WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valentino S.p.A. v. hong chen, chen hong
Case No. D2014-2129
1. The Parties
The Complainant is Valentino S.p.A. of Milano, Italy, represented by Studio Barbero, Italy.
The Respondent is hong chen, chen hong of Fuzhou, Fujian Province, China.
2. The Domain Name and Registrar
The disputed domain names <cheapvalentinooutlet.com> and <valentinooutletonline.com> (the "Domain Names") are 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 December 5, 2014. On December 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 8, 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 December 9, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, 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 in both Chinese and English, and the proceeding commenced on December 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 5, 2015.
The Center appointed Karen Fong as the sole panelist in this matter on January 14, 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
The Complainant was founded in 1960 by legendary fashion designer Valentino Garavani and his business partner. Valentino is a world renowned luxury fashion brand and available in over 90 countries around the world. The VALENTINO trade mark (the "Trade Mark") has been used for the past 50 years in connection with Haute Couture as well as ready-to wear clothes, handbags, small leather goods, luggage, shoes, jewelry, gifts, eyewear and fragrances. Its advertising spend in 2013 amounted to EUR 13 million, of which EUR 1.5 million was spent in China. It has an impressive client base being very popular amongst celebrities and royalty. Valentino has a worldwide reputation as a leading luxury brand.
The Trade Mark is registered in many countries around the world including in Europe and China. The Complainant is also the owner of the V logo and ROCKSTUD trade marks. It also owns more than 100 domain names which include the name "Valentino", including the domain name <valentino.com>.
The Respondent registered the Domain Name <valentinooutletonline.com> on June 14, 2014 and <cheapvalentinooutlet.com> on June 15, 2014. The Domain Names were connected to websites (the "Websites") featuring the trade marks VALENTINO, the V Logo and the ROCKSTUD, offering for sale shoes, handbags and clothing bearing the Trade Mark which are likely to be counterfeit as they are being sold at very low prices. The Websites also contained images taken from the Complainant's website "www.valentino.com".
The Complainant's legal representatives sent a cease and desist letter to the Respondent at the addresses listed on the WhoIs records. As these details were in accurate or nonexistent, the Domain Names were suspended by the Registrar following a report by the Complainant's representatives to InterNic.
5. Parties' Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Names and that the Domain Names were registered and being used in bad faith. The Complainant requests transfer of the Domain Names.
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 Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are 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 Names; and
(iii) The Domain Names were registered and being used in bad faith.
B. Preliminary Procedural Issues
(i) Consolidation of the Proceeding
The Complainant has requested that the proceeding in connection with the Domain Names be consolidated to a single administrative proceeding. The Panel is satisfied that the Domain Names are clearly registered by the Respondent notwithstanding that one of the addresses in the WhoIs details is different.
(ii) Language of the Proceeding
The Rules, paragraph 11, provide 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 proceeding. According to the information received from the Registrar, the language of the registration agreement for the Domain Names is Chinese.
The Complainant submits in section IV of the Complaint and in an email to the Center on December 9, 2014 that the language of the proceeding should be English. The Complainant contends amongst other things that:
1) The Complainant communicates in English and to be required to translate the papers into Chinese would cause inordinate delay and expense;
2) The Websites were in English demonstrating that the Respondent understands English;
3) The Respondent deliberately chose to have Chinese as the language of the registration agreement in order to frustrate the Complainant to the greatest extent possible from pursuing him/her from cybersquatting and trade mark infringement. This is evidenced by the fact that the products offered for sale on the Websites are likely to be counterfeit and the WhoIs details inaccurate.
The Panel accepts the Complainant's submissions regarding the language of the proceeding. It would appear that the Respondent understands English. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. However as the Respondent has provided inaccurate WhoIs details, there has been no Response by the Respondent. Having considered all the circumstances of this case, the Panel is satisfied that the Respondent is familiar with the English language and 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 Trade Mark.
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 Names include as their more prominent element the Trade Mark. 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 domain suffix. Further, the addition of the words "outlet", "online" and "cheap" do not negate the confusing similarity encouraged by the Respondent's complete integration of the VALENTINO trade mark in the Domain Names.
The Panel finds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
The Complainant alleges that the Respondent is not a licensee, authorized agent or in any other way authorized to use its well-known VALENTINO trade mark in the Domain Names or any other manner. The Respondent is not commonly known by the Domain Names nor has he/she provided any evidence of use or demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services. The products offered for sale on the Websites are being sold at substantially lower prices than genuine products bearing the Trade Mark. The above is for the Panel sufficient evidence to show that the goods offered for sale and sold by the Respondent are counterfeit. There can be no right or legitimate interest in the sale of counterfeits. The Complainant has satisfied its burden of proof of showing that the Respondent lacks rights or legitimate interests in the Domain Names (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 Respondent has no rights or legitimate interests in respect of the Domain Names.
E. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the domain names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Trade Mark when it registered the Domain Names. The Complainant has provided sufficient evidence that the registration of the Domain Names postdates the registration and extensive use of the Trade Mark.
Thus, the Panel concludes that the Respondent deliberately registered the Domain Names in bad faith.
The Panel also concludes that the actual use of the Domain Names was in bad faith. The products offered for sale on the Websites are allegedly counterfeit Valentino products for reasons set out in paragraph 6.D. The use by a respondent of a domain name which includes a well-known 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).
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 Websites are and the products sold on them are those of or authorised or endorsed by the Complainant. The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent's registration and use of the Domain Names are in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <cheapvalentinooutlet.com> and <valentinooutletonline.com> be transferred to the Complainant.
Date: January 30, 2015