WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skorpio Limited v. Nexperian Holding Limited / Long Zhi Chao
Case No. D2017-1690
1. The Parties
The Complainant is Skorpio Limited of Lugano, Switzerland, represented by Keltie LLP, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
The Respondent is Nexperian Holding Limited of Hangzhou, Zhejiang, China / Long Zhi Chao of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <rickowensstore.com> ("Disputed Domain Name") is registered with HiChina Zhicheng Technology Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on August 31, 2017 against the registrant disclosed on the WhoIs record of the Disputed Domain Name, Nexperian Holding Limited. On August 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 1, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 6, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant filed an amended Complaint in English and requested that English be the language of the proceeding on September 7, 2017. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amended 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 in Chinese and English of the Complaint, and the proceedings commenced on September 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 9, 2017.
The Center appointed Kar Liang Soh as the sole panelist in this matter on October 16, 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 Swiss company that manages the intellectual property rights of American fashion designer Rick Owens. Rick Owens began his fashion design career in Los Angeles, United States of America ("United States") in 1994. Worldwide distribution of his products started in 2001 after moving production to Italy, including through retail boutique stores in Paris, New York, London, Seoul, Tokyo and Hong Kong. Rick Owens has achieved various awards including the Council of Fashion Designers of America Perry Ellis Emerging Talent Award in 2002, the Cooper-Hewitt National Design Award in 2007, and the "Rule Breakers" award by the Fashion Group International in 2007. His clothing designs have been worn by many celebrities.
The Complainant has registered the trademark RICK OWENS in various jurisdictions, including:
May 21, 2003
June 29, 2004
August 3, 2010
August 7, 2014
The trademark RICK OWENS was the subject matter of a prior WIPO UDRP case relating to the domain name <rickowensshop.com> (Skorpio Limited v Ma Liang, WIPO Case No. D2012-2045). The panel in that case found inter alia that Rick Owens is a well-known fashion designer, and ordered the transfer of the domain name to the Complainant.
The originally named respondent, Nexperian Holding Limited, appears to be a privacy service and is associated with at least 11 successful WIPO UDRP complaints in 2017 totalling 109 domain names. As of July 9, 2017, its email address was associated with 30 domain name registrations. There is limited information about the Respondent available in this proceeding. The Respondent appears to be and individual based in China, and whose existence was disclosed only after the Complaint was filed.
The Disputed Domain Name was registered on July 9, 2017. On or before the date of the Complaint, the Disputed Domain Name resolved to a website which displayed the trademark RICK OWENS prominently at its upper left corner. The website offered clothing articles under the trademark RICK OWENS for online purchase under a shopping cart facility. The Complainant made an online purchase of products from the website.
5. Parties' Contentions
The Complainant contends that:
(i) The Disputed Domain Name is confusingly similar to the Complainant's RICK OWENS trademark. The Disputed Domain Name takes the whole of the RICK OWENS trademark and the only added word, "store", is a descriptor for retail services through which the Complainant's goods are sold. The word "store" is negligible when assessing similarity between the Disputed Domain Name and the RICK OWENS trademark;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent does not own any registered rights in any trademarks which comprise part or all of the Disputed Domain Name. The Complainant has not given its consent for the Respondent to use its registered trademarks in a domain name registration. The Respondent is not commonly known as "Rick Owens" or "Rick Owens Store". The words "Rick Owens" are not generic in any way. The Respondent's use of the Disputed Domain Name is for commercial gain; and
(iii) The Disputed Domain Name was registered and is being used in bad faith. The Complainant's rights in the RICK OWENS trademark date back to 2003. The Respondent must have been aware of the reputation of the Complainant's business under the RICK OWENS trademark at the time the Disputed Domain Name was registered. The Respondent uses the Disputed Domain Name to attract consumers for commercial gain, in respect of goods protected by the RICK OWENS trademark. In doing so, the Respondent disrupts the Complainant's business and deceives customers into believing that there may be a connection between the Disputed Domain Name and the Complainant's business. The Respondent appears to be intentionally trading on the goodwill of the RICK OWENS trademark. The originally named respondent, Nexperian Holding Limited, is engaged in a pattern of bad faith registrations. The Respondent's contact email address is associated with several ".xyz" domain names containing third party trademarks in the fashion and sports apparel industries, including NFL, JORDAN, NIKE, REEBOK and ADIDAS. The Respondent is engaged in a pattern of bad faith registration.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Language of Proceeding
Since the registration agreement was in Chinese, as verified by the Registrar, the default language of the proceeding is Chinese. The Complainant has requested that English be adopted as the language of proceeding. Pursuant to paragraph 11(a) of the Rules, the Panel determines that the language of the proceeding shall be English having regard to the circumstances of the administrative proceeding. In particular, the Panel has noted that:
(a) The Respondent has not objected to the Complainant's request for English to be adopted;
(b) No Response was filed;
(c) The website resolved from the Disputed Domain Name was entirely in English, and the Respondent clearly used English as a working language;
(d) The Complaint has already been filed in English with notification of the proceeding having been sent to the Respondent in Chinese and English; and
(e) Requiring the Complaint to be translated into English will cause unnecessary delay to the proceeding.
To succeed in this proceeding, the Complainant must establish all three limbs of paragraph 4(a) of the Policy:
(i) The Disputed Domain Name is identical or confusing similar to a trademark in which the Complainant has rights;
(ii) The Respondent does not have rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
By virtue of the trademark registrations submitted in the evidence, the Complainant clearly has rights in the RICK OWENS trademark. As the space character is an invalid character for domain name registration, the Panel is satisfied that the Disputed Domain Name includes the RICK OWENS trademark in its entirety with the only difference from the RICK OWENS trademark being the addition of the suffix "store". The word "store" is a generic descriptor and it takes little mental effort for one to realize the resulting reference in the Disputed Domain Name to a store for products associated with the RICK OWENS trademark. The suffix does not assist to distinguish the Disputed Domain Name from the RICK OWENS trademark, which remains clearly recognizable in the Disputed Domain Name. The Panel accordingly finds the Disputed Domain Name to be confusingly similar to the RICK OWENS trademark and holds that the first limb of paragraph 4(a) of the Policy is established.
B. Rights or Legitimate Interests
There is no evidence to indicate that the Respondent owns any registered trademark rights in the Disputed Domain Name, or that the Respondent is commonly known by the Disputed Domain Name. The Complainant has confirmed that it has not consented to the Respondent's use of the RICK OWENS trademark in the Disputed Domain Name. The Panel is unable to find in the evidence any suggestion that the Respondent is using the Disputed Domain Name in any bona fide or noncommercial manner. In fact, the evidence shows that the Respondent has used the Disputed Domain Name on a website designed for online shopping and commercial gain. There is nothing on the website that expressly clarifies the relationship (or lack thereof) between the Complainant and the Respondent. Despite the absence of any relationship between the Parties, the impression of association with the Complainant created by the website is unmistakable. The Panel accepts that the Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. Since this has not been rebutted by any Response, the second limb of paragraph 4(a) of the Policy is also established.
C. Registered and Used in Bad Faith
The prominent use of the RICK OWENS trademark on the website resolved from the Disputed Domain Name leaves no doubt in the Panel's mind that the Respondent was clearly aware of the Complainant and the RICK OWENS trademark. The use of the RICK OWENS trademark in association with the online offering and sales of clothing articles cannot be accidental, but speaks of a deliberate plan to capitalize on the RICK OWENS trademark. Such a circumstance falls within the situation of bad faith registration and use described in paragraph 4(b)(iv) of the Policy, namely:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."
The Panel is convinced that the Respondent's use of the Disputed Domain Name on the resolved website would likely attract Internet users by creating a likelihood of confusion with the RICK OWENS trademark as to the source, sponsorship, affiliation, or endorsement of that website. The serious allegations against the Respondent by the Complainant have been met by absolute silence from the Respondent for which the Panel hereby draws an adverse inference that the Respondent is unable to refute the same.
The Panel has noted the numerous domain name registrations and UDRP cases associated with the originally named respondent, Nexperian Holding Limited, which resulted in transfer of the domain name registrations. The Association of the Respondent to other domain name registrations incorporating trademarks which have been held to be well known by prior panels (e.g., NFL — National Football League v. Online Marketing International also known as International Marketing Group, WIPO Case No. D2008-2006; NIKE — Nike, Inc. v. Crystal International, WIPO Case No. D2001-0102; ADIDAS — Adidas AG v. Daehyeon Kim, WIPO Case No. D2013-1904) is also suggestive of a pattern of conduct as outlined in paragraph 4(b)(ii) of the Policy.
Based on the circumstances, the Panel holds that the Disputed Domain Name was registered and is being used in bad faith under the third limb of 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 Name, <rickowensstore.com>, be transferred to the Complainant.
Kar Liang Soh
Date: November 20, 2017