WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Manolo Blahnik International Limited; Mr. Manolo Blahnik; MB Foundation Limited v. Chen Ting (陈文婷)
Case No. D2018-2761
1. The Parties
The Complainant is Manolo Blahnik International Limited of London, United Kingdom; Mr. Manolo Blahnik of London, United Kingdom; MB Foundation Limited of Jersey, United Kingdom, represented by DLA Piper UK LLP, United Kingdom.
The Respondent is Chen Ting (陈文婷) of Fuzhou, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <manoloblahnikoutlet.com> 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 November 30, 2018. On November 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 4, 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 December 10, 2018.
On December 4, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding by the specified due date.
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 December 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 2, 2019.
The Center appointed Joseph Simone as the sole panelist in this matter on January 14, 2019. 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, Mr. Manolo Blahnik is a prominent footwear and fashion designer. Manolo Blahnik International Limited (“MBIL”) and MB Foundation Limited (“MBF”) are companies owned by Mr. Manolo Blahnik. MBIL manufactures, distributes and sells the designs of Mr. Blahnik, including luxury items such as shoes and handbags. MBF is the holder of certain trademarks used by MBIL and authorized licensees that market, distribute and sell the MBIL products worldwide. Examples of authorized retailers include Barneys, Saks Fifth Avenue and Bergdorf Goodman in the United States of America (“United States”), as well as Harrods, Harvey Nichols, Selfridges and Liberty in the United Kingdom.
Mr. Blahnik and MBF own an extensive international trademark portfolio containing the marks for MANOLO, BLAHNIK and MANOLO BLAHNIK. The following is a selection of marks registered in China where the Respondent is located, designating classes 18 and 25 for, among other goods, footwear, leather goods, handbags and other accessories, the primary products of the Complainant:
- Chinese trademark MANOLO, No. 3352184, designating products in international class 18, registered on January 21, 2008;
- Chinese trademark MANOLO, No. 3352185, designating products in international class 25, registered on May 28, 2015;
- Chinese trademark BLAHNIK, No. 3352182, designating products in international class 18, registered on May 21, 2004;
- Chinese trademark BLAHNIK, No. 1737047, designating products in international class 25, registered on March 28, 2002;
- Chinese trademark MANOLO BLAHNIK, No. 14108004, designating products in international class 18, registered on April 14, 2015.
The Complainant submitted evidence of trademarks in 56 other jurisdictions, including the European Union, United Kingdom and United States, many of which registered several years prior to the Chinese trademarks.
The Complainant also owns an extensive portfolio of domain name registrations containing “manolo blahnik”, and actively operates the website at “www.manoloblahnik.com”.
The disputed domain name <manoloblahnikoutlet.com> was registered on June 21, 2018 by the Respondent Chen Ting of Fuzhou, Fujian, China. At the time of writing this decision it resolves to an English language website headed “MANOLO BLAHNIK”, advertising purportedly Manolo Blahnik shoes at prices significantly cheaper than retail. Currencies through which purchases can be made include CAD, USD, EUR and GBP. The “About us” section states:
“Welcome to the official Manolo Blahnik sale online store.
manoloblahnikoutlet.com is an official Manolo Blahnik outlet store online, authorized by Manolo Blahnik International Limited, all the products are 100% authentic and all with original invoices and packages.”
5. Parties’ Contentions
(i) Identical or confusingly similar
The Complainant submits that the disputed domain name is identical or confusingly similar to the marks in which it has rights (paragraph 4(a)(i) of the Policy). In that regard, the Complainant submits an extensive trademark portfolio containing hundreds of registrations for MANOLO, BLAHNIK and MANOLO BLAHNIK in various jurisdictions around the world. The Complainant also states that Manolo Blahnik is a prominent, internationally-known brand. One of MBIL’s most well-known and iconic brands is the “Hangisi” shoe which featured in “Sex and The City: The Movie”. MBIL’s shoes are regularly featured in fashion magazines such as Vogue, Red, Harper’s Bazaar and Tatler, and have been promoted via fashion shows, including during London Fashion Week and New York Fashion Week. They are also worn by many high-profile celebrities, including Olivia Palermo, Mary-Kate and Ashley Olsen, Jessica Biel, Rihanna and Kate Moss. MBIL’s Instagram page “manoloblahnikhq” is followed by 2.6 million accounts. The Complainant Mr. Manolo Blahnik has received several awards, including from the Council of Fashion Designers of America and the British Fashion Council. He was decorated by His Majesty Don Juan Carlos I, King of Spain in 2001, and he received an Honorary Commander of the British Empire in 2007. He has also been the topic of several books and a film available on Netflix, and his works are featured in an ongoing touring exhibition. Therefore, the Complainant submits that it enjoys significant reputation and goodwill in the MANOLO BLAHNIK name and trademarks. They have become synonymous with luxury designer shoes and other goods.
The disputed domain name only differs in the addition of the word “outlet”. The Complainant refers to All Saint Retail Limited v Name Redacted, WIPO Case No. D2017-2492, which states:
“The word ‘outlet’ is in common use in connection with retail sales, and, in the circumstances of the present case, can only be regarded as a non-distinctive element added to the Complainant’s trademark in the disputed domain name. It is well-established in prior decisions under the Policy that the mere addition of a descriptive or non-distinctive element to a complainant’s trademark is insufficient to avoid a finding of confusing similarity between a complainant’s trademark and a disputed domain name.”
The Complainant also refers to a recent decision involving the Complainant and almost identical domain names <manoloblahnik-outlet.com> and <manoloblahnik-outletonline.com>, where the panel found that the addition of descriptive elements such as “outlet” and “onlineoutlet”, “with or without additional hyphens” did not affect the assessment and the domain names were confusingly similar to the Complainant’s trademarks. See Manolo Blahnik, Manolo Blahnik International Limited, MB Foundation Limited v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Loley Free / Vicky Rogers / Chen WenTing, WIPO Case No. D2018-0392.
(ii) Rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds. The Complainant has not licensed or otherwise permitted the Respondent to use its trademarks and submits that the Respondent is clearly trying to create an impression of association with the Complainant because it would not otherwise legitimately choose this mark (Inter-IKEA Systems B.V. v Eveson Co. Ltd, WIPO Case No. D2000-0437). On the website to which the disputed domain name resolves, the Respondent has been offering Manolo Blahnik-branded products for sale at highly discounted prices and maintaining that is an “official Manolo Blahnik outlet store online, authorized by Manolo Blahnik”, when this is not the case. The Complainant suspects the goods sold are counterfeit, based on prices too low to be genuine. Therefore, the Complainant submits that the Respondent is not using the disputed domain name for a bona fide offering or goods or legitimate noncommercial use; nor is the Respondent commonly known by the disputed domain name.
(iii) Registered and used in bad faith
The Complainant submits that the disputed domain name was registered and is being used in bad faith. As the Respondent registered the disputed domain name several years after the establishment of the Complainant, the Complainant submits that the Respondent had actual knowledge of the Complainant, its brand and trademarks when it registered the disputed domain name. This is further demonstrated by its reference to an alleged affiliation with the Complainant. The Complainant claims that it is clear the Respondent has attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant as to source, sponsorship or affiliation. The Complainant refers to prior similar UDRP disputes where bad faith was found, and in particular Manolo Blahnik, Manolo Blahnik International Limited, MB Foundation Limited v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Loley Free / Vicky Rogers / Chen WenTing, supra, involving domain names that are highly similar to the disputed domain name in the current case, and which resolved to websites advertising Manolo Blahnik-branded shoes. The Complainant submits that the present Complaint is akin to that case, and that the disputed domain name was chosen to taken advantage of the goodwill associated with the Complainant’s trademarks and was registered and used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Consolidation of the Complainants
The Complaint was filed in the name of three related entities which are part of the same group. Mr. Blahnik owns MBIL and MBF companies. In accordance with section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel believes the Complainants have a common grievance against the Respondent and that the Respondent’s conduct has affected them in a similar fashion. Therefore it would be equitable and procedurally efficient to permit the consolidation.
6.2 Language of Proceeding
The Complainant filed the Complaint in English and requested that English be the language of proceedings on the following grounds:
- The Respondent’s website resolving from the disputed domain name is in English;
- The Complainant’s websites resolving from its domain names are in English;
- All the materials annexed in support of this Complaint, except for the Registration Agreement, are in English;
- Accordingly, it is most cost-efficient for the Complaint to be submitted and heard in English.
In accordance with paragraph 11 of the Rules:
“…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.”
In this case, the language of the Registration Agreement is in Chinese. However, noting the aim of conducting proceedings with due expedition while also ensuring that each party is given a fair opportunity to present its case, section 4.5.1 of the WIPO Overview 3.0 provides a set of factors which may justify proceeding in a language other than that of the registration agreement. These include (i) evidence showing that the respondent can understand the language of the complaint, (ii) any content on the webpage under the disputed domain name, (iii) prior cases involving the respondent in a particular language, and (iv) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint.
In this case:
(i) the website to which the disputed domain name resolves is in English only and the Respondent is clearly targeting English consumers;
(ii) a prior case involving the Respondent was decided in English: Manolo Blahnik, Manolo Blahnik International Limited, MB Foundation Limited v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Loley Free / Vicky Rogers / Chen WenTing, supra;
(iii) the Respondent was notified in both English and Chinese regarding the nature of the proceeding and issue of language, and failed to express a language preference or submit a Response, therefore it would cause unfairness and undue delay to request the Complaint to be translated.
Therefore, in accordance with the Policy’s aim of facilitating a time and cost-efficient procedure for the resolution of domain name disputes, the Panel will proceed in English.
A. Identical or Confusingly Similar
Under the first element of the Policy, a complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainant has submitted evidence of an extensive portfolio of trademark registrations for MANOLO, BLAHNIK and MANOLO BLAHNIK, many of which date back several years. Furthermore, the evidence indicates the Complainant has significant reputation and goodwill in the mark MANOLO BLAHNIK in connection with luxury goods, particularly shoes, such that the mark has become a distinctive identifier of goods designed and manufactured by the Complainant.
Per section 1.7 of WIPO Overview 3.0, the test for whether a domain name is identical or confusingly similar to a trademark is a relatively straightforward comparison. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold test (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962).
In this case, the disputed domain name <manoloblahnikoutlet.com> incorporates the trademarks MANOLO BLAHNIK, MANOLO and BLAHNIK entirely. As the Complainant contends, the addition of the word “outlet” is merely descriptive and non-distinctive, and does not affect the finding of confusing similarity.
Therefore, the Panel is satisfied the disputed domain name is confusingly similar to the Complainant’s mark, and the first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
A complainant must then demonstrate that the respondent should be considered as having no rights or legitimate interests in respect of the domain name (paragraph 4(a)(ii) of the Policy).
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the panel, will demonstrate a respondent’s rights or legitimate interests in the disputed domain name. The Panel accepts that the Complainant has not authorized the Respondent in any way to use the trademark. Nor is there any evidence suggesting the Respondent is commonly known by the disputed domain name. Most tellingly, the disputed domain name resolves to an unauthorized website selling shoes branded MANOLO BLAHNIK. Rather than disclosing the lack of a relationship with the Complainant, the website includes false claims that it is an official, authorized outlet of the Complainant. The Respondent’s website displays the MANOLO BLAHNIK trademark in the same position as the official Manolo Blahnik website at “www.manoloblahnik.com”, and the “About us” section features a biography on “Blahnik”, both features that are clearly designed to add legitimacy to the website. Moreover, if the shoes advertised actually exist, they are likely counterfeit, given that they are offered for prices that are too low to be genuine, for example, GBP 199.49 versus the retail price of GBP 775 on the official website.
Therefore, the Respondent is clearly not using the disputed domain name in connection with a bona fide offering of goods or services as contemplated by paragraph 4(c) of the Policy. Nor is the Respondent making a legitimate noncommercial or fair use, without intent for commercial gain, or intent to misleadingly divert consumers or tarnish the trademark at issue. On the contrary, the website is entirely aimed at obtaining commercial gains through misleading and deceptive means.
As the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests, the burden of production shifts to the Respondent (section 2.1 of WIPO Overview 3.0). As the Respondent did not submit a response, it has failed to present any evidence to establish rights or legitimate interests, and given the above analysis, the Panel believes it has none.
The second requirement of the UDRP is therefore satisfied.
C. Registered and Used in Bad Faith
Under the third element of the Policy, a complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy). A strong inference for bad faith arises where the Respondent knew or should have known of the Complainant’s trademark rights, particularly where the trademark is “so obviously connected with such a well-known name and products” (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Given the long history and notoriety of the MANOLO BLAHNIK brand and of the designer Mr. Manolo Blahnik, it is beyond doubt that the Respondent knew of the Complainant’s rights when it registered the disputed domain name. The fact that the Respondent uses the disputed domain name to advertise for sale Manolo Blahnik shoes reinforces this conclusion. The Respondent has no rights or legitimate interests in offering Manolo Blahnik branded shoes for sale, and fails to disclose the lack of a relationship with the Complainant on its website. On the contrary, the Respondent actively states the sale website is official and authorized by the Complainant.
This case falls squarely under paragraph 4(b)(iv) of the Policy which states that bad faith will be found where the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to its website… by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website”. While sufficient on its own to establish a case of bad faith, the Panel also notes that the Respondent, Chen Ting, associated with the email address “[…]@163.com” is very likely the same individual involved in another UDRP case involving the Complainant and several similar domain names which resolved to pages selling Manolo Blahnik shoes: Manolo Blahnik, Manolo Blahnik International Limited, MB Foundation Limited v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Loley Free / Vicky Rogers / Chen WenTing, supra. There, the Complainant also made a clear and uncontested case of bad faith.
Therefore, the Panel finds that the disputed 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 disputed domain name <manoloblahnikoutlet.com> be transferred to the Complainant.
Date: January 18, 2019