WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
René Caovilla S.p.A. v. 钟霖 (jolin)
Case No. D2020-2626
1. The Parties
The Complainant is René Caovilla S.p.A., Italy, represented by Studio Legale Bird & Bird, Italy.
The Respondent is 钟霖 (jolin), China.
2. The Domain Name and Registrar
The disputed domain name <rene-caovilla.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2020. On October 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2020, 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 October 14, 2020, 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 in English on October 19, 2020.
On October 14, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On October 16, 2020, 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 October 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2020. The Center received the Respondent’s communications by email in English and Chinese on October 27 and October 28, 2020 respectively, indicating his willingness to settle. On October 28, 2020, the Center informed the Parties If they wished to explore settlement options, the Complainant should submit a request for suspension. Upon receipt of the Complainant’s request, the proceeding was suspended on November 3, 2020 until December 3, 2020. On November 23, 2020, the proceeding was reinstituted upon the Complainant’s request, and the new due date for Response was November 29, 2020. The Respondent did not submit a formal response. On December 18, 2020, the Center notified the Parties that it would proceed to panel appointment.
The Center appointed Joseph Simone as the sole panelist in this matter on January 5, 2021. The Panel finds that it was properly constituted. The Panel 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 was established in the early 20th Century and is now a leading producer of luxury shoes. Its goods are sold through boutiques in Milan, Rome, Venice, Paris, London and Hong Kong, China, and high-end retailers in various other locations. Its goods are also sold online via the Complainant’s official website at “www.renecaovilla.com”.
The Complainant has an extensive global trademark portfolio of the RENÉ CAOVILLA trademarks, which include the following:
- European Union Trade Mark Registration No. 003698057 figurative mark in classes 14, 18 and 25, registered on June 20, 2005;
- International Trademark Registration No. 834807 figurative mark in class 25 designating China, Japan and the United States of America, registered on May 5, 2004.
The Complainant also has China Trademark Registration No. 3998634 RENE’ CAOVILLA in class 25, registered on September 14, 2007.
The disputed domain name was registered on September 27, 2019.
At the time of filing the Complaint, the Complainant claimed that since the disputed domain name’s registration on September 27, 2019, it has not resolved to any operational websites, and it is still inactive at the time of this Decision.
5. Parties’ Contentions
The Complainant asserts that it has prior rights in the RENÉ CAOVILLA trademarks and that it is a leading player in its fields of business.
The Complainant further notes that the disputed domain name registered by the Respondent is identical or confusingly similar to the Complainant’s RENÉ CAOVILLA trademarks, and the addition of the generic Top-Level Domain (“gTLD”) “.com” does not affect the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trademarks.
The Complainant asserts that it has not authorized the Respondent to use the RENÉ CAOVILLA mark, and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
On the contrary, the Complainant asserts that the Respondent is passively holding the disputed domain name, with an intent to misappropriate the Complainant’s identity, or at least to create confusion. Therefore, the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions, but merely replied “我接受和解。I accept the settl (sic)” and “我接受和解。I accept the settlement” on October 27 and October 28, 2020, respectively.
6. Discussion and Findings
A. Language of the Proceeding
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 for the disputed domain name is in Chinese. Hence, the default language of the proceeding should be in Chinese.
However, the Complainant filed the Complaint in English and requested that English be the language of the proceeding, asserting that, mainly:
- The disputed domain name entirely consists of Latin scripted words;
- The Complainant is not familiar with the Chinese language and conducting the proceeding in Chinese would result in substantial additional expense; and
- The Respondent has registered another domain name consisting entirely English words, which suggests that the Respondent is familiar with the English language.
The Respondent was notified in both Chinese and English of the language of the proceeding and the Complaint and did not object to doing so or submit any further formal response.
Notwithstanding the above, the Respondent replied “我接受和解。I accept the settl (sic)” and “我接受和解。I accept the settlement” on October 27 and October 28, 2020, respectively. Given this, the Respondent likely understands English, and the Panel sees no reason to request the Complainant to translate its Complaint into Chinese.
Accordingly, the Panel has determined that the language of the proceeding shall be in English, and the Panel has issued this decision in English.
B. Identical or Confusingly Similar
The Panel acknowledges that the Complainant has established rights in the RENÉ CAOVILLA trademark in many territories around the world.
Disregarding the “.com” gTLD, the disputed domain name has incorporated the RENÉ CAOVILLA trademark in its entirety with the addition of a hyphen. Thus, the disputed domain name should be regarded as confusingly similar to the Complainant’s RENÉ CAOVILLA trademark.
The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the RENÉ CAOVILLA trademark and in showing that the disputed domain name is identical or confusingly similar to its mark.
C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of producing evidence in support of its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
The Complainant has not authorized the Respondent to use its trademark, and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
Thus, the Complainant has established its prima facie case with sufficient evidence.
The Respondent did not file a formal response and has therefore failed to assert factors or put forth evidence to establish that it enjoys rights or legitimate interests in the disputed domain name. As such, the Panel concludes that the Respondent failed to rebut the Complainant’s prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name, and that none of the circumstances of paragraph 4(c) of the Policy is evident in this case.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. In the Panel’s assessment, the Respondent should be plainly aware of the Complainant’s marks when registering the disputed domain name, given their extensive prior use and fame.
When the disputed domain name was registered by the Respondent (in September 2019), the RENÉ CAOVILLA trademarks had already been widely known and directly connected to the Complainant’s activities.
The Respondent has provided no evidence to justify his registration of the disputed domain name. Given the foregoing, it would be unreasonable to conclude that the Respondent – at the time of the registration of the disputed domain name – was unaware of the Complainant's trademark, or that the Respondent’s adoption of the uncommon and distinctive name “Rene Caovilla” was a mere coincidence.
Ultimately, the Complainant’s registered trademark rights in RENÉ CAOVILLA for luxury shoes predate the registration date of the disputed domain name by at least a decade. A simple search on Baidu against the term “René Caovilla” would have no doubt revealed that it is an Italian brand of luxury shoes. Moreover, the Complainant owns the domain name <renecaovilla.com>.
The Panel is therefore of the view that the Respondent registered the disputed domain name with full knowledge of the Complainant’s trademark rights and with the intention of taking advantage of the fame and reputation of the Complainant’s trademark. In doing so, the Respondent has created a likelihood of confusion with the Complainant’s trademark and potentially deprived the Complainant of the opportunity to offer its products to prospective customers through the disputed domain name.
It is true that at present the disputed domain name does not resolve to any active webpage; but the consensus view among UDRP panels is that “the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” See section 3.3 of the WIPO Overview 3.0. In this case, the overall circumstances strongly suggest that the Respondent’s non-use of the disputed domain name is in bad faith.
The Panel therefore 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 <rene-caovilla.com> be transferred to the Complainant.
Date: February 3, 2021