WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Esprit International v. Liu Xuemei
Case No. D2017-1352
1. The Parties
The Complainant is Esprit International of New York, New York, United States of America (“United States”), represented by Gołębiowska Krawczyk Roszkowski i Partnerzy Kancelaria Adwokacko-Radcowska Sp. p., Poland.
The Respondent is Liu Xuemei of Zhoukou, Henan, China.
2. The Domain Names and Registrar
The disputed domain names <espritoslo.com> and <espritshoessale.com> are 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 July 14, 2017. On July 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 15, 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.
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 July 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2017.
The Center appointed Adam Samuel as the sole panelist in this matter on August 22, 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 an international fashion brand. It owns a Norwegian trademark for ESPRIT(referred to hereafter as the “Complainant’s trademark”), No. 102275, registered on June 14, 1979.
The disputed domain names were registered on August 31, 2016. The Complainant’s group promotes its business through a number of domain names, notably, <esprit.com>, registered on April 1, 1997.
5. Parties’ Contentions
The disputed domain names incorporate the Complainant’s famous trademark and the generic top-level domain (gTLD) “.com”. One includes “Oslo”, a city in Norway. This does not undermine the similarity of the disputed domain name concerned to the Complainant’s trademark. In the second disputed domain name, the reference to shoesale only refers to the scope of the Complainant’s activity. Internet users may think that the second disputed domain name is an authorized domain name and online shop belonging to the Complainant where shoes are offered at discounted prices relating to seasonal sales.
The Complainant has not authorized the Respondent to use any of its trademarks or register or use any domain name. The parties are not connected in any way. The Respondent is not commonly known by the disputed domain names.
The Complainant sent a cease and desist letter on June 5, 2017, to which no response was received. The Respondent’s address information on the whois database is false. The address given by the Respondent does not exist. On August 31, 2016, the Respondent not only registered the disputed domain names but also other domain names which incorporate trademarks of other famous clothing brands. All the websites concerned contain online shops offering the clothing concerned. The content of the websites to which the disputed domain names originally resolved shows clearly that the Respondent knew all about the Complainant’s trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove, as regards each disputed domain name, that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Each disputed domain name consists of the Complainant’s world-renowned trademark and “.com”. The first inserts the name of the Norwegian capital city, suggesting some geographic connection between the disputed domain name and that location. The second contains the words “shoe sales” instead of “Oslo”. Since the Complainant sells clothes and operates in Norway, the edition of “Oslo” and “shoe sales” in the two disputed domain names do not detract from the confusing similarity between the Complainant’s trademark and the disputed domain names.
B. Rights or Legitimate Interests
The Respondent is not called “Esprit” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use the trademark ESPRIT. For these reasons, and in the absence of any response on this point, notably one contradicting the Complainant’s claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
The Respondent used the disputed domain names to sell the Complainant’s products, indicating clearly the Respondent’s knowledge of the Complainant’s name. The Respondent seems to have embarked on a course of registering domain names connected to names in the clothing industry on August 31, 2016.
Without a substantive response to the Complaint, it is impossible to know exactly why the Respondent registered the disputed domain names. One is left with three possible motives: to disrupt the Complainant’s relationship with their customers or potential customers, attempt to attract Internet users for potential gain to its websites, or persuade the Complainant to buy the disputed domain names from it for an amount in excess of the Respondent’s out-of-pocket expenses. These all constitute evidence of registration and use in bad faith. The Respondent’s motivation may have been more than one of these and perhaps all three. For these reasons, the Panel concludes the disputed domain names were each registered and are being used 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 disputed domain names, <espritoslo.com> and <espritshoessale.com>, be transferred to the Complainant.
Date: August 23, 2017