WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Filippa K Aktiebolag v. Song Qiuxiang
Case No. D2017-0578
1. The Parties
Complainant is Filippa K Aktiebolag of Stockholm, Sweden, represented by Zacco Sweden AB, Sweden.
Respondent is Song Qiuxiang of Henan, China.
2. The Domain Names and Registrars
The disputed domain names <filippakhelsinki.com> and <filippaklondon.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 22, 2017. On March 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 23, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 18, 2017.
The Center appointed Steven L. Snyder as the sole panelist in this matter on May 2, 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
In 1993, Ms. Filippa Knutsson founded a Swedish clothing company that is now known as Filippa K Aktiebolag. The Swedish word "Aktiebolag" is roughly equivalent to the English word "Corporation", which means that the distinctive part of the company's name is simply "Filippa K". This name has also become the company's trademark and can be found on its clothing and stores.
From its principal place of business in Stockholm, Sweden, Complainant Filippa K operates a number of FILIPPA K clothing stores throughout northern and central Europe. Retailers throughout Europe, North America and Asia also carry Complainant's FILIPPA K branded clothing. In addition, Complainant operates an e-commerce site through a website linked to the domain name <filippa-k.com>.
A few years after beginning operations, Complainant successfully sought to register the FILIPPA K trademark in connection with its clothing and fashion accessories. In January 1996, for example, Complainant filed an application to register the FILIPPA K mark with the European Union Intellectual Property Office ("EUIPO") in association with "clothing, footwear, headgear" in International Class 25. On November 19, 1998, the EUIPO registered the FILIPPA K mark to Complainant. See EUIPO mark 000010744.
Complainant has also secured protection for its FILIPPA K trademark in many other jurisdictions, including in the United States of America, Australia and China. See, e.g., International Registrations 700502 and 822411.
On September 9, 2016, Respondent Song Qiuxiang registered the disputed domain names <filippakhelsinki.com> and <filippaklondon.com>. Helsinki is the capital and largest city of Finland; London enjoys the same status in the United Kingdom of Great Britain and Northern Ireland. Complainant apparently sells FILIPPA K branded products in both of those countries.
5. Parties' Contentions
As of 2016, Complainant maintains it employed 350 employees, had revenues of EUR 70 million, operated 52 brand stores in countries across Europe, and had "70 premium retailers in Europe and in North America". In addition, it was "present in 30 markets through its own e-commerce site at <filippa-k.com> and through various leading online fashion sites (such as nelly.com and zalando.se)."
These activities have not gone unnoticed. Complainant states that it is "frequently mentioned in the media, including in International Media such as Vogue.com" and is "a frequent participant at the Stockholm Fashion Week". The company reportedly has been "recognized for its sustainability efforts" in the form of the "H&M and Elle Conscious Award".
In support of its international operations, Complainant has registered the FILIPPA K trademark "in several countries across the world, including as an International Trademark under the Madrid protocol, designating China, among others".
Complainant recognizes that under paragraph 4(a) of Policy, it must prove the following three elements:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names were registered and have been used in bad faith.
Tracking this tripartite test, Complainant contends that Respondent has no right to use or maintain ownership of the disputed domain names.
First, Complainant maintains that the disputed domain names are confusingly similar to its well-known FILIPPA K trademark. The fact that the disputed domain names also contain the geographic identifiers "Helsinki" and "London" are insufficient to avoid confusion: "The dominant parts of the Domain Names comprise the term 'FILIPPA K', which is identical to the Complainant's registered trademark….The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the Policy."
Second, Complainant argues that Respondent has no rights or legitimate interest in respect of the disputed domain names. Complainant avers that it has never granted a license or other form of authorization to Respondent to use the FILIPPA K mark and that Respondent has no independent right to incorporate the marks into the disputed domain names: "The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Names. Nor has the Complainant found anything, including in the Whois details, which would suggest that the Respondent has been using FILIPPA K in any other way that would give it any legitimate rights in the Domain Names."
In Complainant's view, Respondent is misusing the FILIPPA K mark in order to make money for itself by confusing Internet users and diverting traffic to Respondent's websites. Those websites reportedly offer "heavily discounted FILIPPA K products for sale." Complainant "strongly suspects that these are counterfeit products." There are no disclaimers on those websites which alert visitors that they are seeing wares from a merchant who has no connection to FILIPPA K. In short, Respondent has made an illegitimate attempt to "imitate the Complainant and its business."
Third and finally, Complainant argues that the disputed domain names "were registered and are being used in bad faith." This conclusion is drawn partially from the fact that Complainant registered and widely used the FILIPPA K mark long before Respondent registered the disputed domain names. In Complainant's view, Respondent's registration of the disputed domain names was a bad faith attempt to capitalize on the fame of Complainant's trademark: "The Respondent registered the Domain Names on September 9, 2016. This date is subsequent to when the Complainant registered the trademark FILIPPA K in China where the Respondent resides, and elsewhere, by decades. It is obvious that it is the fame and value of the trademark that has motivated the Respondent to register the Domain Names."
As evidence of bad faith use, Complainant points to the linkage of the disputed domain names to websites that falsely suggest an affiliation between Respondent and Complainant and which offer products purporting to be produced by Complainant: "The Domain Names are currently connected to unauthorized commercial websites offering FILIPPA K products for sale, with heavily discounted prices." Additional evidence of bad faith registration and usage is Respondent's failure to respond to a cease and desist letter: "[T]he Complainant tried to contact the Respondent directly on February 28, 2017, through a cease and desist letter sent by email, to which no reply was ever received."
Complainant has requested the transfer of the disputed domain names to its ownership.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Imitation is the sincerest form of flattery. Sometimes it is also just plain old unfair competition. In this case, Complainant has alleged and convincingly demonstrated that Respondent has registered and used the disputed domain names in an unfair attempt to profit off of Complainant's well-known FILIPPA K trademark.
A. Identical or Confusingly Similar
The disputed domain names and Complainant's mark may not be identical twins, but even fraternal twins may be confusingly similar – particularly when both are thin, attractive and clad in FILIPPA K branded outfits. Such is the case with the disputed domain names <filippakhelsinki.com> and <filippaklondon.com> and the FILIPPA K trademark. The disputed domain names are confusingly similar to a mark in which Complainant clearly has rights. See Coccinelle S.p.A v. Kaoyuanws Trade, WIPO Case No. DNL2017-0008 (finding <coccinelleamsterdam.nl> to be confusingly similar to the COCCINELLE trademark).
Complainant has established the first element required under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Without contradiction, Complainant has alleged that it has never authorized Respondent to use its FILIPPA K mark, that Respondent has nevertheless used Complainant's mark in order to sell fashion products, and that Respondent has not independently gained any rights to legitimately use the FILIPPA K mark.
Given these allegations, the proof that Complainant has introduced, and Respondent's lack of a response, the Panel must conclude that Respondent has no rights or legitimate interests in respect of the disputed domain names. See Hermès International v. Registrant : Boris Moser, WIPO Case No. D2011-0406 ("It is the consensus view of WIPO UDRP panelists that once a complainant has established a prima facie case, it is respondent's responsibility to prove otherwise."); see also VKR Holding A/S v. Kirk Wilson, KAW Trading Ltd, WIPO Case No. D2016-2433 (finding no rights or legitimate interests in a confusingly similar domain name linked "to sites offering competing products").
Complainant has established the second element required under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
For many years and in many places and on many goods, Complainant has used the FILIPPA K mark. Long after that mark became established in the marketplace, Respondent registered the confusingly similar disputed domain names. Respondent then hitched the disputed domain names to websites that sold goods in competition with Complainant and which falsely suggest an affiliation with Complainant. When faced with a cease and desist letter, Respondent blithely forged ahead with its commercial activities. These actions amply demonstrate bad faith registration and usage of the disputed domain names. See Daimler AG v. Whois privacy services, provided by DomainProtect LLC/Designbureau Ltd., Domain Manager, WIPO Case No. D2010-1269 ("As the trademark MERCEDES has been well-known worldwide for so many years, it is inconceivable to this Panel that Respondent was unaware of it when registering the disputed domain name.").
Complainant has established the third and final element required under paragraph 4(a) of the Policy.
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 <filippakhelsinki.com> and <filippaklondon.com> be transferred to Complainant.
Steven L. Snyder
Date: May 16, 2017