WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

René Caovilla S.p.A. v. Nexperian Holding Limited / Qian Zhong

Case No. DCC2018-0006

1. The Parties

The Complainant is René Caovilla S.p.A. of Fiesso d’Artico, Italy, represented by Studio Legale Bird & Bird, Italy.

The Respondent is Nexperian Holding Limited of Hangzhou, Zhejiang, China / Qian Zhong of Changchun, Jilin, China.

2. The Domain Names and Registrar

The disputed domain names <renecaovilla.cc>, <renecaovillaoutlet.cc>, <renecaovillasale.cc> and <renecaovillastore.cc> (the “Domain Names”) are registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2018. On May 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 28, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 31, 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 June 4, 2018.

On May 31, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant submitted a request that English be the language of the proceeding on June 1, 2018. 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 June 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2018.

The Center appointed Karen Fong as the sole panelist in this matter on July 10, 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 the maker of one of oldest luxury shoe brands in the world. The hand-made shoes branded René Caovilla began life more than 80 years ago in Fiesso d’Artico, just outside Venice, Italy. The shoes are sold through the Complainant’s official boutiques in Milan, Rome, Venice, Paris, London, Doha, Beijing, Macau, Dubai, Taipei and Sao Paulo as well as through its appointed distributors and dealers in other countries and through the Complainant’s official website, “www.renecaovilla.com”. René Caovilla shoes have been worn by many celebrities including Beyoncé, Rihanna and Gigi Hadid.

The trade mark RENE CAOVILLA is registered multiple jurisdictions including the European Union (“EU”), the United States of America and China. The earliest registration submitted in evidence, EU Trade Mark Registration No. 3698057 for RENE CAOVILLA & Device in classes 14, 18 and 25 has a filing date of March 16, 2004, and was registered on June 20, 2005 (individually and collectively referred to as the “Trade Mark”).

The Respondent is based in China and registered the Domain Names on January 21, 2018. The websites connected to the Domain Names all purport to offer for sale and sell heavily discounted René Caovilla shoes or as said on the Websites, “cheap Rene Caovilla shoes” (the “Websites”). Two of them claim to be “official” stores – “www.renecaovillaoutlet.cc”, “official Rene Caovilla outlet store”, and “www.renecaovillastore.cc”, “official Rene Caovilla store”. The home pages of all four websites have the same photos and similar content. The website at “www.renecaovilla.cc” has the brand UGG prominently displayed although it purports to be a René Caovilla online store and does not appear to sell UGG branded footwear. The contact details on the Websites are an address in California, United States of America, and the email address is a generic address, newyearsale@italymail.com.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the 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 proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Names is Chinese.

The Complainant submits that the language of the proceeding should be English for the following reasons:

- All the Domain Names are in Latin characters rather than Chinese script.

- The Websites are in English which indicates that the Respondent is familiar with the language.

- The Complainant is not familiar with Chinese and conducting the proceeding in Chinese would require it to incur substantial additional expense and inconvenience.

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 and agrees that the Respondent is most likely familiar with the English language. 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 Matters

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:

(i) The Domain Names are identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) The Domain Names were registered and being used in bad faith.

A. 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 Trade Mark in its entirety plus the descriptive terms “outlet”, “sale” and “store”. The addition of these terms does not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Mark 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 or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) which in this case is “.cc”. It is viewed as a standard registration requirement. Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel finds that the Domain Names are identical or confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to 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.

The Complainant submits that the Respondent is not commonly known by the Trade Mark or any of the Domain Names. 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. The Domain Names are used in connection with online stores that purport to be official websites of the Complainant, when in fact no such relationship between the Parties exists. Such use does not amount to use or demonstrable preparation to use the Domain Names in connection with any bona fide offering of goods or services or legitimate noncommercial fair use under the Policy.

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 Names comprising a trade mark which it has no connection to other than purporting to sell products bearing this trade mark which it has not been authorized to by the Complainant. 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 Names.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.

C. Registered and Used in Bad Faith

To succeed under the Policy, the Complainant must show that the Domain Names have 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 Trade Mark when it registered the Domain Names. It is implausible that it was unaware of the Complainant when it registered the Domain Names especially since the Websites purport to sell products bearing the Trade Mark and the Websites contain information about the Complainant and its history.

The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Names is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration of the Domain Names is in bad faith.

The Domain Names are also used in bad faith. The Websites were set up to deliberately mislead Internet users that they are connected to, authorised by or affiliated to the Complainant. The Websites contain the Trade Mark and information to mislead consumers that they are “official” and therefore authorized or somehow connected to the Complainant. The Complainant has not alleged that the goods sold on the Websites are likely to be counterfeit. The Panel will therefore not make a finding in this regard although it would certainly appear to be the case.

From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s Websites and the products sold on them are those of or authorised or endorsed by the Complainant.

The Panel therefore concludes that the Domain Names were registered and are being used in bad faith and that the requirements of paragraph 4(a)(iii) of the Policy are fulfilled.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <renecaovilla.cc>, <renecaovillaoutlet.cc>, <renecaovillasale.cc> and <renecaovillastore.cc> be transferred to the Complainant.

Karen Fong
Sole Panelist
Date: July 30, 2018