WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stuart Weitzman IP, LLC v. Lin Qin
Case No. D2014-2050
1. The Parties
Complainant is Stuart Weitzman IP, LLC of New York, New York, United States of America, represented by The Gioconda Law Group PLLC, United States of America ("U.S.").
Respondent is Lin Qin of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <stuartweitzman.xyz> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 21, 2014. On November 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 2014, 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 November 25, 2014, the Center transmitted an email to the parties in both English and Chinese regarding the language of the proceeding. On November 27, 2014, Complainant submitted its request that English be the language of the proceeding. Respondent did not submit any comments 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").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint in both Chinese and English, and the proceeding commenced on December 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 24, 2014.
The Center appointed Francine Tan as the sole panelist in this matter on January 7, 2015. 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
Complainant is a designer, manufacturer and retailer of women's footwear and handbags. It owns the domain name <stuartweitzman.com> which is used for its website. Goods under the STUART WEITZMAN trade mark are sold to consumers through Complainant's chain of retail stores, partnerships with department stores, and from its website.
Complainant has spent considerable time, effort and money in developing its brand of products. Complainant's products have featured in numerous editorials in leading domestic and international magazines and journals. Complainant has thereby developed a substantial reputation and goodwill worldwide in its business and trade mark STUART WEITZMAN.
The STUART WEITZMAN has been registered in the U.S. (e.g. Registration Nos. 1,386,002, 2,749,908 and 3,474,821). Complainant's U.S. federal trade mark registration No. 1,386,002 shows that first use of the mark in relation to handbags started in January 1984.
The disputed domain name was registered on October 22, 2014.
5. Parties' Contentions
(i) The disputed domain name is "at least" confusingly similar to Complainant's STUART WEITZMAN trade mark. The entire mark is incorporated into the disputed domain name.
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name. None of the circumstances enumerated in paragraph 4(c) of the Policy exist in this case to support Respondent's use and registration of the disputed domain name:
(a) Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services. Respondent's website resolves to a website that promotes a series of hyperlinks that lead to the sale of counterfeit merchandise. Respondent's website provides access to a link for "www.blackfridaydealsinc.com" which is a website for counterfeit merchandise. Respondent has, in this website, misappropriated an image that is owned by Complainant and has been displayed prominently on Complainant's webpage.
(b) Respondent is not commonly known by any consisting in whole or in part of the wording "Stuart Weitzman". Respondent is not an agent or licencee of Complainant.
(c) Respondent has misappropriated the well-known STUART WEITZMAN trade mark for the purpose of profiting from advertising links for the sale of counterfeit goods. Such use is not legitimate noncommercial or fair use under the Policy.
(iii) The disputed domain name was registered and is being used in bad faith. Respondent had constructive knowledge of Complainant's trade mark rights in STUART WEITZMAN and has attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant's trade mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The disputed domain name was registered well after Complainant's registration of the STUART WEITZMAN trade marks. Complainant had deposited its trade mark with the Trademark Clearinghouse ("TMCH") but Respondent persisted with the registration of the disputed domain name despite having been sent a warning notice from the TMCH of Complainant's trade mark. The cumulative circumstances strongly suggest opportunistic registration of the disputed domain name to ride off the goodwill and reputation of Complainant's trade mark. Respondent's use of the disputed domain name to provide a series of hyperlinks that lead to the sale of counterfeit merchandise is also evidence of bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Language of the Proceeding
Paragraph 11 of the Rules stipulates that:
"(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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 proceeding.
(b) The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding."
The Complaint was filed in the English language whereas the Registration Agreement was in the Chinese language. In the exercise of the Panel's discretion under paragraph 11 of the Rules, the Panel nevertheless holds that English shall be the language of the administrative proceeding in this case. The Panel has to balance the interest of both parties when coming to a decision. In this regard, it is apparent from the content of Respondent's website that Respondent is comfortable with English. Respondent did not object to Complainant's request for the language of the proceeding to be English even though given the opportunity to respond on this issue. On the other hand, Complainant does not communicate in Chinese and requiring Complainant to translate the Complainant and annexes thereto would be both highly time consuming and costly. In the interest of expediency and having considered the circumstances of this case, the Panel therefore rules accordingly.
Substantive elements of the Proceeding
To succeed in obtaining an order in its favour, Complainant must prove each of the elements of paragraph 4(a) of the Policy:
(i) That the disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That Respondent has registered and used the disputed domain name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that paragraph 4(a)(i) of the Policy has been established by Complainant. Complainant has shown that it has trademark rights in STUART WEITZMAN. As the entire mark has been incorporated in its entirety in the disputed domain name, and the new generic Top-Level Domain ("gTLD") ".xyz" should typically be disregarded for the purpose of the first element of the Policy, the Panel concludes that the disputed domain name is identical to Complainant's trade mark.
B. Rights or Legitimate Interests
The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is not known to Complainant and has never been authorized to use Complainant's STUART WEITZMAN trade mark or to register a domain name incorporating the trade mark. There is no evidence (nor would the Panel expect in this case, in the absence of clear evidence to the contrary) that Respondent (who is of Chinese origin) is commonly known by the name Stuart Weitzman.
The use of the disputed domain name to sell counterfeit products does not constitute a bona fide offering of goods.
Respondent failed to respond or to demonstrate with evidence that it has rights or legitimate interests in the disputed domain name.
In the absence of evidence to the contrary, the Panel concludes that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Having reviewed the evidence submitted by Complainant, the Panel notes that the website at the disputed domain name resolves to a web page displaying Complainant's products and links that lead to what appears to be counterfeit merchandise, and accordingly agrees that the cumulative circumstances of this case show bad faith registration and use of the disputed domain name. The circumstances of this case are described in and fall within paragraph 4(b)(iv) of the Policy.
The Panel concludes that Complainant has satisfied 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 <stuartweitzman.xyz> be transferred to Complainant.
Date: January 10, 2015