WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valentino S.p.A. v. Yu Juanjuan; Li Xiang Song; Hua Zhong, Fei Yang
Case No. D2017-2599
1. The Parties
The Complainant is Valentino S.p.A of Milan, Italy, represented by Studio Barbero S.p.A., Italy.
The Respondents are Yu Juanjuan of Fuzhou, Jiangsu, China; Li Xiang Song of Pingdingshan, Henan, China; and Hua Zhong, Fei Yang of bangbu, Anhui, China.
2. The Domain Names and Registrars
The disputed domain names <authenticvalentino.com> and <valentino2017.com> are registered with ZhuHai NaiSiNiKe Information Technology Co Ltd.; the disputed domain names <authenticvalentino.net>, <buyvalentino.net>, <lovevalentino.com>, <officialvalentino.net>, <valentinobay.com>, <valentinosite.com> and <valentinostore.net> are registered with Zhengzhou Zitian Network Technology Co., Ltd.; the disputed domain name <buyvalentino.com> is registered with Bizcn.com, Inc. (the “Registrars”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2017. On January 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 3, 2018 and January 5, 2018, the Registrars transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant and providing the contact details. On January 11, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. The Respondents did not comment on the language of the proceeding by the specified due date.
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 Respondents in English and Chinese of the Complaint, and the proceedings commenced on January 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on February 7, 2018.
The Center appointed Douglas Clark as the sole panelist in this matter on February 27, 2018. 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 Italian fashion house. It has worldwide registrations for VALENTINO as a trademark including in China. These trademarks include International Trademark Registration No. 570593 in classes 3, 14, 18 and 25 designating China registered on April 24, 1991.
The disputed domain names were registered on dates between October 15, 2013 and December 14, 2017.
The Respondents are individuals based in China. The disputed domain names resolve (or in some cases, previously resolved) to pages advertising apparently fake Valentino products and make use of a number of the Complainant’s trademarks.
5. Parties’ Contentions
Consolidation of Proceedings
The Complainant requests that the dispute be consolidated against all the Respondents on the basis that there are several commonalities in the WhoIs records of the disputed domain names, including the use of the same email address and the pointing of the disputed domain names to substantially identical websites. The Complainant contends these factors demonstrate that the disputed domain names are under the actual control of a single individual or entity or, at least, reflective of a group of individuals acting in concert.
Identical or Confusingly Similar
The Complainants contend that the disputed domain names are confusingly similar to the trademarks VALENTINO because they incorporate the whole of the Complainant’s trademark. The fact that they include non-distinctive elements such as “authentic”, “buy”, “love”, “bay”, “site” and “store” and the generic Top-Level Domain (“gTLD”) “.com”, “.net” does not affect the confusing similarity.
No Rights or Legitimate Interests
The Respondents have no connection with the Complainant or any of its affiliates and have never sought or obtained any trademark registrations for VALENTINO. The websites under the disputed domain names sell or previously sold fake products which cannot be legitimate. The Respondents, therefore, have no rights or legitimate interests in the disputed domain names.
Registered and Used in Bad Faith
Before acquiring the disputed domain names, it is highly likely the Respondents knew of the Complainant’s rights in the marks VALENTINO and acquired the disputed domain names to disrupt the business of the Complainant and/or divert business to the Respondents’ websites which sell apparently counterfeit products. It is inconceivable that the Respondents were not well aware of the Complainant’s trademark rights at the time of the registration of the disputed domain names. Further some of the disputed domain names have been registered with incorrect contact information.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Procedural Issues
A. Language of Proceedings
The language of the Registration Agreements is Chinese. 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 Complainant requested the language of the proceeding be English on the grounds that the websites under the disputed domain names were solely in English and if it were to translate documents in Chinese, the Complainant would incur unnecessary expense and the proceedings may be delayed.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
On the facts of this case, the Panel does not consider it appropriate to require the Complainant to translate the Complaint as it will unnecessarily delay the proceeding. From the content of the websites it does appear the Respondent can communicate in English.
Further, the Respondent did not respond to the Center’s preliminary determination regarding the language or proceeds. This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
The Panel will render its decision in English.
B. Consolidation of Proceedings
The Panel considers that it is fair and equitable in the circumstances of the case to order consolidation as requested. All the disputed domain names do appear to be under the control of one individual or a group acting in concert. See WIPO Overview of WIPO Panel views on Selected UDRP Questions, third Edition (“WIPO Overview 3.0”), section 4.11.2.
6.2 Substantive Issues
A. Identical or confusingly similar
The disputed domain names are confusingly similar to the Complainant’s trademark VALENTINO. They incorporate the Complainant’s VALENTINO trademark in full with the addition of generic terms.
The first part of paragraph 4(a) of the Policy is therefore satisfied.
B. No rights or legitimate interests
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant has made out a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy sets out ways in which a respondent may establish it has rights and legitimate interests. These are:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
The Respondents have not responded to assert any rights or legitimate interests. None of the Respondents are commonly known by any of the disputed domain names.
None of the circumstances in paragraph 4(c) of the Policy are, therefore, present in this case.
The second part of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain names were all registered in bad faith and are being used in bad faith. The Respondents clearly knew of the Complainant when they registered the disputed domain names – they use or previously used the disputed domain names to sell apparently counterfeit products of the Complainant.
This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”
The third part of paragraph 4(a) of the Policy is, therefore, satisfied.
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, <authenticvalentino.com>, <authenticvalentino.net>, <buyvalentino.com>, <buyvalentino.net>, <lovevalentino.com>, <officialvalentino.net>, <valentinobay.com>, <valentinosite.com>, <valentinostore.net>, <valentino2017.com> be transferred to the Complainant.
Date: March 16, 2018