WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Manolo Blahnik International Limited, Mr. Manolo Blahnik and MB Foundation Limited v. Bin Zhu, Zhu Bin and Bruno Migliozzi

Case No. D2018-0923

1. The Parties

The Complainants are Manolo Blahnik International Limited (the “First Complainant”), Mr. Manolo Blahnik (the “Second Complainant”), both of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), and MB Foundation Limited (the “Third Complainant”), of St Helier, Jersey, all represented by HGF Limited, United Kingdom.

The Respondents are Bin Zhu, Zhu Bin (the “First Respondent”) of Putian, Fujian, China and Bruno Migliozzi (the “Second Respondent”) of Botwnnog, United Kingdom.

2. The Domain Names and Registrars

The disputed domain name <manoloblahnikes.com> is registered with West263 International Limited and the disputed domain name <manoloblahnik2017.com> is registered with 1API GmbH (both referred to as the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) regarding the disputed domain name <manoloblahnikes.com> on April 25, 2018. On the same day, the Center transmitted by email to the Registrar West263 International Limited a request for registrar verification in connection with the disputed domain name <manoloblahnikes.com>. On April 26, 2018, the Registrar West263 International Limited transmitted by email to the Center its verification response confirming that the First Respondent is listed as the registrant and providing the contact details.

On April 25, 2018, the Complainant submitted the first amended Complaint in English, adding the disputed domain name <manoloblahnik2017.com>. On April 27, 2018, the Center transmitted by email to the Registrar 1API GmbH a request for registrar verification in connection with the disputed domain name <manoloblahnik2017.com>. On April 30, 2018, the Registrar 1API GmbH transmitted by email to the Center its verification response confirming that the Second Respondent is listed as the registrant and providing the contact details.

On May 1, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding and a formal deficiency in the first amended Complaint. On the same day, the Complainants confirmed their request that English be the language of the proceeding and also filed a second amended Complaint at the Center’s invitation. The Respondents did not comment on the language of the proceeding.

The Center verified that the Complaint together with the first amended Complaint and the second 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 Respondents in English and Chinese of the Complaint, and the proceedings commenced on May 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 28, 2018.

The Center appointed Matthew Kennedy as the sole panelist in this matter on June 7, 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 Second Complainant is a shoe designer and the founder of his eponymous shoe brand. He owns the First and Third Complainants. The Second Complainant owns trademark registrations for MANOLO BLAHNIK including European Union trademark registration number 005310685, registered on October 8, 2007. The Third Complainant owns trademark registrations for MANOLO BLAHNIK including Hong Kong, China, trademark registration number 302016422, registered on May 29, 2012. These trademark registrations specify goods and services in multiple classes including shoes in class 25 and they remain current.

The First Respondent is an individual resident in China. The Second Respondent is also an individual whose contact street address in the Registrar’s WhoIs database is apparently false (although the town exists, in Wales).

The disputed domain name <manoloblahnikes.com> was created on December 31, 2015 and the disputed domain name <manoloblahnik2017.com> was created on June 7, 2017. The disputed domain names resolve to virtually identical websites in Spanish. The websites prominently display the trademark MANOLO BLAHNIK and offer for sale what are alleged to be the Complainant’s shoes. Prices are displayed in Euro. The disputed domain name <manoloblahnikes.com> also displays a banner that reads “Manolo Blahnik España Tienda Online Outlet” (translation: Manolo Blahnik Spain Online Outlet Store).

5. Parties’ Contentions

A. Complainants

The disputed domain names are confusingly similar to the Complainants’ MANOLO BLAHNIK trademark. The disputed domain names are identical to that trademark save for the addition of “es” or “2017”. The trademark is instantly recognizable within the disputed domain names.

The Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents are attempting to impersonate the Complainants’ business or at least to mislead consumers into believing that they are an authorized seller of legitimate products in a situation where no authorization has been given to the Respondents and the products are suspected counterfeit. The Respondents have no affiliation, endorsement or authorization. The addition “es” to the Complainant’s trademark leads Internet users to believe that the website is the Spanish branch of the Complainants’ business. Once the user lands on the website, there is nothing to correct this mistaken belief. The Respondents are not a legitimate reseller or distributor of the Complainants’ products.

The disputed domain names were registered and are being used in bad faith to intentionally attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainants’ mark as to the source, affiliation, or other economic connection of those websites and/or of the products being marketed and retailed on those websites. The disputed domain names are being used for websites for retail purposes for the sale of suspected counterfeit shoes bearing the Complainants’ trademark. The trademark is reproduced identically and prominently at the top of the website, on products on the website and their packaging.

B. Respondents

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

6. Discussion and Findings

6.1. Procedural Issues

A. Language of the Proceeding

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 Registrar confirmed that the Registration Agreement for the disputed domain name <manoloblahnikes.com> is in Chinese and that the Registration Agreement for the disputed domain name <manoloblahnik2017.com> is in English.

The Complainants request that the language of the proceeding be English. Their main arguments are that the website to which the disputed domain names resolve is predominantly in Spanish with words in English; a website to which another domain name formerly registered by the First Respondent resolved was in English (an assertion that is not supported by evidence); websites to which other domain names registered by the Second Respondent currently resolve are all in English; the Second Respondent has used a British address for registration (although that address is false); the Respondents are obviously familiar with the English language, whereas the Complainant is not able to communicate in Chinese, thus the greater burden would be on the Complainant in arranging and meeting the substantial expense for translations for proceedings conducted in Chinese and this would cause undue delays in the proceeding which is for the benefit of neither Party.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in this proceeding the Complaint was filed in English, which is the language of one of the Registration Agreements. Although the First Respondent’s Registration Agreement is in Chinese, the website to which its disputed domain name resolves is not in that language. The Respondents did not indicate any wish to reply to the Complaint or otherwise to participate in this proceeding. In view of these circumstances and the Panel’s findings in Section 6.1C below, the Panel considers that requiring the Complainants to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all these circumstances, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

B. Multiple Complainants

The Complaint was filed by three Complainants, who are all related. The Second Complainant is a natural person who owns the First and Third Complainants. The Second and Third Complainants each own trademark registrations for MANOLO BLAHNIK in different jurisdictions. The First Complainant licenses these trademarks and is the registrant of the group’s official website at “www.manoloblahnik.com”.

The Panel finds that the Complainants have a specific common grievance against the disputed domain name registrants and that the registration and use of the disputed domain names has affected the Complainants’ individual rights in a similar fashion. The Panel considers that it would be equitable and procedurally efficient to permit the consolidation of their complaints. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated.

C. Multiple Respondents

The Complainant requests consolidation of the disputes against two nominally different domain name registrants pursuant to paragraph 10(e) of the Rules. The Respondents did not comment on the Complainant’s request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. The Complainant alleges that the disputed domain names are under common control. The Panel does not consider that paragraph 3(c) of the Rules was intended to enable a single individual or entity using different names, or a group of individuals acting in concert, to put a complainant to the unnecessary time, expense and effort of initiating multiple proceedings against technically different domain name registrants, particularly when each registration raises the same issues. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview 3.0, section 4.11.2.

As regards common control, the Panel observes that the disputed domain names resolve to websites with virtually identical content offering the same goods for sale and displaying the same sales service email address. In these circumstances, the Panel is satisfied that the disputed domain name registrants are under common control or even the same person.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes regarding the disputed domain name registrants in a single proceeding. Therefore, the Respondents are referred to below collectively as “the Respondent” except as otherwise indicated.

6.2. Substantive Issues

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the MANOLO BLAHNIK trademark.

The disputed domain names incorporate the Complainant’s trademark in its entirety. The Complainant’s trademark is the first element in each disputed domain name.

The disputed domain names contain the additional element “es” or “2017”. The additional element “es” merely consists of two letters while “2017” is merely a year. The Complainant’s trademark remains clearly recognizable within the disputed domain names. These additional elements do not dispel confusing similarity with the Complainant’s trademark.

The disputed domain names also contain the generic Top-Level Domain (“gTLD”) suffix “.com” but a gTLD suffix generally has no capacity to distinguish a domain name from a trademark. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.

Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first circumstance, the disputed domain names are confusingly similar to the Complainant’s trademark and are being used with websites that offer for sale what are alleged to be the Complainant’s shoes. The Complainant submits that the Respondent has no affiliation, endorsement or authorization and that the Respondent is not a legitimate reseller or distributor of the Complainant’s products. Regardless of whether the shoes offered on the websites are genuine or infringing, the websites do not accurately disclose the Respondent’s lack of any relationship to the Complainant. On the contrary, the websites falsely claim to be the Complainant’s outlet store. These facts show that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Accordingly, the Panel does not find that the Respondent’s use falls within the first circumstance of paragraph 4(c) of the Policy.

As regards the second circumstance, the Respondent’s name is listed in the Registrars’ WhoIs database as “Bin Zhu, Zhu Bin” or “Bruno Migliozzi”. There is no evidence indicating that the Respondent has been commonly known by either of the disputed domain names as envisaged by the second circumstance of paragraph 4(c) of the Policy.

As regards the third circumstance, the disputed domain names resolve to websites that offer shoes for commercial sale. That is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent did not rebut that prima facie case because he did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”

The Respondent registered the disputed domain names <manoloblahnikes.com> and <manoloblahnik2017.com> in 2015 and 2017, respectively, years after the Complainant obtained its trademark registrations. The disputed domain names wholly incorporate the Complainant’s trademark, which is a proper name. The additional element “es” is an abbreviation for Spain and gives the false impression that one of the disputed domain names resolves to the Complainant’s Spanish website. The websites to which the disputed domain names resolve offer for sale what are alleged to be the Complainant’s products. This indicates to the Panel that the Respondent intentionally chose to register the Complainant’s trademark in the disputed domain names in bad faith.

The Respondent uses the disputed domain names, which wholly incorporate the Complainant’s trademark, with websites that display the Complainant’s trademark and offer what are alleged to be the Complainant’s shoes for sale. Given the findings in Section 6.2B above, the Panel considers that the Respondent’s use of the disputed domain names intentionally attempts to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of the products on those websites.

Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

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 <manoloblahnikes.com> and <manoloblahnik2017.com> be transferred to the First Complainant, Manolo Blahnik International Limited.

Matthew Kennedy
Sole Panelist
Date: June 10, 2018