WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
René Caovilla S.p.A. v. Xian Wei Fa
Case No. D2018-0001
1. The Parties
The Complainant is René Caovilla S.p.A. of Fiesso d’Artico, Italy, represented by Bird & Bird, Italy.
The Respondent is Xian Wei Fa of Hezhou, Guangxi, China.
2. The Domain Names and Registrar
The disputed domain names <renecaovilla.online>, <renecaovillaoutlet.online>, <renecaovillasale.online> and <renecaovillastore.online> are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2018, regarding the domain names <renecaovilla.online>, <renecaovillaoutlet.online>, <renecaovillasale.online>, <renecaovillastore.online> and <renecaovilla.wang>. On January 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 4, 2018, 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. On January 15, 2018, the Center sent a communication to the Complainant concerning the contact details of the Respondent and the registrant of the domain name <renecaovilla.wang>. On January 20, 2018, the Complainant submitted an amended Complaint removing the domain name <renecaovilla.wang> from the Complaint.
On January 15, 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 January 19, 2018. The Respondent did not comment on the language of the proceeding.
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 English and Chinese of the Complaint, and the proceedings commenced on January 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2018.
The Center appointed Douglas Clark as the sole panelist in this matter on March 5, 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 maker of luxury shoes. It has registrations for RENE CAOVILLA as a trademark in a number of jurisdictions around the world including International Trademark Registration No. 834807, registered on May 5, 2004 in Class 25 designating China.
The disputed domain names were registered on January 26, 2017.
The Respondent is an individual based in China. The disputed domain names resolve to pages advertising apparently fake Rene Caovilla products and make use of the Complainant’s trademark.
5. Parties’ Contentions
Identical or Confusingly Similar:
The Complainant contends that the disputed domain names are confusingly similar to the trademark RENE CAOVILLA because they incorporate the whole of the Complainant’s trademark. The fact that they include non-distinctive elements “sale”, “store” and “outlet” and the generic Top-Level Domains (“gTLD”) “.online” does not affect the confusing similarity.
No Rights or Legitimate Interests:
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for RENE CAOVILLA. The websites under the disputed domain names sell fake products which cannot be legitimate. The Respondent, therefore, has 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 Respondent knew of the Complainant’s rights in the marks RENE CAOVILLA and acquired the disputed domain names to disrupt the business of the Complainant and/or divert business to the Respondent’s websites which sell apparently counterfeit products. It is inconceivable that the Respondent was 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 Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Procedural Issue: 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 under the disputed domain names it does appear the Respondent can communicate in English.
Further, the Respondent did not respond to the Center’s preliminary determination regarding the language of the proceeding. 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.
6.2 Substantive Issues
A. Identical or confusingly similar
The disputed domain names are confusingly similar to the Complainant’s trademark RENE CAOVILLA. They incorporate the Complainant’s RENE CAOVILLA trademark in full with the addition in three cases of descriptive 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 Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads. None of the circumstances in paragraph 4(c) of the Policy are present in this case.
Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain names.
The second element 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 Respondent clearly knew of the Complainant when it registered the disputed domain names – they use 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 online 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, <renecaovilla.online>, <renecaovillaoutlet.online>, <renecaovillasale.online> and <renecaovillastore.online> be transferred to the Complainant.
Date: March 20, 2018