WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brioni S.p.A. v. Jack Black, Jack Black
Case No. D2015-0983
1. The Parties
The Complainant is Brioni S.p.A. of Penne, Italy, represented by Società Italiana Brevetti S.p.A., Italy.
The Respondent is Jack Black, Jack Black of Guangzhou, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain names <brionioutletstore.com> and <brionisaleoutlet.com> are registered with HiChina Zhicheng Technology Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 9, 2015. On June 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 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 June 15, 2015, the Center transmitted an email to the parties in English and Chinese regarding the language of proceeding. On June 15, 2015, the Complainant submitted its request that English be the language of proceeding. The Respondent did not submit 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 the Respondent of the Complaint in English and Chinese, and the proceeding commenced on June 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 14, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on July 24, 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 Rome, Italy in 1945 and is a prestigious and historical Italian fashion house. The Complainant contends that its BRIONI trade mark is a well-known and exclusive brand especially in the sphere of menswear. The Complainant's well-tailored clothing has since the 1960s been the choice of Hollywood's elegant stars, heads of states and business leaders such as Gary Cooper, Clark Gable, Henry Fonda, John Wayne, Ava Gardner, Nicole Kidman, Donald Trump and others. The Complainant has also provided clothing and clothing accessories for Pierce Brosnan and Daniel Craig in the James Bond movies ("Goldeneye" and "Casino Royale"). In 2007 and 2011, the Luxury Institute of New York recognized the BRIONI brand to be the most prestigious in men's luxury fashion in the United States of America ("US").
In 2012, the Complainant became part of the PPR Group (now trading as Kering), a leading global group in the apparel and accessories market. Kering owns well-known luxury, sport and lifestyle brands such as GUCCI, BOTTEGA VENETA, SAINT LAURENT, ALEXANDER MCQUEEN and BALENCIAGA.
The Complainant's BRIONI line of products is sold through official stores in Europe, the US, Asia and the Middle-east, as well as via online stores. The Complainant's online store at "www.brioni.com" is available in the Chinese language. The categories of goods offered include leisure wear, leather goods, shoes, eyewear as well as jewellery and fragrances.
The Complainant's BRIONI trade mark (and other variations incorporating the word BRIONI) is registered in numerous countries including in China (where the Respondent appears to be located) and Hong Kong, China.
The disputed domain name <brionisaleoutlet.com> was registered on October 12, 2014 and the disputed domain name <brionioutletstore.com> was registered on December 25, 2014. The disputed domain names resolve to websites which advertise and offer for sale purported BRIONI garments.
5. Parties' Contentions
1. The Respondent's disputed domain names are confusingly similar to the Complainant's BRIONI trade mark which is fully reproduced therein. The elements "saleoutlet" and "outletstore" in the disputed domain names have a descriptive connotation and "cannot counterbalance" the fact that the disputed domain names incorporate the BRIONI trade mark. The ".com" extension in the disputed domain names also does not mitigate the situation. Consumers would associate the disputed domain names with the business carried out by the Complainant under the BRIONI trade mark, and would be led into thinking that the Respondent's websites are owned by the Complainant and created to operate official online outlet stores of BRIONI-branded garments.
2 The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has not authorized nor consented to anyone registering and using the disputed domain names. The Respondent is not known and cannot be known by the disputed domain names since they clearly refer to the well-known trade mark BRIONI in respect of which the Complainant has exclusive rights. The use by the Respondent of the disputed domain names to misdirect Internet users to websites that advertise and offer for sale purported BRIONI garments does not constitute a bona fide offering of goods.
3 The disputed domain names were registered and are being used in bad faith and this is supported by the following circumstances:
(i) The disputed domain names resolve to websites that reproduce, without the Complainant's authorization or approval, the Complainant's BRIONI trade mark;
(ii) The websites advertise and offer for sale imitations of the Complainant's garments at cheap prices;
(iii) Misleading notices are displayed at the bottom of the respective homepages which falsely suggest a connection between the Respondent and the Complainant:
- "© 2009-2014 Brioni Outlet Online Store, "www.brionisaleoutlet.com" Copyright, All Rights Reserved"
- "© 2009-2014 Brioni Outlet Online Store, "www.brionioutletstore.com" Copyright, All Rights Reserved"
(iv) The above circumstances demonstrate that the Respondent was well aware of the Complainant's rights in and to the trade mark BRIONI and consciously and deliberately incorporated the said mark into the disputed domain names to attract consumers for commercial gain. The Respondent's websites are obviously targeted at luring away Internet users from the official website of the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Language of the Proceeding
The Complaint was filed in English but the language of the registration agreement is Chinese.
Paragraph 11(a) of the Rules stipulates that: "[u]nless 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."
Paragraph 10(b) and (c) of the Rules stipulate, respectively, that:
"(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel."
The Complainant requested that English be adopted as the language of the proceeding. The reasons are firstly, the disputed domain names resolve to websites in English, from which it can be assumed that the Respondent is familiar with the English language and able to communicate in English. Secondly, the Complainant is not familiar with the Chinese language. Conducting the proceeding in Chinese would be disadvantageous to the Complainant as it would have to incur substantial translation fees and this presents added inconvenience.
Notwithstanding the language requirement prescribed by paragraph 11(a) of the Rules, the Panel has to balance that requirement against the other consideration of ensuring that the proceeding takes place with due expedition. The Panel is of the view that the language requirement should not cause any undue burden on the parties or undue delay (see Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The Panel finds the fact that the disputed domain names incorporate English descriptive terms, "saleoutlet" and "outletstore", and the corresponding websites are entirely in English to be adequate grounds for making the determination that English should be the language of the proceeding. The fact that the Complainant would otherwise have to arrange to have the Complaint and supporting documents translated into Chinese (which would inevitably lead to a delay in the proceeding) is another consideration which the Panel has considered.
The Respondent has been afforded the opportunity to respond on the issue of the language of the proceeding, but chose not to. If, notwithstanding the language used on the Respondent's websites, the Respondent had valid grounds to contest the Complainant's request for English to be the language of the proceeding, he should have done so.
B. Identical or Confusingly Similar
The Panel agrees that the disputed domain names are confusingly similar to the Complainant's BRIONI mark in which it has rights. The trade mark BRIONI is clearly identifiable in the disputed domain names. The addition of the generic terms "saleoutlet" and "outletstore" in the context of the goods that the Complainant deals in and having regard to what the trade mark BRIONI is known for, does not serve to remove the confusing similarity between the disputed domain names and Complainant's trade mark. In fact, they add to the confusion.
As for the generic Top-Level Domain ".com" in the disputed domain names, it is a well-established principle that these may be disregarded when considering the issue of identity or confusing similarity under paragraph 4(a)(i) of the Policy.
The first element of paragraph 4(a) of the Policy has therefore been established.
C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent can demonstrate he has rights or legitimate interests in the disputed domain names by producing evidence of any of the following circumstances (which are non-exhaustive):
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Respondent did not file any Response, formal or otherwise, nor evidence to show that he has rights or legitimate interests in the disputed domain names. The Panel draws an appropriate inference.
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. Apart from the fact that the Respondent has not been licensed nor authorized by the Complainant to use the BRIONI trade mark or to register and use the disputed domain names, there is no evidence that the Respondent has been commonly known by the disputed domain names. Furthermore, the Panel agrees that the Respondent's use of the disputed domain names to misdirect Internet users to websites that advertise and offer for sale purported BRIONI garments does not constitute a bona fide offering of goods and cannot amount to a legitimate noncommercial use.
The Panel accordingly finds that the Complainant has established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy cites examples of four circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's web site or location or of a product or service on respondent's web site or location.
The Complainant has not submitted specific evidence which proves that the goods offered for sale by the Respondent on his websites are counterfeit goods but invites the Panel to make the inference. The Panel does not make any finding that the goods are indeed counterfeit. Nevertheless, in the Panel's view, it is evident that the "look and feel" of the Respondent's websites is that they are legitimate websites of the Complainant's or are endorsed or associated with the Complainant. The Panel finds that the circumstances of this case reflect the Respondent's intention to "attract, for commercial gain, Internet users to [the Respondent's] web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent's] web site or location or of a product or service on [the Respondent's] web site or location (paragraph 4(b)(iv) of the Policy). The incorporation of a well-known trade mark into a domain name is an indicator of bad faith. The fact that the Respondent's address per the WhoIs records appears to be a fictitious address (the delivery of documents from the Center could not be effected by the courier company) is also a factor from which the Panel draws and adverse inference.
The Panel concludes that the disputed domain name has been registered and used in bad faith by the Respondent.
The third element of paragraph 4(a) of the Policy has been established by the Complainant.
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 <brionioutletstore.com> and <brionisaleoutlet.com> be transferred to the Complainant.
Date: July 27, 2015