WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mario Valentino S.p.A. v. 胡可 (Hu Ke)

Case No. D2021-2142

1. The Parties

The Complainant is Mario Valentino S.p.A., Italy, represented by Società Italiana Brevetti, Italy.

The Respondent is 胡可 (Hu Ke), China.

2. The Domain Name and Registrar

The disputed domain name <valentino-shoes.top> is registered with DNSPod, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2021. On July 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 6, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On July 6, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On July 9, 2021, 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 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 July 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2021.

The Center appointed Douglas Clark as the sole panelist in this matter on August 20, 2021. 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 Italian company, which has been recognized for its production of footwear, leather ware (luggage, bags, wallets, etc.), clothing and clothing accessories.

The Complainant is, inter alia, the owner of the following trademarks for VALENTINO covering, inter alia, shoes or footwear.

The Respondent is an individual in China. The disputed domain name was registered on April 22, 2021, and does not resolve to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The disputed domain name is confusingly similar to the trademark VALENTINO in which the Complainant has rights. The addition of the word “shoes” - which is the actual core business of the Complainant - makes the mark especially confusingly similar. The Top Level Domain (“TLD”) “.top” should generally be ignored when making a comparison;

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been given authorization or license to use the Complainant’s trademark. The Respondent also has not made a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain as the disputed domain name points to an inactive website; and

(c) The disputed domain name was registered and is being used in bad faith. The Respondent is likely to have heard of the Complainant’s trademark and is likely to use the disputed domain name to seek to attract current and potential customers of the Complainant. The disputed domain name does not resolve to an active page but this does not preclude a finding of use in bad faith.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Preliminary Issues – Language of the Proceeding

According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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. There is no agreement between the Complainant and the Respondent regarding the language of the proceeding. The Complainant has filed its Complaint in English and has requested that English be the language for the proceeding mainly because: (a) the disputed domain name is formed by Latin letters and English words, “shoes” and “top”, rather than Chinese script, which indicates that the Respondent may have knowledge of English; and (b) it is important to ensure fairness to the parties and maintain an inexpensive and expeditious avenue for resolving domain name disputes.

In accordance with paragraph 11(a) of the Rules and taking into consideration paragraphs 10(b) and (c) of the Rules, the Panel hereby determines that the language of the proceeding shall be English after considering the following circumstances:

- the Center has notified the Respondent in both English and Chinese of the proceeding;
- the Respondent has not commented on the language of the proceeding and has defaulted;
- the disputed domain name is composed of the Complainant’s VALENTINO trademark and an English word “shoes”; and
- an order for the translation of the Complaint will result in additional expenses for the Complainant and a delay of the proceeding.

Further, this Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.

6.2. Substantive Issues

The Complainant must satisfy all three elements of paragraph 4(a) of the Policy in order to succeed in its action:

(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

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name <valentino-shoes.top> is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates that whole of the Complainant’s trademark. The generic TLD “.top” is generally disregarded when considering the first element. The additional term “shoes” and a hyphen do not prevent a finding of confusing similarity under the first element. The Panel further notes that shoes are the actual goods that form the Complainant’s core of business.

The Panel finds that the Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Respondent has not asserted any rights or legitimate interests in relation to 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 rights 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 asserted that it has neither authorized nor somehow given its consent to the Respondent to register and use the disputed domain name. As the Respondent has not responded to any of the Complainant’s contentions, the Complainant has made a prime facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Panel also notes that the Respondent’s name is “胡可 (Hu Ke)”. Therefore, there is no evidence on record showing that the Respondent has been commonly known by the disputed domain name. Further, the disputed domain name does not resolve to any active website.

The Complainant has therefore satisfied the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds the disputed domain name was registered and is being used in bad faith.

The disputed domain name was registered long after the Complainant registered the VALENTINO trademark. The Panel is satisfied that the Respondent is likely to be aware of the Complainant and its trademark, particularly because of the use of the word “shoes” in the disputed domain name which are the Complainant’s main products. Although the disputed domain name <valentino-shoes.top> resolves to an inactive website at the date of filing of the Complaint and this decision, the lack of use of the disputed domain name, particularly considering the fame of the Complainant’s VALENTINO trademark, does not prevent a finding of bad faith under the doctrine of passive holding (see section 3.3 of the WIPO Overview 3.0).

Moreover, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see section 3.1.4 of the WIPO Overview 3.0).

For the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.

The Complainant has therefore satisfied the third element under paragraph 4(a) of the policy.

7. Decision

For the forgoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <valentino-shoes.top> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: September 15, 2021