WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Self-Portrait IP Limited v. Xinnet Whois Privacy Pro Service / Sun yanqi, Sun yan qi
Case No. D2018-1709
1. The Parties
The Complainant is Self-Portrait IP Limited of Hong Kong, China, represented by Taylor Wessing, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Xinnet Whois Privacy Pro Service / Sun yanqi, Sun yan qi of Hangzhou, Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <selfportraitdresssale.com> (the “Domain Name”) 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 July 27, 2018. On July 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 30, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 3, 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 August 3, 2018.
On August 3, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On the same day, 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 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 of the Complaint, and the proceedings commenced on August 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2018.
The Center appointed Linda Chang as the sole panelist in this matter on September 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
Self-Portrait is a contemporary fashion label founded in 2013 and sold internationally in over 40 countries across Europe, Asia, Australasia and the United States of America. The Complainant is the owner of numerous SELF-PORTRAIT trademark registrations around the world, including International Registration No. 1226502, registered on October 2, 2014. The Complainant operates a global Self-Portrait website at “www.self-portrait-studio.com”.
The Domain Name was registered on January 16, 2018. It used to resolve to a website displaying contents in English and offering for sale “Self-Portrait” branded clothing, but is currently redirected to the Complainant’s website at “www.self-portrait-studio.com”.
5. Parties’ Contentions
The Complainant contends that the Domain Name consists of the name “self-portrait” combined with the descriptive suffix “dress sale”. The combination of the words “dress sale” with the name “self-portrait” conveys the meaning that the Domain Name relates to clothing and retrial services offered by the Complainant, or an economic undertaking otherwise connected with the Complainant. The Domain Name is therefore confusingly similar to the SELF-PORTRAIT trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. There is no credible evidence that the Respondent’s use of or demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name is in connection with a bona fide offering of goods or services, or that the Respondent has been commonly known by the Domain Name, or that the Respondent is or could be making any legitimate noncommercial or fair use of the Domain Name.
The Complainant finally contends that the Domain Name was registered and is being used in bad faith. By using the Domain Name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s reputed SELF-PORTRAIT mark and its business.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceedings
The Registrar has confirmed that the registration agreement is in Chinese. Under paragraph 11(a) of the Rules, the language of the proceedings 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 for English to be the language of the proceedings and its arguments include that the Respondent has used the Domain Name for an English website, and that it would be disproportionate and unfair to put the Complainant to the time and cost of translating and submitting this Complaint in Chinese.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings by taking into account all relevant circumstances. It is established practice to take paragraphs 10(b) and 10(c) of the Rules into consideration for the purpose of determining the language of the proceedings to ensure that the parties are treated with equality and that each of them is given a fair opportunity to present its case.
The Panel notices that though the Respondent is located in China, the website associated with the Domain Name used to resolve to a website displaying contents in English. The Panel further notices that the Respondent has been given a fair opportunity to object to the use of English as the language of the proceedings but did not do so.
Taking into account all relevant circumstances, the Panel views that using English as the language of the proceedings would not be prejudicial to the Respondent in its ability to articulate the arguments for the case, and determines the language of the proceedings shall be English and the decision will be rendered in English.
B. Identical or Confusingly Similar
The Complainant has presented sufficient evidence to prove that it is the registered proprietor of the trademark SELF-PORTRAIT around the world, including International Registration number 1226502 registered on February 10, 2014 designating China, and International Registration number 1363382 registered on December 16, 2016 designating China.
“.com” being the generic Top-Level Domain may be disregarded for the purpose of assessment under the first element. The dominant part of the Domain Name “selfportraitdresssale” consists of “selfportrait”, “dress” and “sale”. The Panel agrees that the addition of the words “dresssale” cannot avoid the finding of confusing similarity. See Carlsberg A/S v. Personal / decohouse, decohouse, WIPO Case No. D2011-0972; ECCO Sko A/S v. Jacklee, WIPO Case No. D2011-0800.
Accordingly, the Panel holds the Domain Name is confusingly similar to the Complainant’s trademark SELF-PORTRAIT, and the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Domain Name used to resolve to a website prominently displaying the SELF-PORTRAIT trademark and purporting to offer for sale SELF-PORTRAIT trademarked clothing without placing any disclaimer to correctly disclose its relationship with the Complainant. At first glance, the Respondent’s website gives the impression of being that of the Complainant. The Panel does not consider such use to be bona fide within the meaning of paragraph 4(c)(i) of the Policy. Nor does the Panel consider it legitimate noncommercial or fair use of the Domain Name under the Policy.
There is also no evidence on record showing that the Respondent has been commonly known by the Domain Name. Accordingly, the Panel determines that there is no indication that the Respondent may have rights or legitimate interests in respect of the Domain Name.
The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy, 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. The Respondent however chose not to respond and demonstrate its rights or legitimate interests in the Domain Name.
For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Complainant has trademark registrations of the mark SELF-PORTRAIT worldwide including China where the Respondent is located. According to the Complainant, it has developed significant goodwill in the trademark SELF-PORTRAIT, and the evidence on file has also shown the same.
Given the goodwill and fame the Complainant and the trademark SELF-PORTRAIT have gained worldwide, the Panel agrees that the Respondent must have had knowledge of the trademark SELF-PORTRAIT when registering the Domain Name, which is further evidenced by the Respondent’s offering for sale SELF-PORTRAIT trademarked clothing on the website associated with the Domain Name. The Panel concludes that the Respondent’s obvious awareness of the trademark SELF-PORTRAIT at the time of registering the Domain Name constituted opportunistic bad faith registration. See Deutsche Bank AG v. Diego-Arturo Bruckner, WIPO Case No. D2000-0277.
The Panel further agrees that the Respondent intentionally chose the trademark SELF-PORTRAIT to register the Domain Name and later used the Domain Name to purport to offer for sale SELF-PORTRAIT trademarked clothing. The genuineness of those goods has been called into question by the Complainant. By using the Domain Name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with the trademark SELF-PORTRAIT as to the source, sponsorship, affiliation, or endorsement of its own website or of a product or service on the website. The inclusion of the words “dress sale” in the Domain Name increases the likelihood of confusion as such words are descriptive of the Complainant’s business.
The Respondent has chosen not to respond to this Complaint, which is further indicative of bad faith. See The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “The failure of the Respondent to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787)”.
Moreover, the Respondent used privacy service to hide its true identity. The use of privacy shield is not in itself constitutive of bad faith, but if combined with all the above-mentioned elements, the Panel determines that it conveys a finding of bad faith.
In light of the above facts and reasons, the Panel therefore determines that the Domain Name was registered and is being used in bad faith pursuant to 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 Domain Name, <selfportraitdresssale.com>, be transferred to the Complainant.
Date: September 28, 2018