WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mr. Manolo Blahnik, Manolo Blahnik International Limited, MB Foundation Limited v. Xiao Meichen, Chen Xiao Mei
Case No. D2018-0870
1. The Parties
The Complainant is Mr. Manolo Blahnik of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”); Manolo Blahnik International Limited of London, United Kingdom; MB Foundation Limited of Jersey, overseas territory of the United Kingdom, represented by DLA Piper UK LLP, United Kingdom.
The Respondent is Xiao Meichen, Chen Xiao Mei of Longyan, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <manolosblahnik.com> is registered with Xin Net Technology Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2018. On April 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 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 April 23, 2018, the Center sent an email to the Parties in English and Chinese regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on the same day. The Respondent 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on April 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2018.
The Center appointed Rachel Tan as the sole panelist in this matter on May 29, 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 MANOLO BLAHNIK worldwide trade mark registrations are owned either by Mr. Manolo Blahnik (“Mr. Blahnik”), a luxury footwear designer, or MB Foundation Limited (“MBF”), a Jersey incorporated company. Manolo Blahnik International Limited (“MBIL”), manufactures and distributes footwear designed by Mr. Blahnik, and is authorized to use and license these trade marks for its commercial business operations. These three entities are collectively the Complainant in this proceeding.
The Complainant authorizes and licenses third parties to market, distribute and sell products under the MANOLO BLAHNIK trade mark in various jurisdictions around the world. “Manolo Blahnik” branded luxury footwear is sold in upscale retail stores, appears in fashion magazines and other media outlets, and is worn by celebrities. Through long term and extensive use of “Manolo Blahnik”, the name and trade mark have gained a significant reputation as the hallmark for luxury designer footwear.
Mr. Blahnik and MBF hold numerous worldwide registrations of the MANOLO BLAHNIK trade mark, including European Union Trade Mark Registration No. 005310685 in classes 3, 4, 9, 14, 16, 18, 21, 27, 30 and 35, registered on October 8, 2007, and United States of America (“US”) Trade Mark Registration No. 3373422 in classes 18, 25 and 35, registered on January 22, 2008.
MBIL is the registrant of various domain names containing “manoloblahnik”, including <manoloblahnik.com> registered on August 18, 1998.
The disputed domain name was registered by the Respondent on March 15, 2017. The disputed domain name resolves to a website offering discounted “Manolo Blahnik” and “Ecco” branded footwear.
5. Parties’ Contentions
The Complainant contends that the various trade mark registrations confer upon it exclusive rights to MANOLO BLAHNIK as a trade mark. The disputed domain name is identical or similar to the Complainant’s trade mark as it differs only by the addition of the letter “s”. The Respondent registered the disputed domain name at a date significantly later than the date of first use and registration of the Complainant’s MANOLO BLAHNIK trade mark as well as the registration date of its <manoloblahnik.com> domain name.
The Complainant further contends the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or permitted the Respondent to use the MANOLO BLAHNIK trade mark or any of its trade marks. The Respondent is offering “Manolo Blahnik” branded products at heavily discounted prices, whilst maintaining that it is affiliated with the Complainant, where no connection exists. The Complainant states that it has received complaints from customers regarding the alleged affiliation. Thus, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services.
The Complainant finally sets out the reasons to support its contention that the Respondent registered and used the disputed domain name in bad faith. The disputed domain name was registered years after the establishment of the Complainant by which time the “Manolo Blahnik” brand has gained acclaim. This fact and the alleged affiliation with the Complainant demonstrate that the Respondent had actual knowledge of the Complainant and its trade marks. Further, the Respondent had intentionally attempted to attract for commercial gain, Internet users to its website. The disputed domain name was deliberately chosen to take advantage of the goodwill associated with the Complainant’s trade marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of Proceedings
Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.
In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding.
The Respondent did not comment on the language of the proceeding. The Center proceeded to issue its case-related communications to the Parties in both English and Chinese. The Center decided to accept the Complaint as filed in English, accept a Response in either English or Chinese, and appoint a Panel familiar with both languages.
It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below:
(a) The Complainant comprises of entities based in the United Kingdom and its Crown dependency. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;
(b) The disputed domain name redirects users to a website with English language content which indicates familiarity with the English language;
(c) Even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese regarding the language of the proceeding, but the Respondent did not reply; and
(d) The Respondent has failed to participate in the proceeding and has been notified of its default. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.
As one panel put it in the case Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191 (<shopzappos.com>):
“…a clear default by a Respondent who has been informed in their own language of the proceedings, and of the preliminary acceptance of the Complaint in a particular language, would certainly be a strong factor in support of a Panel subsequently determining that there should be consistency between the language of the Complaint as originally accepted and the language of proceedings as ultimately determined by the Panel.”
B. Identical or Confusingly Similar
The Complainant submitted a list of trade mark registrations for MANOLO BLAHNIK, MANOLO and BLAHNIK, relying on certain European Union and US trade marks registrations. The registrations cover a broad range of goods and services, including footwear and retail services.
The Panel finds that the Complainant has adduced sufficient evidence to demonstrate its established rights in the MANOLO BLAHNIK trade mark.
The disputed domain name replicates the Complainant’s MANOLO BLAHNIK trade mark in its entirety with the addition of an “s” to “manolo”. The extra “s” is a common misspelling. See Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043, (<edmundss.com>), where the panel held that:
“This is clearly a ‘typosquatting’ case where the disputed domain name is a slight misspelling of a registered trademark to divert Internet traffic. In fact, the <edmundss.com> domain name comprises the Complainant’s trademark EDMUND’s with a single misspelling of an element of the mark: a double consonant ‘s’ at the end. Also, the disputed domain name is virtually identical to Complainant’s domain name <edmunds.com>. As a result, this is an example of confusing similarity and/or virtual identity brought about through easily made typing errors made by an Internet user: rather than typing the word ‘s’ to visit Complainant’s website, an Internet user could easily type a double ‘s’ and be diverted to a different website.”
The addition of “.com”, a generic Top-Level Domain (“gTLD”), is a technical requirement of every domain name registration that can be disregarded.
Therefore, the Panel finds that the disputed domain name is virtually identical or confusingly similar to the Complainant’s MANOLO BLAHNIK trade mark. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
The Complainant contends that the Respondent is not sponsored or affiliated with the Complainant nor has the Respondent been authorized to use the MANOLO BLAHNIK trade mark or register the disputed domain name. The Complainant further alleges that the Respondent is maintaining a website under the disputed domain name which is suspected of selling counterfeit shoes. Customer enquiries about the connection between the Respondent and the Complainant add to the impression of an affiliation. Finally, the Respondent is not “commonly known” by the disputed domain name given its false affiliation claims.
In circumstances where the Complainant possesses exclusive rights to the MANOLO BLAHNIK trade mark whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683, (<thecharminghotel.com>).
The Respondent however has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, nor of any other circumstances giving rise to rights or legitimate interests in the disputed domain name. On the contrary, the Panel notes that the disputed domain name is directed to a website with the claim “Manolo Blahnik, Ecco Shoes Outlet Sale, Up To 70% Off, 100% Authentic”. The website does not accurately or prominently disclose the Respondent’s relationship with the Complainant. Further, the “Manolo Blahnik” branded shoes are offered disproportionately below market value. The circumstantial evidence supports the Complainant’s claim of illegal activity by the Respondent. This allegation has not been rebutted by the Respondent. The Panel also notes that the Respondent is not commonly known by the disputed domain name seeing that it purports to offer shoes branded with the Complainant’s trade mark. Therefore, the Panel finds that there is no bona fide offering of goods or services.
The Panel thus concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
D. Registered and Used in Bad Faith
The MANOLO BLAHNIK trade mark is the eponym of the luxury footwear designer, Mr. Blahnik, a party to the Complaint. The Complainant’s MANOLO BLAHNIK trade mark has been widely registered, used and promoted around the world. The disputed domain name was registered well after the first registration of the Complainant’s trade marks and domain name <manoloblahnik.com>.
The Respondent appears to be a Chinese individual according to the WhoIs information. The term “Manolo Blahnik” has no meaning in the Chinese language and would be considered distinctive in this territory. By registering a domain name entirety composed of this term with an added letter “s”, and by using the disputed domain name to resolve to a website purportedly offering the Complainant’s MANOLO BLAHNIK footwear, the Respondent must have actual knowledge of the Complainant’s trade mark, and therefore registered it in bad faith.
The Complainant further asserts that the heavily discounted prices of the footwear offered under the MANOLO BLAHNIK trade mark, on the website linked to the disputed domain name, strongly suggests that these products are counterfeit. This claim has not been rebutted by the Respondent which supports an inference of bad faith. See Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019, (<wwwprada.com>).
Taking into account all the circumstances of the case, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name. By the continuous registration and use of the website, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade mark.
Based on the above facts, it is implausible to contemplate of any good faith use to which the disputed domain name may be put by the Respondent.
Therefore, the Panel concludes that the Complainant has satisfied the third element under 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 <manolosblahnik.com> be transferred to MBIL as requested by the Complainant.
Date: June 10, 2018