WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Levitas S.p.A. v. qi rao, Zhong Yuhua
Case No. D2014-1125
1. The Parties
The Complainant is Levitas S.p.A. of Montegranaro, Italy, represented by Società Italiana Brevetti S.p.A., Italy.
The Respondents are qi rao of Nanchang, Jiangxi, China; Zhong Yuhua of /Kunming, Yunnan, China.
2. The Domain Names and Registrar
The disputed domain names <bikkembergsinitalia.org>, <bikkembergstiendas.com> and <ofertasbikkembergs.com> are registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2014. On June 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 1, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant and providing the contact details.
On July 2, 2014, the Center transmitted an email in both English and Chinese to the parties regarding the language of the proceeding. On July 3, 2014, the Complainant submitted its request that English be the language of the proceeding by email to the Center. The Respondents did not make any submissions regarding the language of the proceeding within 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”).
On July 9, 2014, the Center transmitted an email to the parties in both English and Chinese regarding the two seemingly distinct Respondents, noting the Complainant’s request for consolidation in the Complaint, and informing the parties there appeared to be at least prima facie grounds sufficient to warrant putting the Complainant’s request before a panel.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint in both English and Chinese, and the proceeding commenced on July 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2014. The Respondents did not submit any Response. Accordingly, the Center notified the Respondents’ default on July 30, 2014.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on August 7, 2014. 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 incorporated in Italy and is the owner of several registrations worldwide for the trademarks DIRK BIKKEMBERGS and BIKKEMBERGS (the “Trade Marks”).
The Respondents are apparently individuals based in China.
C. The Disputed Domain Names
The disputed domain names were registered on November 2, 2013, July 29, 2013 and November 8, 2013, respectively.
D. The Websites at the Disputed Domain Names
The websites at the disputed domain names (the “Websites”) appear to promote and offer for sale clothing, footwear and fashion accessories under the Trade Marks.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint.
The Trade Marks are based upon the name of the fashion designer, Dirk Bikkembergs. The Complainant and its predecessors in title have been using the Trade Marks continuously since 1986, the date when Dirk Bikkembergs launched his first collection of shoes under the Trade Marks.
The disputed domain names are confusingly similar to the Trade Marks. They incorporate the BIKKEMBERG Trade Mark in its entirety, together with the non-distinctive words “in italia” (meaning “in Italy” in Italian), “tiendas” (meaning “shops” in Spanish) and “ofertas” (meaning “deals” in Spanish).
The Respondents have no rights or legitimate interests in respect of the disputed domain names.
The Respondents are not commonly known by the disputed domain names and are not making a bona fide commercial use of the disputed domain names.
The disputed domain names have been registered and used in bad faith.
The Respondents have used the disputed domain names in respect of the Websites which offer for sale clothing, footwear and fashion accessories under the Trade Marks which are imitations of the Complainant’s official products and are offered for sale at 50-70% reductions to the normal pricing for the Complainant’s official products. The Websites also contain misleading copyright notices.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the registration agreements for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that English be the language of the proceeding, for the following reasons:
(1) A Reverse WhoIs search performed by the Complainant shows several domain names apparently registered in the name of the Respondents which resolve to English language websites, which demonstrates that the Respondents are familiar with and able to communicate in English;
(2) The Complainant is not familiar with Chinese, and conducting the proceeding in Chinese would disadvantage the Complainant as it would have to incur substantial additional expense and inconvenience in having the Complaint and annexes translated into Chinese.
The Respondents did not file a Response and did not file any submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.
The Panel notes, in addition to the Complainant’s submissions, one of the Websites is in Italian, and the other two are in Spanish.
The Panel finds, in all the circumstances, that sufficient evidence has been adduced to suggest that the Respondents are conversant in the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2 Consolidation of Respondents
Previous UDRP decisions suggest that consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve (Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281).
The arguments relied upon by the Complainant in support of its consolidation request include:
1. The WhoIs searches for the disputed domain names share the same registrant email address, Registrar, name servers, and registrant country of origin;
2. The disputed domain names all resolve to Websites that reproduce, without authorization or approval, the Trade Marks and offer for sale shoes and other garments bearing the Trade Marks which are imitations of the Complainant’s official products, applying significant reductions; and
3. The Websites have almost identical layouts and some of the pictures of the garments offered for sale thereon are identical.
The Respondents did not file a Response.
In all the circumstances, the Panel concludes sufficient evidence has been adduced to enable the conclusion to be drawn that common control is being exercised over the disputed domain names.
In all the circumstances, the Panel determines, under paragraph 10(e) of the Rules, that consolidation of the Respondents is procedurally efficient and equitable to all the parties, is consistent with the Policy and Rules, and comports with previous relevant UDRP decisions in respect of this issue.
6.3 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration which predate the date of registration of the disputed domain names by several decades.
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”.
The Panel finds the addition of the generic words “in italia”, “tiendas” and “ofertas” does not serve to distinguish the disputed domain names from the Trade Marks in any significant way.
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Marks and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondents have rights or legitimate interests in the disputed domain names:
(i) before any notice to the Respondents of the dispute, the Respondents’ use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondents (as an individual, business, or other organisation) have been commonly known by the disputed domain names even if the Respondents have acquired no trade mark or service mark rights; or
(iii) the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondents to register or use the disputed domain names or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondents’ registration of the disputed domain name by several decades. The Panel finds on the record that there is therefore a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondents to produce evidence to rebut this presumption.
The Respondents have failed to show that they have acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the evidence suggests the disputed domains have been used to facilitate the sale of significantly cheaper copies of the Complainant’s products, via the Websites. Even if the products offered for sale on the Websites are not imitation BIKKEMBERGS products, the Panel notes the Respondents have not on the Websites, or otherwise, sought to disclaim any relationship with the Complainant. To the contrary, in the Panel’s view, the copyright notices used on the Websites amount to an attempt to add a veneer of credibility to the Respondents’ activities.
There has been no evidence adduced to show that the Respondents have been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondents are making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondents have failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant asserts that the Respondents have registered and used the disputed domain names in respect of Websites offering for sale imitation BIKKEMBERGS clothing, footwear and fashion accessories at prices significantly cheaper than the Complainant’s official products. The Complainant has not filed any evidence to support this assertion, however, in all the circumstances, the Panel determines it is reasonable to conclude that the goods offered for sale on the Websites are likely imitations. Even if they are not counterfeit goods, in all the circumstances, the Panel concludes the unauthorised offer for sale on the Websites of goods under the Trade Marks, absent any disclaimer as to the Respondents’ relationship with the Complainant, amounts to clear evidence of bad faith.
The Panel’s conclusion in this regard is fortified by the evidence of the use of copyright notices on the Websites.
The Panel therefore finds, in all the circumstances, the requisite element of bad faith registration and use has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <bikkembergsinitalia.org>, <bikkembergstiendas.com> and <ofertasbikkembergs.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: August 21, 2014