WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ints It Is Not The Same Gmbh v. Jianwei Chen
Case No. D2019-0656
1. The Parties
The Complainant is Ints It Is Not The Same Gmbh of Steinhausen, Switzerland, represented by CTTS Abogados, Spain.
The Respondent is Jianwei Chen of Shenzhen, China.
2. The Domain Name and Registrar
The disputed domain name <desigual.vip> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2019. On March 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name. The Center sent an email communication to the Complainant on March 27, 2019 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 amendment to the Complaint on March 29, 2019.
The Center verified that the Complaint together with the amendment to 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, and the proceedings commenced on April 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2019.
The Center appointed Douglas Clark as the sole panelist in this matter on May 2, 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 is part of the DESIGUAL group founded in 1984, which sells among other products clothes, accessories, shoes, bedclothes, table linen, decoration and perfumery products under the DESIGUAL trademarks all over the world through different distribution channels and online through the website “www.desigual.com”. The DESIGUAL trademark’s fame and notoriety has been recognized several renowned bodies, media and entities, and by panels in previous UDRP domain name decisions concerning the DESIGUAL trademark.
The Complainant is the owner of more than 450 trademarks duly registered around the world in more than 160 countries and the registrant of more than 208 domain names. In particular, the Complainant owns 7 trademark registrations in China consisting the word “DESIGUAL”, the first of which was registered on October 19, 2009.
The disputed domain name was registered on October 26, 2018. As at the date the Complaint was filed, the disputed domain name resolves to a website including the DESIGUAL logo with the ® symbol, offering to sell the same products as the Complainant (in particular, the DESIGUAL Autumn Winter 2018 collection: coats, jackets, jeans, skirts and sweaters) but at a cheaper price using images and videos from the official DESIGUAL website.
5. Parties’ Contentions
The Complainant contends as follows:
Identical or confusingly similar
The Complainant contends that the disputed domain name is identical or confusingly similar to its DESIGUAL trademark. It incorporates the Complainant’s trademark in its entirety. The generic Top-Level Domain (“gTLD”) “.vip” should be disregarded.
No rights or legitimate interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with or related to the Complainant, nor has the Complainant licensed or authorized the Respondent to use the DESIGUAL trademark. There is simply no commercial relationship between the Complainant and the Respondent. As far as the Complainant is aware, the Respondent has not acquired any trademarks, and has no rights whatsoever in connection with the name “Desigual”. There is no indication that the Respondent is commonly known by the disputed domain name.
The Respondent used on his website the Complainant’s DESIGUAL trademarks, photographs, videos and catalogues without the Complainant’s authorization and offered to sell the Complainant’s product at lower prices. The Respondent clearly used the disputed domain name to benefit himself commercially. He took advantage of the good name and reputation of the Complainant’s trademark to attract more visits to his own website. The Complainant also relies on the fact that the Respondent has not responded to the Complaint.
Registered and used in bad faith
The Complainant contends that the Respondent registered and used the disputed domain name in bad faith. Given the fame and notoriety of the DESIGUAL trademarks, the Respondent must have had knowledge of the Complainant’s rights in the trademarks at the time he registered the disputed domain name. In light of the Respondent’s unauthorized use of the Complainant’s trademarks, photographs, videos and catalogues, and his evident attempt to compete with the Complainant’s business, it is undeniable that the Respondent registered and used in bad faith the disputed domain name to intentionally attract, for commercial gain, Internet users to his own website by creating a confusion with the Complainant’s marks, copyrights and designs rights, as to the source, sponsorship, affiliation and endorsement of the Respondent’s websites, and clearly taking advantage of the Complainant’s reputation and the fame of the well-known DESIGUAL trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(ii) The disputed domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
Incorporating the DESIGUAL trademark in its entirely, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s DESIGUAL trademark and the first element of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Respondent did not respond to the Complaint to assert any rights or legitimate interests in the disputed domain name. Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks right or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant 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.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case. Moreover, the Panel finds that the disputed domain name carries a high risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0). The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name has been registered in bad faith and was used in bad faith.
It is clear from the evidence submitted by the Complainant that the Respondent had used on his own website the DESIGUAL trademarks, photographs, videos and catalogues from the DESIGUAL official website, and that the Respondent’s website offered to sell the same products as the Complainant at a cheaper price between 70% and 80% discount on the retail price. The Respondent’s conduct clearly falls under paragraph 4(b)(iv) of the Policy, which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online 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.”
The third element of paragraph 4(a) of the Policy is satisfied.
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 <desigual.vip> be transferred to the Complainant.
Date: May 20, 2019