WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Liu.Jo S.p.A. v. Liu Xuemei
Case No. D2017-0808
1. The Parties
The Complainant is Liu.Jo S.p.A. of Carpi, Italy, represented by Studio Legale SIB, Italy.
The Respondent is Liu Xuemei of Zhoukou, China.
2. The Domain Name and Registrar
The disputed domain name <liujo-jeans.com> (“Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 22, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the corresponding contact details for the Domain Name to the Center.
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 and the proceedings commenced on May 1, 2017. In accordance with the Rules, paragraph 5, the due date for the Respondent to file a response was May 21, 2017. The Respondent did not submit a response. Accordingly, the Center notified the Parties of the Respondent’s default on May 23, 2017.
The Center appointed Marylee Jenkins as the sole panelist in this matter on June 6, 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
Based on the review of the uncontested evidence submitted by the Complainant, the Panel determines that the Complainant is the owner of and has rights in multiple trademark registrations for the mark LIU.JO including Italian Reg. No. 0000680868 filed December 27, 1993 and registered June 24, 1996 in class 25; Italian Reg. No. 0000848507 filed February 8, 2001 and registered June 18, 2001 in class 18; Chinese Reg. No. 1330937 filed September 1, 1998 and registered November 7, 1999 in class 25; and International Reg. No. 762361 (designating China) filed March 14, 2001 and registered June 18, 2001 in classes 18 and 25 (individually and collectively the “Complainant’s Mark”). The Complainant also owns several domain names that incorporate the Complainant’s Mark including the domain names <liujo.com>, <liujo.it> and <liujojeans.com> and markets and offers for sale its clothing and accessories at the website accessible at “www.liujo.com”.
The Respondent registered the Domain Name on August 26, 2016. The Domain Name currently does not direct to any website.
5. Parties’ Contentions
The Complainant alleges that it was founded in 1995 and is a well-known Italian company active in the business of manufacturing, marketing and selling high-end articles of clothing and accessories. The Complainant alleges that it has achieved a worldwide reputation as a rising company in the fashion industry thanks to the quality of its products and their design. The Complainant alleges that it has always used the Complainant’s Mark to identify its products in the marketplace. The Complainant’s products can be found at more than 130 flagship stores and 4,500 retail stores worldwide and online at its website at “www.liujo.com”. The Complainant alleges that the Complainant’s Mark is unique in that there are no other identical or similar marks or names that are registered or in use by third parties. The Complainant alleges that the Complainant’s Mark enjoys an indisputable reputation and is synonymous with and symbolizes the Complainant’s reputation and goodwill.
The Complainant alleges that the Domain Name is confusingly similar to the Complainant’s Mark and is only different by the addition of the generic Top-Level Domain (“gTLD”) “.com” and the descriptive component “jeans” separated from the Complainant’s Mark by a dash. The Complainant further alleges that the Domain Name entirely comprises the Complainant’s Mark and that the addition of the word “jeans” is totally descriptive of products that the Complainant sells as well as being a very common term which is easily understood by consumers worldwide.
The Complainant alleges that the Respondent is not affiliated in any way with the Complainant and, to the best of its knowledge, does not own any trademark applications or registrations for “liujo-jeans” or any similar marks in connection with any goods or services. In addition, the Complainant states that it has not licensed or otherwise authorized the Respondent to use the Complainant’s Mark or to apply for any domain name incorporating the Complainant’s Mark. The Complainant further alleges that the Respondent is not commonly known by the Domain Name and does not trade under the name “Liujo-jeans” and does not make any legitimate commercial use thereof. Accordingly, the Complainant states that based on its well‑established prior rights, the Respondent has chosen the Domain Name consisting of the Complainant’s Mark and the descriptive term “jeans” to intentionally violate the Complainant’s rights.
The Complainant alleges that until a few months ago, the Respondent hosted on the Domain Name a website offering for sale counterfeit “Liu.Jo” products. The Complainant further alleges that the Respondent falsely suggested that it is the trademark owner of the Complainant’s Mark and that the website at the Domain Name was the Complainant’s official site.
The Complainant alleges that the Respondent used to offer for sale counterfeit items of clothing and accessories bearing the Complainant’s Mark at the website at the Domain Name with the clear intent for commercial gain and trying to pass itself off as the trademark owner. The Complainant alleges that the Respondent registered the Domain Name with a view of diluting the value of the Complainant’s Mark and taking unfair advantage of the reputation of the Complainant’s Mark so as to confuse potential customers visiting the website at the Domain Name. The Complainant further states that the Domain Name currently resolves to no active website and thus is in a clear state of passive holding. The Complainant finally alleges that the Respondent’s bad faith is definitely proven by the fact that the Respondent owns several other domain names that correspond to well-known third-party trademarks in the field of fashion including <justcavallisunglasses.com>, <gantoutletonline.com> and <pepejeansuk.com>.
Based on the above, the Complainant alleges that it has met the bad faith requirements under the Policy.
The Respondent did not file a response with respect to this proceeding.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder 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.
Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default as the Panel considers appropriate. Nevertheless, the Panel may rule in the Complainant’s favor only after the Complainant has proven that the above elements are present.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in and to the Complainant’s Mark.
A review of the second-level domain “liujo-jeans” of the Domain Name shows that it comprises the Complainant’s Mark (i.e., the registered mark LIU.JO in its entirety without a period) and the descriptive word “jeans” separated by a hyphen. The Panel concludes that the deletion of the period from the Complainant’s Mark coupled with the descriptive word “jeans” and a hyphen do not differentiate the Domain Name from the Complainant’s Mark. Additionally, the Respondent’s registration of this Domain Name shows that the Respondent was clearly aware of the Complainant’s business and the Complainant’s Mark when registering the Domain Name. The Panel accordingly finds that the Domain Name is confusingly similar to the Complainant’s Mark and that paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the panel to be proven based on the evaluation of all of the evidence presented, can demonstrate the domain name holder’s rights to or legitimate interests in a domain name. These circumstances include:
(i) before any notice to the holder of the dispute, the holder’s 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) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder is 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.
No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent was using or was making any demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services or that the Respondent has been commonly known, as an individual, business or otherwise, by the Domain Name. In addition, no evidence has been presented to suggest that the Complainant has ever allowed or permitted the Respondent to register or use any domain name incorporating the Complainant’s Mark in any fashion. Rather the Complainant had well-established rights in the Complainant’s Mark at the time of the Respondent’s registration of the Domain Name and the Respondent nevertheless registered the Domain Name.
In the Complaint, the Complainant alleges that the Respondent has offered counterfeit products of the Complainant on a website at the Domain Name. However, no evidence has been presented to support such allegations. The Complainant did present evidence that there is currently no website accessible at the Domain Name. The Respondent has not responded to these allegations or presented any evidence or arguments to refute these allegations or to show that the Respondent was using or was making demonstrable preparations to use this Domain Name in connection with any type of bona fide offering of goods or services. Based on the above, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the domain name holder includes, but is not limited to:
(i) circumstances indicating that the holder 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 the complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the holder’s website or location.
No evidence has been presented that the Respondent is commonly known by the Domain Name or that the Complainant has, at any time, assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Complainant’s Mark. Further, no evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services. Rather, the Panel finds that the Respondent clearly had knowledge of the Complainant’s business and the Complainant’s Mark when registering the Domain Name. This finding is supported by the evidence showing that the Domain Name was registered by the Respondent well after the Complainant’s significantly earlier dates of first use and first use in commerce of the Complainant’s Mark. Moreover, the Complainant has provided evidence that the Complainant’s Mark is well-established and used extensively around the world, including in China, the country which is listed by the Respondent in the registration details for the Domain Name.
The Complainant’s uncontested evidence further shows that the Respondent currently offers neither goods nor services at the Domain Name and that the Domain Name does not resolve to a website or other online presence. The Complainant accordingly asserts, without challenge from the Respondent, that such constitutes passive use or holding of the Domain Name. Further, the Complainant has submitted uncontested evidence that the Respondent has engaged in a pattern of conduct of registering several domain names incorporating the trademarks of others. Based on the evidence, the Panel finds that the Respondent’s passive holding of the Domain Name coupled with the Respondent’s pattern of conduct supports a finding of bad faith registration and use of the Domain Name. The Panel therefore concludes that paragraph 4(a)(iii) of the Policy has been satisfied.
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 be transferred to the Complainant.
Date: July 8, 2017