WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stuart Weitzman IP, LLC v. Liu Li
Case No. D2015-0267
1. The Parties
The Complainant is Stuart Weitzman IP, LLC of New York, New York, United States of America (“USA”), represented by The Gioconda Law Group PLLC, USA.
The Respondent is Liu Li of Nanchang, Jiangxi, China.
2. The Domain Name and Registrar
The disputed domain name <stuartweitzmanoutletsale.com> (the “Domain Name”) is registered with Xin Net Technology Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2015. On February 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 27, 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.
On February 27, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On February 28, 2015, 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 March 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2015.
The Center appointed Karen Fong as the sole panelist in this matter on April 1, 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 well known designer, manufacturer and retailer of women’s footwear and handbags. It sells its high quality goods to consumers through its chain of retail stores, partnerships with department stores and through its website “www.stuartweitzman.com”. The products are sold under the brand Stuart Weitzman.
The Complainant’s products are featured in many leading fashion magazines and journals including Vogue, Harper’s Bazaar and Elle. As a result of its extensive marketing and promotions of its brand in the USA and the rest of the world, it has gained substantial reputation and goodwill.
The STUART WEITZMAN trade mark (the “Trade Mark”) is registered in the USA, the earliest of which dates back to 1986.
The Respondent registered the Domain Name on January 12, 2015. It is connected to a website (the “Website”) which purports to be or is connected to the Complainant and to sell the Complainant’s goods. These are likely to be counterfeit products. The images of the footwear on the Website are the same as those on the Complainant’s website.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and being used in bad faith. The Complainant requests transfer of the Domain Name.
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 Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is 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 Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. 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 Name is Chinese.
The Complainant submits in paragraph IV of the Complaint and in an email to the Center on February 28, 2015 that the language of the proceeding should be English. The Complainant contends that the Website is in English in its entirety which is evidence that the Respondent understands and is familiar with the English language.
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. 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 registered and unregistered 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 Name comprises the Trade mark and the descriptive terms “outlet” and “sale”. 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 Top-Level Domain. Further, the words “outlet” and “sale” do not negate the identity or confusing similarity encouraged by the Respondent’s use of Trade Mark in the Domain Name.
The Panel finds that the Domain Name is 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 commonly known by the Domain Name. The Respondent is not a licensee, authorized agent or in any other way authorized to use the Trade Mark in the Domain Name or any other manner. The products offered for sale on the Website are purported to be genuine products from the Complainant when this is not the case. The prices of the products are much lower than those of the genuine goods. There is sufficient evidence to show that the goods offered for sale and sold by the Respondent are counterfeit. There can be no legitimate interests in the sale of counterfeits. In any event, as the Respondent has not responded, the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Complainant has satisfied its burden of proof of showing that the Respondent lacks rights or legitimate interests in the Domain Name. (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 Name.
E. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the Domain Name has 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 he/she registered the Domain Name. The look and feel of the Website and the fact that the goods sold are counterfeit products bearing the Trade Mark makes this very clear. The Complainant has provided sufficient evidence that the registration of the Domain Name post dates the registration and use of the Trade Mark.
Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Panel also concludes that the actual use of the Domain Names was in bad faith. The Website is aimed at luring customers to believe that it belongs to the Complainant or is authorized by it. Moreover, the products offered for sale on the Website are counterfeit 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 Website is and the products sold on it 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 Name were 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 Name <stuartweitzmanoutletsale.com> be transferred to the Complainant.
Date: April 7, 2015