WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Locatelli S.P.A. v. Nexperian Holding Limited / Desima James / Zhang Lixiang

Case No. D2018-0543

1. The Parties

The Complainant is Locatelli S.P.A. of Almenno San Bartolomeo, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.

The Respondent is Nexperian Holding Limited of Hangzhou, Zhejiang, China / Desima James of Georgia, United States of America (“United States”) / Zhang Lixiang of Ningbo, Zhejiang, China.

2. The Domain Names and Registrars

The disputed domain name <airohhelmetsuk.com> is registered with HiChina Zhicheng Technology Ltd.

The disputed domain name <airohhelmetsusa.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (collectively, the “Registrars”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2018. On March 13, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 14, 2018, the Registrars transmitted by email to the Center their verification response confirming that the Respondent (Desima James) is listed as the registrant and providing the contact details, while disclosing registrant and contact information for the disputed domain name <airohhelmetsuk.com> which differed from the named Respondent (Nexperian Holding Limited) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 16, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 20, 2018.

On March 16, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On March 19, 2018, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit any comment 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 English and Chinese of the Complaint, and the proceedings commenced on March 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 16, 2018.

The Center appointed Francine Tan as the sole panelist in this matter on April 24, 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 a leading Italian company which manufactures and sells motorcycle safety helmets. The company was founded in 1986.

The Complainant is the owner of the trade mark AIROH which, it states, has become one of the world’s leading brand names for motorcycle safety helmets. The AIROH brand has been used for 15 years and goods under the AIROH trade mark have been distributed and sold in over 80 countries.

The first trade mark application for AIROH HELMET was filed in Italy on March 5, 2002 and registered on April 3, 2006. The Complainant is the owner of trade mark registrations for AIROH and the AIROH HELMET (figurative mark) in the United States (Registration Nos. 4,432,735 and 4,432,736) and for the AIROH HELMET (figurative mark) in China (Registration No. 5669158). The AIROH trade mark is also registered under European Union trade mark Registration No. 010542991.

The Complainant operates its official website at “www.airoh.com”. The Complainant has registered many domain names incorporating the AIROH trade mark including <airohhelmets.it> (registered on April 11, 2000), <airoh.it> (registered on April 11, 2000) and <airoh.com> (registered on January 28, 2010).

The disputed domain name <airohhelmetsuk.com> was registered on September 4, 2016.

The disputed domain name <airohhelmetsusa.com> was registered on November 25, 2016.

Both disputed domain names resolve to websites offering the sale of what are allegedly AIROH helmets. The Complainant provided evidence of instances they were aware of, where people who bought the helmets through the Respondent’s websites did not receive what they paid for.

5. Parties’ Contentions

A. Complainant

(i) The disputed domain names are confusingly similar to the AIROH and AIROH HELMET trade marks in which the Complainant has rights. They are also similar to the Complainant’s domain names <airohhelmets.it>, <airoh.it> and <airoh.com>.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has not authorised, licensed or granted to the Respondent the right to use the Complainant’s AIROH and AIROH HELMET trade marks, or to use the disputed domain names containing the Complainant’s said trade marks. The Respondent has no trade marks or company activities registered under the AIROH brand, and there is no evidence that the Respondent has ever been known by the name “Airoh”. The disputed domain names are used fraudulently as the Respondent’s websites are presented as the Complainant’s official website and mislead consumers into believing that the Respondent is offering genuine AIROH helmets.

(iii) The disputed domain names were registered and are being used in bad faith. The Respondent obviously knew of the Complainant’s activity and trade marks when registering the disputed domain names. The word “airoh” is not a generic term so it is not possible that the Respondent chose the disputed domain names without being aware of the AIROH and AIROH HELMET trade marks of the Complainant. There is no plausible explanation why the Respondent selected the name “airoh helmet” as part of the disputed domain names other than to ride off the Complainant’s goodwill. It is obvious that the Respondent registered the disputed domain names with the Complainant’s trade marks in mind. The Respondent Nexperian Holding Limited has been party to many previous domain name disputes. Such behavior indicates that the Respondent does not operate in good faith. The Respondent has registered the disputed domain names with the specific purpose of diverting Internet users looking for the Complainant’s official website and products. The Respondent has in fact used the disputed domain names for a fraudulent purpose.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Consolidation of Respondent

The Complainant states its belief that Nexperian Holding Limited / Desima James / Zhang Lixiang are, if not one and the same entity, at least linked. The disputed domain names are therefore under common control.

The Complainant submits that consolidation should be allowed in view of the similarity of the use of the disputed domain names and the content displayed on the respective websites. Both websites present themselves as the Complainant’s “official” United States and British websites. The contents and look of the websites appear to be identical. Further, the disputed domain names are identical but for the “usa” and “uk” elements.

Additionally, the websites are both connected to a certain individual by the name “Lucy” identified by a specific email. Lucy is the contact person for consumer complaints filed by those who bought goods through the Respondent’s websites.

On March 23, 2018, the Center sent a communication to the Parties, in English and Chinese, stating that there appears to be prima facie grounds sufficient to warrant accepting the consolidated Complaint for the Panel’s final determination of the consolidation request. Reference was made to Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. This section of the WIPO Overview 3.0 states that:

Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.

Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).”

The Panel finds that the Complainant has established that the disputed domain names are more likely than not subject to common ownership or control. The content of the websites to which the disputed domain names resolve is essentially similar. The targeting of the Complainant’s well-established AIROH and AIROH HELMET trade marks in relation to helmets reflects a common conduct by the Respondent. The fact that both websites share “Lucy” in dealing with consumer complaints is also indicative of common control.

Hence, the Panel finds that the consolidation requested would be procedurally efficient and consistent with the aims of the Policy. The Respondent could have but did not dispute the Complainant’s arguments in this regard. The Panel draws the appropriate inference from the Respondent’s silence.

6.2 Language of the Proceeding

The Registration Agreement is in Chinese. The Complainant requested that English be accepted as the language of the proceeding as it is not familiar with Chinese. Translating the Complainant and annexes would present further costs and difficulties for the Complainant. The Complainant also pointed out that the Respondent’s websites are in English. There is also evidence that correspondence between the Respondent and some of the apparently-defrauded customers was in English.

The Complainant further pointed out that the disputed domain names contain English words that are related to the business of the Complainant. The Respondent Zhang Lixiang is associated with hundreds of domain names in Latin characters and corresponding to websites with English content. Examples are <qman-fashion.com>, <mobeishop.com>, <365worldfood.com>, <jonesworthy.com>, <openhsr.com>, <siboen-expo.com>, <gardenviewhotel-shenzhen.com> and <cheap-jewel.com>.

The Respondent did not respond on the issue of the language of the proceeding.

Paragraph 11(a) of the Rules stipulates that “[u]nless 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.”

Paragraph 10(c) states that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition.”

The Panel believes it would be appropriate for English to apply as the language of the proceeding. The Respondent’s websites are, firstly, entirely in English. Secondly, the disputed domain names comprise Latin characters, the English word “helmets”, and widely-used English abbreviations for the United States and the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). The Respondent is also associated with many other domain names comprising English words. The circumstances show that the Respondent is familiar and comfortable with the English language. The Respondent has not rebutted this with evidence to the contrary.

Requiring the Complainant to have the Complainant and annexes translated into Chinese would delay the proceeding, and without good reason.

The Panel therefore determines that English shall apply as the language of the proceeding.

A. Identical or Confusingly Similar

The Complainant has established that it has registered as well as unregistered rights in the trade marks AIROH and AIROH HELMET. These trade marks have been incorporated in their entirety, and are easily identifiable in the disputed domain names.

The addition of the abbreviations “usa” and “uk” and the letter “s” does not serve to remove the confusing similarity with the Complainant’s AIROH and AIROH HELMET trade marks. This position is well established by a whole host of earlier UDRP panel decisions (see paragraph 1.8 of the WIPO Overview 3.0).

The Panel therefore finds that the disputed domain names are confusingly similar to the AIROH and AIROH HELEMET trade marks in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not been authorised to use the AIROH and AIROH HELMET trade marks nor does it appear to be known by these names.

The Respondent’s use of the disputed domain names to create a false impression of association with the Complainant does not give rise to any rights or legitimate interests in the disputed domain names. In fact, the Respondent appears to have used the disputed domain names in a fraudulent effort to obtain payments from unsuspecting Internet users thanking that they were interacting with the Complainant.

The Respondent has failed to rebut the Complainant’s assertions. The Panel accordingly concludes that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

It is evident that the Respondent knew of the Complainant and its trade marks when it registered the disputed domain names. The disputed domain names incorporate the Complainant’s trade marks in their entirety and are used to direct Internet users to websites which create the false impression of association with or endorsement by the Complainant. Consumers are misled into thinking that these websites are the United Kingdom or United States-specific websites of the Complainant.

The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s AIROH and AIROH HELMET trade marks as to the source, sponsorship, affiliation, or endorsement of its websites or location or of products on its websites (paragraph 4(b)(iv) of the Policy).

The Panel therefore finds that the Respondent has registered and used the disputed domain names in bad faith.

7. Decision

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 <airohhelmetsuk.com> and <airohhelmetsusa.com> be transferred to the Complainant.

Francine Tan
Sole Panelist
Date: April 26, 2018