WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Buscemi LLC v. Whois Agent, Domain Whois Privacy Protection Service / Song LiHong
Case No. D2018-2506
1. The Parties
The Complainant is Buscemi LLC of Los Angeles, California, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Whois Agent, Domain Whois Privacy Protection Service of Shanghai, China / Song LiHong of Haerbin, Heilongjiang, China.
2. The Domain Name and Registrar
The disputed domain name <buscemioutlet.com> (the “Domain Name”) is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2018. On November 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 5, 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 November 7, 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 November 8, 2018.
On November 7, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On November 15, 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 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, in English and Chinese, of the Complaint, and the proceedings commenced on November 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2018.
The Center appointed Karen Fong as the sole panelist in this matter on December 17, 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 an American based luxury footwear and accessories brand for men, women and children sold globally in recognized luxury retailers and specialty boutiques worldwide. The BUSCEMI brand was founded in 2013 by Jon Buscemi. Every pair of BUSCEMI shoes is hand made by artisans in Civitanova, Italy, and takes up to 24 hours to complete because of the intricate details, such as hand-painted edges, 18-carat-gold-plated hardware and hand sewn leather laces.
The brand has an elite client list which includes Justin Bieber, P. Diddy, Quincy Jones, Lauren Hutton and Kanye West. The Complainant has a strong Internet presence through its primary website found at “www.buscemi.com” as well as its social media platforms, including Instagram and Facebook. It has established a reputation amongst the fashion cognoscenti.
The BUSCEMI trade mark is registered across various jurisdictions including China. The earliest registration submitted in evidence is International Registration No 1196250 registered in Class 25 on February 25, 2014 (the “Trade Mark”).
The Domain Name was registered in the name of a privacy service on December 16, 2017. It was connected to a website which was redirected to a website found at “www.buscemi-outlest.com” which bears the Complainant’s logo and sold knockoff or counterfeit products purporting to be made by the Complainant (the “Website”). The Domain Name is now inactive.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant’s trade mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should in English for the following reasons:
1. The Complainant’s legal representative is unable to communicate in Chinese and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter;
2. The term BUSCEMI which is the dominant portion of the Domain Name does not have any specific meaning in Chinese whilst the descriptive term “outlet” is an English word.
3. Prior to the suspension of the Website, the content was entirely in English.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.
6.2 Substantive Issues
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and being used in bad faith.
B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Domain Names contain the Complainant’s distinctive Trade Mark in its entirety plus the descriptive term “outlet”. The addition of this term does not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Marks in the Domain Names. E.g., N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org, WIPO Case No. D2011-0260; Oakley, Inc. v. Wu bingjie aka bingjie wu/Whois Privacy Protection Service, WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence the complainant is deemed to have satisfied the second element.
Section 2.13 of the WIPO Overview 3.0, states that UDRP panels have categorically held that the use of a domain name for illegal activity like the sale of counterfeit goods can never confer rights or legitimate interests on a respondent. The products offered for sale on the Website were disproportionately below market value. Further, the Complainant has not licensed, authorized or otherwise permitted the Respondent to use the Trade Mark or apply for any domain name that incorporates the Trade Mark. Neither is the Respondent an authorized dealer of the Complainant nor has he ever had any business relationship with the Complainant. Such circumstances have been accepted as evidence that the goods in question were counterfeits.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any reasons why it chose to register the Domain Name comprising a trade mark with which it has no connection. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s trade mark when it registered the Domain Name. It is implausible that it was unaware of the Complainant when it registered the Domain Name especially since the Website displayed the Trade Mark and the products offered for sale are likely to be counterfeit BUSCEMI products.
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The Panel also finds that the actual use of the Domain Name is in bad faith. The products offered for sale on the Website appeared to be counterfeit BUSCEMI products. The use by a respondent of a domain name which includes a well-known trade mark to resolve to a website which offers and sells counterfeit products under that trade mark may be evidence of bad faith registration and use. (See Burberry Limited v Jonathan Schefren, WIPO Case No. D2008-1546; and Prada SA v. Domains for Life, WIPO Case No. D2004-1019). There is a clear intention to attract for commercial gain by confusing and misleading Internet users into believing that the Website was and the products sold on it are authorised or endorsed by the Complainant. This is clearly bad faith under paragraph 4(b)(iv) of the Policy.
The Panel finds that the Domain Name was registered and is being used 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 Domain Name <buscemioutlet.com> be transferred to the Complainant.
Date: January 2, 2019