WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valentino S.p.A. v. Margo Pepe Margo Pepe

Case No. D2017-0042

1. The Parties

The Complainant is Valentino S.p.A. of Milan, Italy, represented by Studio Barbero, Italy.

The Respondent is Margo Pepe Margo Pepe of China.

2. The Domain Names and Registrar

The disputed domain names <valentinosko.com> and <valentinoukshop.com> are registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 12, 2017, 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 January 13, 2017, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding.

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 and 4, the Center formally notified the Respondent of the Complaint, in English and Chinese, and the proceedings commenced on January 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2017.

The Center appointed Matthew Kennedy as the sole panelist in this matter on February 14, 2017. 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 fashion house founded in 1960. It is named after its founder designer Valentino Garavani. It offers a wide range of clothing and accessories including bags, shoes, small leather goods, belts, eyewear, silks and perfumes. The Complainant is the owner of multiple trademark registrations in multiple jurisdictions, including International Trademark Registration No. 570593 for VALENTINO, registered on April 24, 1991, specifying goods and services in classes 3, 14, 18 and 25; International Trademark Registration No. 931706 for VALENTINO FASHION GROUP and logo, registered on June 6, 2007, specifying goods and services in classes 35 and 36; and International Trademark Registration No. 979223 for “V” logo, registered on July 22, 2008, specifying goods and services in classes 3, 8, 9, 11, 14, 16, 18, 19, 20, 21, 23, 24, 25, 27, 35, 36 and 43. Those trademark registrations remain in effect. The Complainant has operated its official website and online store at the address “www.valentino.com” since 1998.

The Respondent appears to be an individual located in China and the registrant of both disputed domain names. Due to the fact that the Respondent’s contact address in the Registrar’s WhoIs database is clearly fictitious, the Written Notice could not be delivered by courier.

The disputed domain names were both registered on May 17, 2016. They each resolve to a different website consisting of an online shop selling what are alleged to be the Complainant’s shoes, handbags and other goods. The website at <valentinosko.com> is in Danish while the website at <valentinoukshop.com> is in English. Both websites display the Complainant’s VALENTINO trademark while the Danish website also displays the Complainant’s VALENTINO FASHION GROUP logo. Both websites also use the Complainant’s “V” logo as their website icon for display in Internet browser address bars.

5. Parties’ Contentions

A. Complainant

The disputed domain names are confusingly similar to the Complainant’s VALENTINO trademark. Both wholly incorporate the VALENTINO trademark, with the mere addition of the non-distinctive elements “shop” or “sko” (meaning “shoe” in Danish), the geographical indicator “uk” and the generic Top-Level Domain (“gTLD”) “.com”, which do not affect their confusing similarity to the Complainant’s trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not a licensee, authorized agent or authorized reseller of the Complainant or in any other way authorized to use the Complainant’s trademark. Upon information and belief, the Respondent is not commonly known by the disputed domain names. The Respondent’s websites display the Complainant’s trademarks and images taken from the Complainant’s official website and offer for sale prima facie counterfeit VALENTINO products. No disclaimer as to the Respondent’s lack of relationship with the Complainant can be found on the websites at the disputed domain names.

The disputed domain names were registered and are being used in bad faith. In light of the extensive use of the VALENTINO trademark since as early as the 1960s, the amount of advertising and sales of the Complainant’s products worldwide, including in China, the Respondent could not have possibly ignored the existence of that trademark when it registered the disputed domain names. Indeed, the fact that purported VALENTINO products have been offered for sale and the Complainant’s trademarks have been published on the Respondent’s websites indicates that the Respondent was fully aware of the Complainant and its trademarks. The use of the disputed domain names in connection with commercial websites where the Complainant’s trademarks and images are misappropriated, no disclaimer is published and prima facie counterfeit VALENTINO-branded products are offered for sale, clearly indicates that the Respondent’s purpose in registering the disputed domain names was to capitalize on the reputation of the Complainant’s trademarks by diverting Internet users seeking the Complainant’s branded products to its own websites for financial gain, by intentionally creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its websites and/or the goods offered or promoted through said websites, within the meaning of paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules provides that “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.” The Registrar confirmed that the Registration Agreements for the disputed domain names are in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the Complainant communicates in English and would be prejudiced if it were required to translate the Complaint into Chinese and that one of the disputed domain names resolves to a website in English which clearly demonstrates that the Respondent is familiar with the English language. The Respondent did not comment on the language request.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that the Complaint in this proceeding was filed in English. The Panel notes that the website to which the disputed domain name <valentinoukshop.com> resolves is entirely in English, from which it is reasonable to infer that the Respondent is familiar with that language. Further, having received notice of the Complaint in Chinese and English, the Respondent has expressed no interest in responding it or otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

6.2 Substantive Matters

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the VALENTINO trademark.

The disputed domain names both wholly incorporate the Complainant’s VALENTINO trademark as their dominant and only distinctive element.

Both disputed domain names include additional elements. Both include a dictionary word, either “sko” (meaning “shoe” in Danish) or “shop”. A dictionary word is not sufficient to dispel the confusing similarity of the disputed domain names to the Complainant’s trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110. If anything, the addition of the element “sko” may increase association because the Complainant uses its trademark in connection with shoes. One of the disputed domain names also includes the geographical term “uk” which is a common abbreviation for the country “United Kingdom of Great Britain and Northern Ireland”. As a mere geographical term, this additional element is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant’s trademark. (See Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768).

Both disputed domain names include the gTLD suffix “.com”. A gTLD suffix is generally disregarded for the purposes of assessing confusing similarity under the Policy. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.

Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first circumstance, the evidence shows that the Respondent is using the disputed domain names in connection with the offering for sale of what are alleged to be the Complainant’s shoes, handbags and other goods. The question is whether that offering is bona fide. The only distinctive element of the disputed domain names is identical to the Complainant’s trademark yet, according to the Complaint, the Respondent is not a licensee, authorized agent or authorized reseller of the Complainant or in any other way authorized to use the Complainant’s trademark. Regardless of whether the goods offered for sale are genuine, neither website displays any disclaimer indicating that there is no relationship between the Respondent and the Complainant. This indicates that the Respondent’s use of the disputed domain names is not in connection with a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Accordingly, the Panel does not find that the Respondent’s use falls within the first circumstance of paragraph 4(c) of the Policy.

As regards the second circumstance, the Respondent’s name is allegedly “Margo Pepe Margo Pepe”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain names as envisaged by the second circumstance of paragraph 4(c) of the Policy.

As regards the third circumstance, the disputed domain names resolve to websites that offer goods for commercial sale. This is not a legitimate noncommercial or fair use of the disputed domain names covered by the third circumstance of paragraph 4(c) of the Policy.

In summary, the Panel considers that the Complainant has prima facie discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent did not rebut that case because it did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the domain name, [the respondent has] intentionally attempted 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.”

The Respondent registered the disputed domain names in 2016, many years after the Complainant obtained its trademark registrations. The dominant element of each of the disputed domain names is identical to the Complainant’s VALENTINO trademark. The websites to which the disputed domain names resolve display the Complainant’s trademarks and offer for sale what are alleged to be the Complainant’s products. This indicates to the Panel that the Respondent intentionally chose to register the Complainant’s trademark in the disputed domain names.

The Respondent uses the disputed domain names with websites to offer for sale what are alleged to be the Complainant’s shoes, handbags and other goods. The Respondent is not authorized by the Complainant but this is not disclosed on the websites. Further, the websites display the Complainant’s VALENTINO trademark and its logo trademarks, which give the impression that the websites are approved by, or affiliated with, the Complainant. Given these facts and those described in Section 6.2B above, the Panel considers that the Respondent’s use of the disputed domain names intentionally attempts to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of the products on that websites.

Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

7. Decision

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 <valentinosko.com> and <valentinoukshop.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: February 24, 2017