WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sportswear Company S.P.A. v. Registration Private, Domains By Proxy, LLC./ Yu Hong Cheng

Case No. DCO2021-0050

1. The Parties

The Complainant is Sportswear Company S.P.A., Italy, represented by Studio Barbero, Italy.

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America, / Yu Hong Cheng, China.

2. The Domain Name and Registrar

The disputed domain name <busystone.co> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2021. On June 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 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 for the disputed domain name.

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 June 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2021. The Respondent filed an informal response with the Center on June 17, 2021. The Center sent an email about possible settlement to the Parties on June 17, 2021. The Complainant confirmed that they did not want to suspend the proceeding on June 28, 2021. Pursuant to paragraph 6 of the Rules, the Center informed the Parties of its commencement of panel appointment process on July 8, 2021.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 14, 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 a men’s apparel and accessories company founded in Italy in 1982. It has recently been acquired by Moncler.

Since 1982, it has used the trademark STONE ISLAND for a substantial part of its range. According to the Complaint, the Complainant has stores for its “Stone Island” products all around the world, including in particular Hong Kong, Taiwan, and a number of cities in China.

The Complainant advertises its products from <stoneisland.com> and also promotes its products extensively on social media having “Stone Island” accounts on Instagram (1.7 million followers), Facebook (some 540,000 followers), Youtube (32,000 subscribers), Vimeo, Pinterest, and Twitter (35,000 followers). It also frequently takes out advertisements in international magazines such as Elle Men and Milk including the Hong Kong and China issues.

Also according to the Complaint, the Complainant’s STONE ISLAND trademark has 74 per cent recognition amongst consumers in Italy.

The Complaint provides evidence of a number of registered trademarks for STONE ISLAND including:

(a) European Union Trademark No. 003785953, which was filed on April 21, 2004, and registered on September 2, 2005, for a range of goods in International Classes 3, 9, 14, 18, and 25;

(b) Hong Kong Registered Trademark No. 19851092AA, STONE ISLAND isola di pietra, registered on June 15, 1984, for a range of goods in International Classes 18 and 25;

(c) Chinese Registered Trademark No. 6280735, STONE ISLAND in a compass device (see below) which was registered on July 28, 2010, in respect of goods in International Class 25 (this is also the subject of an International Registration, Registration No. 510222, designating numerous countries);

(d) Chinese Registered Trademark No. G89955, STONE ISLAND with a four-pointed compass device which was registered on July 28, 2010, in respect of goods in International Class 25 (this is also the subject of an International Registration designating numerous countries);

The below device which constitutes International Registration No. 510222, which was registered on February 13, 1987:

logo

The Respondent registered the disputed domain name on October 9, 2019.

When the Complaint was filed, the disputed domain name resolved to a website appearing to offer men’s clothing and accessories for sale. The nature of the business is explained on the “About Us” page:

“Background (who is BusyStone?)

BusyStone defines themselves as the best Stone Island replica makers on the market. The difference between us and 99% of other replica makers is that when we think about replicas, we think about cheap replica sold in city's street that will last you for 6 months before you throw it away. Bad replicas and fast fashion pollute the world. Our items are made from the same material as retail(if not better) and are built to be sustainable and last for years. No shortcuts. We craft items that last through your lifetime but for the fraction of the price.

What do we do?

BusyStone believes in sustainable clothing. We want to craft clothes that are the same as Stone Island in fabrics, zippers, buttons, and badges. We remake iconic designs from Stone Island for 70-80% cheaper than what Stone Island sells them for. We buy the retail items, analyze them, dissect them and replicate to the finest details, from the fabrics to the fitting to the buttons to the zip to the stitching and labels.”

When the Complaint was filed, the “About Us” featured a large image immediately above the text quoted above which featured the compass device depicted above. However, the words “Stone Island” had been replaced with “Busy Stone”. Tags or labels underneath that device showed the compass device still bearing the “Stone Island” wording.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

In the Respondent’s email to the Center dated June 17, 2021, the Respondent stated:

“Having actually no trademark or company related to ‘busystone’, we will agree on giving up busystone.co. We will move our website to a new domain name within 30 days. We then request a delay of 30 days to process the migration. If complainant agree with this solution, let us know.”

While this email could be read as admitting the Respondent did not have trademark protection for “busy stone” or, perhaps, disputing that “busy stone” conflicts with the STONE ISLAND trademark, it nonetheless offered to surrender the disputed domain name. The Complainant did not accept the proposed conditions. Moreover, it appears that, despite the proposal to move from the disputed domain name within 30 days, the website at <busystone.co> is still active. Before illustrating some of the products, the landing page now states:

“WE ARE BACK

“We are back to the business after a month break. Feel free to purchase from Busystone again. No preorder and no delay on shipment. Inventory has been updated. Express Worldwide shipping!”

In these circumstances, it is appropriate to proceed to a decision on the merits.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of at least the registered trademarks referred to in Section 4 above, including STONE ISLAND and STONE ISLAND as part of a compass device.

The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.

In undertaking that comparison, it is permissible in the present circumstances to disregard the country code Top-Level Domain (ccTLD) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.

It is also usual to disregard the design elements of a trademark under the first element as such elements are generally incapable of representation in a domain name. Where the textual elements have been disclaimed in the registration or cannot fairly be described as an essential or important element of the trademark, however, different considerations may arise. See for example, WIPO Overview 3.0, section 1.10.

The Panel considers that approach is appropriate here. The compass device is a significant feature of the compass device trademark. However, the verbal element is prominent and likely to be the point of reference for many consumers.

The Complainant’s trademark and the disputed domain name have the word “stone” in common.

“Stone” is an ordinary English word and in some contexts may have a descriptive function in relation to at least some of the Complainant’s products. For example, it is often the name of a colour and some denim products (in particular) are described as “stone washed”.

That said, the word “stone” is the first element of the Complainant’s trademark and likely to receive the most emphasis. It can therefore be argued to be at least a dominant feature of the Complainant’s trademark. On the other hand, while the word “island” is an ordinary English word too, it is a distinctive element and contributes to the distinctiveness of the composite expression at least in the context of clothing and fashion accessories.

As the Complaint points out, in cases of doubt it is permissible to have regard to the content of a website, which the disputed domain name resolves to. Thus, WIPO Overview 3.0, section 1.7 records:

“In specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, or a pattern of multiple respondent domain names targeting the complainant’s mark within the same proceeding, may support a finding of confusing similarity […].”

In this case, the Respondent’s website is clearly targeting the Complainant and its trademarks. It claims to be a “replica” site selling the same, or much the same, products at significantly cheaper prices. To drive the point home, the “About Us” page (at least) included an image of the Complainant’s compass device with the words “Busy Stone” replacing “Stone Island” superimposed over, or sitting on top of, images of the Complainant’s own label.

Bearing in mind that the first requirement under the Policy is essentially a standing requirement to ensure that there are sufficient trademark rights and that there is a genuine dispute, the Panel finds that the Respondent’s website is targeting the Complainant and its trademark.

Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.

The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is not derived from the Respondent’s own name.

The Panel notes that the website to which the disputed domain name resolves does refer to a company, Busystone Ltd. The Complaint points out, however, that the Terms & Conditions page of the Respondent’s website says it is “published by Cotton Group Ltd, a HK corporation, with registered office in Hong Kong Central”.

Assuming in the Respondent’s favour that Busystone Ltd. is running the business, the adoption of a company name does not by itself confer good faith on a disputed domain name without explanation of its derivation. In the present case, the Respondent has not provided any evidence about when the company was incorporated or how its name was selected. On the other hand, the Complainant’s trademark has been in use for almost 40 years before the Respondent registered the disputed domain name and apparently started the business. The Complainant’s trademark appears to be well known and extensively promoted in the Respondent’s location. Moreover, as already discussed, the Respondent’s business has admittedly been set up to target the Complainant and its trademark. It would seem very likely that the company name, if there is in fact such a company, was chosen as part of that plan.

While there are continuing policy debates about the legitimacy of businesses making replica products, operating a replica business (if that is what it is) under a name and disputed domain name intentionally targeting the Complainant’s trademark is a very different matter which the Panel considers does not qualify as a good faith offering of goods under the Policy. The Respondent is using the confusingly similar disputed domain name and website content / trade name to attract or divert the Complainant’s potential customers to the Respondent’s business.

Given the commercial nature of the Respondent’s website, paragraph 4(c)(iii) also cannot apply.

These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent, however, has not rebutted that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint; see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

Given the length and extent of use of the Complainant’s trademark and the nature of the Respondent’s business, the Panel infers the Respondent was well aware of the Complainant’s trademark when registering the disputed domain name.

The disputed domain name has been found to be confusingly similar to the Complainant ‘s trademark and, as already discussed in Section 5B above, it is abundantly clear that the Respondent registered the disputed domain name to target the Complainant’s trademark. Accordingly, the Panel finds that the registration of a confusingly similar domain name to target the Complainant’s trademark in this fashion constitutes registration in bad faith under the Policy. Using the disputed domain name to carry out that purpose is also use in bad faith.

Accordingly, the Complainant has established all three requirements under the Policy.

6. Decision

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, <busystone.co>, be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: July 28, 2021