
A comparison between the Disputed Domain Name and the Trademark shows that the Disputed Domain Name contains the Trademark, i.e. the term “bikkembergs”, to which a descriptive element has been added, i.e. “schuheoutlet” (which means “shoes outlet” in English).
As a matter of principle, the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9.
This is particularly true in this case because the descriptive terms (“schuheoutlet” / “shoes outlet”) reinforce the impression that the Disputed Domain Name is associated to a website where products of the Complainant could be found at cheaper prices thereby reinforcing the association with the Complainant and the Trademark. See, by analogy, Swarovski Aktiengesellschaft v. yuefang wu, WIPO Case No. D2013-0741.
As a result, based on the rights of the Complainant on the Trademark and on the confusing similarity between the Trademark and the Disputed Domain Name, the Panel finds that the conditions of paragraph 4(a)(i) of the Policy are met.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
In this case, the Panel finds no evidence that the Respondent ever had any rights or legitimate interests in the Disputed Domain Name. Based on its uncontradicted allegations, the Complainant has demonstrated that the Disputed Domain Name resolves to a website with sells products under the Trademarks which seem to be imitations of Complainant's original products and are sold at significant discount prices (50-70%) compared to the original products of the Complainant.
The Panel further acknowledges that the Complainant never authorized, licensed or permitted the Respondent to use the Trademark in any manner and that the Respondent is not commonly known by the Disputed Domain Name.
On this basis, the Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Respondent has not established any rights to or any legitimate interests in the Disputed Domain Name.
The Panel is consequently satisfied that the Complainant has established that the second requirement of paragraph 4(a) of the Policy is met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, 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 location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
The Panel holds that the Respondent's bad faith registration of the Disputed Domain Name results from the fact that the Trademark is so distinctive that the Respondent could not possibly be unaware of its existence at the time when it registered the Disputed Domain Name. In the absence of any response by the Respondent and in view of the distinctive nature of the Trademark, the Panel accepts that the Respondent clearly had the Trademark and the Complainant in mind at the time of registration of the Disputed Domain Name which constitutes bad faith registration under the Policy.
In addition, the Respondent's use of the Disputed Domain Name for selling products under the Trademark which are imitations of Complainant's original products with a significant discount constitutes bad faith. This constitutes an attempt by the Respondent to attract, for commercial gain, Internet users to its website or other on-line location, 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 location or of a product or service on its website or location, as per paragraph 4(b)(iv) of the Policy. See, e.g., Swarovski Aktiengesellschaft v. yuefang wu, WIPO Case No. D2013-0741; Levitas S.p.A. v. Zhao Sha, WIPO Case No. D2013-0370; Crocs Inc. v. Alex Xie, WIPO Case No. D2011-1500.
For these reasons, the Panel considers that the Complainant has established that the Disputed Domain Name was registered and is being used in bad faith by the Respondent pursuant to paragraph 4(a)(iii) 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 <bikkembergsschuheoutlet.com> be transferred to the Complainant.
Jacques de Werra
Date: August 9, 2013