WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brunello Cucinelli S.p.A. v. Xiao Meichen, Chen xiao mei
Case No. D2018-1368
1. The Parties
The Complainant is Brunello Cucinelli S.p.A. of Corciano, Solomeo, Italy, represented by Barzanò & Zanardo Roma SpA, Italy.
The Respondent is Xiao Meichen, Chen xiao mei of Longyan, Fujian, China.
2. The Domain Names and Registrar
The disputed domain names <brunellocucinielli.com> and <brunelloecucinelli.com> (“Disputed Domain Names”) are 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 June 19, 2018. On June 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On June 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 June 26, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On June 27, 2018, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 of the Complaint, in English and Chinese, and the proceedings commenced on July 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 23, 2018.
The Center appointed Kar Liang Soh as the sole panelist in this matter on August 1, 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 conducts a substantial fashion retail business under the name “Brunello Cucinelli”, derived from the Italian fashion designer Mr. Brunello Cucinelli who started as a clothing manufacturer for women. Founded in 1978, the Complainant has since expanded its activity to include other types of clothing and accessories such as shoes, bags and linens, etc. It now operates 94 boutique stores (including in China) worldwide, and also distributes products via third-party retail channels. Products under the “Brunello Cucinelli” name have received global recognition and the company has received multiple prestigious awards and has regularly been featured on numerous publications, including renowned magazines on fashion design.
The Complainant owns various registrations for the trademark BRUNELLO CUCINELLI, including:
Trade Mark No.
March 21, 2007
April 7, 1989
European Union Trade Mark, (“EUTM”)
October 16, 2013
In particular, International Registration Nos. 925651 and 537288 designate China.
The Complainant also holds numerous domain name registrations containing “brunellocucinelli”, including: <brunellocucinelli.net>, <brunellocucinelli.cn> and <brunellocucinelli.com.hk>.
The Disputed Domain Name <brunellocucinielli.com> was registered by the Respondent on May 14, 2017. It directs users to a website offering for sale products belonging to various third parties. Meanwhile, the Disputed Domain Name <brunelloecucinelli.com> was registered by the Respondent on January 15, 2018. It directs users to a website offering for sale “Brunello Cucinelli” and “Vivienne Westwood” branded apparel.
5. Parties’ Contentions
The Complainant contends that:
1) The Disputed Domain Names are identical or confusingly similar to the Complainant’s BRUNELLO CUCINELLI trademark. The Disputed Domain Name <brunellocucinielli.com> is identical or similar to the trademark as it differs only by the addition of the letter “i” in the word “cucinielli”. The Disputed Domain Name <brunelloecucinelli.com> is identical or similar to the trademark as it differs only by the addition of the letter “e” between the words “brunello” and “cucinelli”.
2) The Respondent has no rights or any legitimate interests in the Disputed Domain Names. The Complainant has not licensed or authorized the Respondent to use the Complainant’s BRUNELLO CUCINELLI trademark. The Respondent is also not associated with the Complainant. The Respondent’s use of the Disputed Domain Names does not amount to a bona fide offering of goods or services.
3) The Disputed Domain Names were registered and are being used in bad faith. By reproducing the Complainant’s BRUNELLO CUCINELLI trademark on the website resolved from the Disputed Domain Name <brunelloecucinelli.com>, the Respondent is therefore aware of its business and trademark. 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 mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the registration agreement is Chinese and the default language of the proceeding should therefore be Chinese. However, paragraph 11(a) of the Rules allows the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. In this case, the Complainant has requested for the language of the proceeding to be in English, and has submitted the Complaint in English.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that parties are treated with equality.
Having reviewed the circumstances of this case, the Panel determines that English should be the language of the following proceedings. In arriving at this decision, the Panel notes that:
a) The websites resolved from the Disputed Domain Names appear to be entirely in English, which indicates the Respondent’s familiarity with the language;
b) The Respondent has not objected to the Complainant’s language request;
c) The Respondent has neither filed a Response nor chosen to participate in the proceeding in any way; and
d) No apparent procedural benefit may be achieved if Chinese were to be adopted as the language of the proceeding at this stage and unnecessary delay to the proceeding may be expected instead.
6.2 Substantive Matters
To succeed in this proceeding, paragraph 4(a) of the Policy requires the Complainant to prove each of the following three 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 the Disputed Domain Names; and
(iii) The Disputed Domain Names have been registered and are being used in bad faith.
Accordingly, the Panel shall proceed to consider each element in turn.
A. Identical or Confusingly Similar
Based on the evidence, it is accepted that the Complainant owns rights in the BRUNELLO CUCINELLI mark due to its registrations worldwide.
The Disputed Domain Name <brunellocucinielli.com> differs from the BRUNELLO CUCINELLI trademark by the addition of a letter “i” in the word “cucinelli”, between the letters “n” and “e”. The Panel finds this to be a simple misspelling that users of the Internet may easily make. It is well established that the addition of a single letter to a trademark does not avoid a finding of confusing similarity between the domain name and the trademark in issue. See, e.g., Minerva S.A. v. Oneandone Private Registration, 1&1 Internet Inc. / Maria Nobree, WIPO Case No. D2018-0765. The Panel adds that this is particularly so in a case where the additional letter forms only one among several letters and has an insignificant impact on the pronunciation of the original word(s).
As for the Disputed Domain Name <brunelloecucinelli.com>, the BRUNELLO CUCINELLI trademark is included in the same sequence, but with the interjection of a letter “e” in the middle, between the words “brunello” and “cucinelli”. This Panel finds this to be another typographical mistake that might easily go unnoticed by an Internet user. Again, the addition of a single letter to a trademark to form a domain name does not avoid confusing similarity. See, e.g., Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Huang Yan Jin, WIPO Case No. D2012-0128, where similarly a letter “e” inserted between the words of the trademark in issue did not serve to avoid confusing similarity between the domain name and the trademark.
It is also recognized that the generic top-level domain (“gTLD”) “.com” to the Disputed Domain Names may be disregarded for the purpose of assessment under the first element. See, e.g., F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451. Rather, the gTLD “.com” is a necessary technical feature in order to operate domain names and should be irrelevant when considering the Disputed Domain Names’ confusing similarity to the Complainant’s trademark.
For both Disputed Domain Names, the addition of an additional letter and the gTLD “.com” does not serve to avoid confusing similarity with the Complainant’s BRUNELLO CUCINELLI trademark. In essence, the Disputed Domain Names are still visually and aurally similar to the trademark, therefore the identity of the trademark is still preserved in the Disputed Domain Names.
Hence, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is acknowledged that the Complainant in establishing its case under this limb requires only to show a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names. Once this is established, the Respondent then bears the burden of showing why it has such rights or legitimate interests. In the present case, the Complainant has confirmed that the Respondent is neither associated with nor permitted by the Complainant to use the BRUNELLO CUCINELLI mark. In the case of the website at the Disputed Domain Name <brunellocucinielli.com>, the Panel finds that the offering of goods under various third-party trademarks does not amount to a bona fide use of the Disputed Domain Name. Rather, this appears to be an attempt to attract Internet users to the Respondent’s website that may otherwise be searching for the Complainant. As such, the Respondent cannot reasonably claim any bona fide use as a reseller. Furthermore, the provenance of the goods offered at the Respondent’s website has been called into question by the Complainant. The Respondent, not having filed any Response, has not rebutted the Complainant’s prima facie position. Therefore, there is no evidence suggesting that the Respondent has been or is commonly known by the Disputed Domain Names, or that it has acquired trademark rights in the Disputed Domain Names, or that it otherwise owns any rights or legitimate interests in the Disputed Domain Names.
Hence, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy prescribes non-exhaustive circumstances that may prove bad faith under paragraph 4(a)(iii). The Panel is satisfied that paragraph 4(b)(iv) has been met:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
This Panel finds that the Respondent must have been aware of the BRUNELLO CUCINELLI mark when registering the Disputed Domain Names. The Complainant’s trademark registrations designating the Respondent’s home country dates from as far back as 1989. The Disputed Domain Names were only registered recently, in 2017 and 2018, respectively. Further, screenshots of the website resolved from one of the Disputed Domain Names, <brunelloecucinelli.com>, clearly show the Complainant’s BRUNELLO CUCINELLI trademark and related logo being reproduced without the typographical additions of the respective letters “e” and “i” as found in the Disputed Domain Names. This trademark and logo are also prominently displayed on the Complainant’s own website. This blatant act of reproduction has been held to be sufficient for registration and use to be in bad faith, especially where an Internet user may easily make misspellings and are instead directed to the Respondent’s websites. (See, e.g., Philipp Plein v. Protection of Private Person, Privacy Protection / Igorevski Aleksey, WIPO Case No. D2018-0062).
The Panel notes that the Respondent’s offer of products for sale on the websites resolved from the Disputed Domain Names clearly shows it is using the Disputed Domain Names for commercial gain. The websites resolved from the Disputed Domain Names clearly provide for order forms to be filled and indicate various currencies to be chosen for payment. Therefore, it is clear that the Respondent is attempting to attract, for commercial gain, Internet users to its websites. (See, e.g., Bayerische Motoren Werke AG (BMW) v. Balog Sebastian, WIPO Case No. D2017-1407). Furthermore, in offering products for sale, the Respondent is reproducing the Complainant’s trademark and logo without permission. Thus, it is evident that the Respondent’s commercial gain has been intended by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the websites and of the products offered for sale on the websites. (See, e.g., Mills Brothers B.V., The Sting B.V. v. Private Proxy Registration, WIPO Case No. D2012-1142).
Further, the Panel notes that the Complainant has made a serious allegation that the Respondent is selling goods that are either counterfeit or non-existent. The nature of such an allegation is such that a reasonable person in the position of the Respondent should be denying it vehemently if it were false. However, by choosing not to respond the Panel finds that this is cause for inference to be drawn that the Respondent is unable to deny such an allegation, and is indeed using the Disputed Domain Names in bad faith.
Hence, the Panel finds that the Complainant has satisfied the third and final element of paragraph 4(a)(iii) of the Policy. Accordingly, the Complainant has successfully shown that the Respondent has registered and is using the Disputed Domain Names in bad faith.
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 <brunellocucinielli.com> and <brunelloecucinelli.com> be transferred to the Complainant.
Kar Liang Soh
Date: August 15, 2018