WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Morellato S.p.A. v. Yi Ming Dong; Bo Fan
Case No. D2018-1731
1. The Parties
The Complainant is Morellato S.p.A. of Fratte, Italy, represented by Studio Barbero, Italy.
The Respondents are Yi Ming Dong of Huanggang, Hubei, China; Bo Fan of Jingmen, Hubei, China.
2. The Domain Names and Registrar
The disputed domain names <morellato-it.com> and <morellato-spaccio.com> are registered with Zhengzhou Zitian Network Technology Co., Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on July 31, 2018. The Complaint included a request to consolidate the disputed domain names in accordance with paragraph 3(c) or 10(e) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"). On July 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 2, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant and providing the contact details. On August 2, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on the same day. The Respondents 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, 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 August 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on August 30, 2018.
The Center appointed Rachel Tan 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
The Complainant is one of Italy's largest jewelry and watch designers and manufacturers. Since it first started operations in the 1930s, the Complainant has expanded its presence to 45 countries worldwide, particularly in Europe, the Middle East and Asia. The Complainant has a distribution network of 3,000 stores. Over the years, the Complainant has appointed brand ambassadors featuring international celebrities such as Bar Rafaeli, Ma Su and Laura Sanchez.
The Complainant trades under the MORELLATO trade mark and owns a sizeable portfolio of registrations worldwide. In particular, the Complainant holds the following registrations:
MORELLATO, International Registration No. 813759, registered on September 23, 2003, in International Class 14;
, Chinese Registration No. 4194978, registered on June 21, 2007, in International Class 14;
, Italian Registration No. 0000512229, registered on July 24, 1989, in International Class 14; and
, European Union Registration No. 008296287, registered on December 11, 2009, in International Class 18.
The Complainant holds numerous domain names incorporating the MORELLATO trade mark, both under the generic Top-Level Domains ("gTLDs") and country code Top-Level-Domains ("ccTLDs"): <morellato.com>, <morellato.cn>, <morellatostore.cn>,and many others.
The disputed domain names were registered on April 25, 2017. The disputed domain names resolve to active websites offering for sale Morellato branded jewelry, pens and keychains priced in Euros. The content of the websites is primarily in Italian.
5. Parties' Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to the MORELLATO trade mark, the Respondents have no rights or legitimate interests with respect to the disputed domain names, and that the disputed domain names were registered and are being used in bad faith. In particular, the Complainant alleges that the products offered for sale on the online stores accessed through the disputed domain names are counterfeit due to their very low prices. The Complainant further claims that as the orders placed through the online stores by their agent were not honored, the Respondents are using the online stores for fraudulent purposes. The Complainant requests transfer of the disputed domain names.
The Respondents did not reply to the Complainant's contentions.
6. Preliminary Procedural Issues
A. Consolidation of Multiple Domain Names and Respondents
Firstly, the Panel must address the request to consolidate two domain names registered by two different respondents into a single proceeding. The Panel notes that neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents per se in a single administrative proceeding. Past UDRP panels have nonetheless held that the consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraph 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel, having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281. The factors considered by past UDRP panels have been compiled in section 4.11 of the WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
The Panel having considered the circumstances finds that the Complainant has established more likely than not that the disputed domain names are subject to common ownership or control to justify the consolidation of the Complainant's claims against the Respondents in this proceeding. The reasons are set out below:
(a) The Respondents share the same administrative email address and telephone number. Their postal addresses are in nearby cities of Hubei, a province in Central China;
(b) The disputed domain names are hosted by the same domain name servers;
(c) The disputed domain names were registered by a common Registrar and share the same creation date;
(d) The online stores accessed through the disputed domain names are similar in content and layout, and use a common contact email address; and
(e) The composition of the disputed domain names is similar, both beginning with the MORELLATO trade mark followed by a hyphen and then a descriptive term. The registrants target the jewelry and watch sector.
B. Language of the Proceeding
Secondly, 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 and cites a number of UDRP decisions in which a panel has allowed the language of the proceeding to be in English rather than the language of the Registration Agreement.
The Respondents 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 is a company from Italy. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;
(b) English is not the native language of either Party;
(c) The Respondents have chosen Latin characters for the disputed domain names. The two websites to which the disputed domain names resolve contain a few English words indicating some familiarity with the English language. There is no version of the disputed domain names with content in Chinese. Therefore, the Panel concludes that English is the language most likely to be understood by the Parties and using English will not be prejudicial to the Respondents;
(d) Even if the Respondents do not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondents to raise an objection. The Center notified the Parties in English and Chinese of the Complainant's request for English to be the language of the proceeding, but the Respondents did not protest against this request; and
(f) The Respondents have failed to participate in the proceeding and have been notified of their 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.
7. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant submitted extracts of the MORELLATO trade mark certificates of registration and renewal from the official public records of the WIPO, the China Trade Mark Office, the Italian Patent and Trade Mark Office, and the European Union Intellectual Property Office. The registrations cover inter alia watches, watch straps, jewelry and leather goods.
The Panel finds that the Complainant has adduced sufficient evidence to demonstrate its established rights in the MORELLATO trade mark.
The Panel notes that the disputed domain name <morellato-it.com> fully incorporates the Complainant's MORELLATO trade mark, deviating only by the addition of a hyphen and the letters "it", the accepted country abbreviation for "Italy".
The MORELLATO trade mark is instantly recognizable in the disputed domain name <morellato-spaccio.com>, as it is separated from "spaccio" by a hyphen. The Italian word "spaccio" is defined as a "shop" or "outlet". In this context, the word takes on a descriptive meaning given that the Complainant retails watches, jewelry and accessories.
The addition of ".com", a gTLD, "is a technical requirement of every domain name registration". Groupon, Inc. v. Whoisguard Protected, Whoisguard, Inc. / Vashti Scalise, WIPO Case No. D2016-2087.
In the present case, the addition of a geographical designation or descriptive term does not detract from the fact that the Complainant's trade mark is clearly identifiable in the disputed domain names. Therefore, the Panel finds the disputed domain names are confusingly similar to the Complainant's MORELLATO trade mark. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant contends that the Respondents are not licensees, authorized agents or authorized in any way to use or register the disputed domain names. The Complainant contends that it is not aware of the Respondents being "commonly known" by the name "Morellato" as individuals, businesses, or other organizations. The Respondents are individuals whose names bear no resemblance to the disputed domain names. There is no evidence of the Respondents having filed any trade mark identical with or similar to the disputed domain names.
The Complainant alleges that the Respondents are using the disputed domain names for websites offering counterfeit jewelry, watches and accessories. The Panel is not prepared to accept this unsupported allegation of illegal activity, even though the Respondents are in default. However, the web page extracts submitted by the Complainant demonstrate that the disputed domain names direct Internet users to ecommerce stores whose content is primarily in Italian, and on which the Complainant's MORELLATO trade mark is prominently displayed together with MORELLATO branded jewelry, watches, keychains, pens and other accessories.
The Respondents have 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 names. Instead, the disputed domain names resolve to online stores on which the Complainant's MORELLATO trade mark and branded products are clearly displayed. Neither online store accurately or prominently discloses the lack of a commercial relationship between the Complainant and the Respondents. Without the appropriate disclaimers, Internet users are easily led into believing that the Respondents' websites are operated by the Complainant. Therefore, the facts do not support a claim of fair use under the "Oki data test". See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
Such conduct by the Respondents does not represent a bona fide offering of goods or services or support a recognition of a legitimate claim to the disputed domain names.
Pursuant to the Policy, the Panel has not found any evidence to suggest that the Respondents have any rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds that the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant's MORELLATO trade mark has been widely registered and used around the world, including in China. The disputed domain names were registered well after the first registration of the Complainant's MORELLATO trade mark and <morellato.com> domain name. By the creation date of the disputed domain names, the Complainant had an established operation and distribution network in China and had engaged a Chinese celebrity for its promotional campaigns. Thus, the Complainant would have acquired a reputation in the country.
The Respondents are Chinese individuals. The term "morellato" has no meaning in the Chinese language and would be considered distinctive in this territory. By registering a domain name entirety composed of the term "morellato", the Respondent cannot credibly claim not to have been aware of the Complainant's trade mark.
Another pertinent consideration is the current status of the disputed domain names. The disputed domain names resolve to online stores on which the Complainant's MORELLATO trade mark appears and whose products are being promoted and sold at heavily discounted prices, without authorization. The content of the websites is mainly in Italian, reflecting the heritage and operational headquarters of the Complainant. The layout of the websites has the same look and feel of the Complainant's official website without any disclaimers of non-affiliation. The Panel is satisfied that the Respondents intended to take advantage of the reputation of the Complainant's trade mark to attract, for commercial gain, Internet users to the Respondents' websites by creating a likelihood of confusion with the Complainant's mark as to source, affiliation or endorsement of their websites.
The Respondents appear to be engaged in a pattern of abusive registrations having registered several domain names targeting well-known global brands in the jewelry and fashion sector, namely <pandora-soldes-2017.com>, <soldesadidasjeremyscott.com> and <magasinpandora.com>.
Based on the above facts, it is implausible to contemplate of any good faith use to which the disputed domain names may be put by the Respondents.
Taking into account all the circumstances of the case, the Panel finds that the Respondents must have known of the Complainant before registering the disputed domain names, and the current acts of the Respondents lead the Panel to conclude that they registered and are using the disputed domain names in bad faith.
Accordingly, 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 names <morellato-it.com> and <morellato-spaccio.com> be transferred to the Complainant.
Date: September 20, 2018