WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vertu Corporation Limited v. David Szn and Jun Luo
Case No. D2015-0185
1. The Parties
The Complainant is Vertu Corporation Limited of Hampshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stobbs IP Limited, United Kingdom.
The Respondent is Jun Luo of Shenzhen, Guangdong, China and David Szn of Indiana, United States of America (“United States”).
2. The Domain Names and Registrar
The Disputed Domain Names <svertu.com> and <vertu-signature.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2015. On February 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 6, 2015, 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.
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 February 11, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2015.
The Center appointed Anna Carabelli as the sole panelist in this matter on March 10, 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 is a British manufacturer and retailer of luxury, handmade mobile phones, established by Finnish mobile-phone manufacturer Nokia Corporation in 1998 and selling its products under the trademark VERTU.
The mark is protected as a registered trademark in many countries; annexed to the Complaint is a list of several national, international and community trademark registrations for VERTU trademark and the V logo trademark filed by the Complainant (see Annexes 10-11).
VERTU products are renowned for hand-craftsmanship, customization and for the use of precision-engineered components and precious materials. They are sold worldwide in over 60 countries, including China and United States, through the self-owned boutiques, the commercial partners’ stores and online through the Complainant’s official website “www.vertu.com”. (see Annexes 8, 9 and 13)
The Complainant also owns other domain names incorporating the VERTU trademark, all pointing to the Complainant’s official website (see Annex 14).
In 2002, the Complainant introduced “SIGNATURE”, the flagship model of mobile phones. In this range, various models were launched, for example SIGNATURE DIAMOND, SIGANTURE COBRA and, in June 2014, the latest one, SIGNATURE TOUCH.
SIGNATURE TOUCH is also a trademark registered by the Complainant (see Annex 12).
The Disputed Domain Names <svertu.com> and <vertu-signature.com> were registered respectively on October 27, 2013 and on January 7, 2012, as shown by a copy of the Registrar’s WhoIs database annexed to the Complaint. The Respondent is apparently located both in China (in Shenzhen, Guangdong) and in United States (Bycle, Indiana), although the personal information in the WhoIs database are inaccurate since the postcode “36101” indicated in the WhoIs is located in Montgomery, Alabama, United States and the address (Jess Road, Bycle) does not appear to exist.
According to the evidence submitted by the Complainant, the Disputed Domain Names were opening to websites offering for sale VERTU branded products at prices that are considerably lower than those of original VERTU products (see Annexes 3, 4 and 6). The Panel notes that the domain name <vertu-signature.com> presently directs users to a webpage having no content and showing the message “This site is currently unavailable”, while the website identified by the domain name <svertu.com> is presently dedicated to the sale of domain names, including <svertu.com> itself.
5. Parties’ Contentions
The Complainant contends that the Disputed Domain Names are identical or confusingly similar to its registered trademarks VERTU and SIGNATURE, since for the first one (<svertu.com>), the only difference to the Complainant’s registered trademark VERTU is the use of the letter “S” at the beginning of the domain name, while the second one (<vertu-signature.com>) incorporates the Complainant’s registered trademark VERTU in its entirety alongside the name of the Complainant’s flagship mobile phone model SIGNATURE.
In addition, the Complainant asserts that the Respondent has no rights or legitimate interests in the domain name. The Complainant has no relationship with the Respondent and has not authorized it to use the VERTU and SIGNATURE marks. The Respondent is using the Disputed Domain Names to sell counterfeiting VERTU goods as suggested by the fact that VERTU branded products displayed on the Respondent’s website are offered at prices that are considerably lower than those of original VERTU products and marketed as “viable alternatives to the original luxury item (see the FAQ sections of the Respondent’s websites, Annex 15), and as confirmed by an investigation whereby the Complainant arranged for the purchase of a sample product from the website on December 16, 2014.
The Complainant states that the Disputed Domain Names were registered and used in bad faith given that: a) the Respondent is using the domain name to offer for sale counterfeited VERTU goods causing considerable damage to the Complainant’s trademark rights and business, to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website; b) the Respondent could not ignore the existence of the Complainant when the domain names were registered, given the distinctive nature of the VERTU mark and the explicit references to VERTU handset on the Respondent’s websites; c) the Respondent has registered at least two domain names incorporating the Complainant’s trademarks for the same purpose of selling counterfeit VERTU mobile phones.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to the Complainant’s trademark or service mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Complainant has proved that it owns numerous trademark registrations/applications for the trademarks VERTU and SIGNATURE in several countries including China and United States.
The Disputed Domain Names are confusingly similar to the Complainant’s trademarks, as they entirely incorporate VERTU (in both cases) and SIGNATURE (in the case of <vertu-signature.com>) (Lancôme Parfums et Beauté & Cie v. SL, Proteccion de Dominios, WIPO Case No. D2001-0910; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774). It is an established principle that the mere addition of a letter (“s” at the beginning of the Disputed Domain Name) does not create a different impression in which the Respondent has right and cannot be considered sufficient to avoid confusion between the Disputed Domain Names and the Complainant's trademark (GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International, WIPOCase No. D2000-1219; Toshiba Corporation v. Distribution Purchasing & Logistics Corp, WIPO Case No. D2000-0464).
Accordingly, the Panel finds that the Complainant has established element 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the trademarks VERTU and SIGNATURE.
The Complainant asserts that the Respondent has no right or legitimate interest in the Disputed Domain Names, particularly because the latter is using the Disputed Domain Names to sell counterfeited VERTU goods, as shown by the documents submitted (see Annexes 3, 4, 6, 15). There can be no legitimate interest in the sale of counterfeit goods.
On the other hand, by not submitting a Response, the Respondent has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests in the Disputed Domain Name under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the international reputation and the distinctive nature of the VERTU and SIGNATURE marks, the Panel finds that in all likelihood the Respondent should have been aware of the Complainant’s well-known trademarks at the time it registered the Disputed Domain Names (Revlon Consumer Product Corp v. Domain Manager, WIPO Case No. D2003-0602; Microsoft Corporation v. Superkay Worldwide Inc., WIPO Case No. D2004-0071; Revlon Consumer Product Corp. v. Easy Weight Loss Info, WIPO Case No. D2010-0936; Hermes International SCA v. Cui ZhenHua, WIPO Case No. D2010-1743).
The evidence shows that the websites at the Disputed Domain Names were being used by the Respondent to offer for sale VERTU branded products at prices that are considerably lower than the original VERTU products and are marketed as “viable alternatives to the original luxury item (see the FAQ sections of the Respondent’s websites, Annex 15).
The sale of counterfeited goods under the Complainant’s trademark amounts to bad faith (Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019; Hermes International SCA v. Cui Zhenhua, WIPO Case No. D2010-1743).
The Panel finds that by using the disputed domain names, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s websites or other on-line location, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s websites or location.
The fact that, when the decision was drafted, one of the Respondent’s website could not be visited and the other one was dedicated to the sale of domain names, does not affect the above conclusions. It is an established principle that the lack of active use of a domain name does not as such prevent a finding of bad faith. The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith and in the Panel’s view the circumstances of the present case (namely, the strong reputation and distinctiveness of the Complainant’s trademarks and goods, no response to the Complaint and the impossibility of conceiving a good faith use of the Disputed Domain Names) clearly show the Respondent’s bad faith.
Accordingly the Panel finds that the Complainant has established element 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph15 of the Rules, the Panel orders that the Disputed Domain Names <svertu.com> and <vertu-signature.com> be transferred to the Complainant.
Date: March 23, 2015