WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skorpio Limited and Owenscorp v. Identity masked by EU data protection / Jenniese Daivis
Case No. DEU2018-0005
1. The Parties
The Complainants are Skorpio Limited of Lugano, Switzerland and Owenscorp of Paris, France, represented by Keltie LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Identity masked by EU data protection / Jenniese Daivis of Rome, Italy.
2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name <rickowensoutlet.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2018. On February 23, 2018, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On February 28, 2018, the Registry 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 Complainants on March 2, 2018, providing the registrant and contact information disclosed by the Registry, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on March 2, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 6, 2018. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was April 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2018.
The Center appointed Zoltán Takács as the sole panelist in this matter on April 20, 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 ADR Rules, Paragraph B(5).
4. Factual Background
The Complainants are Skorpio Limited (the First Complainant) and Owenscorp (the Second Complainant).
The First Complainant, Skorpio Limited is a Swiss company that manages the intellectual property rights of American fashion designer Rick Owens. The First Complainant owns a number of trademark registrations for the mark RICK OWENS, among others:
- European Union Trademark (“EUTM”) Registration No. 002493294, registered on May 21, 2003, for goods in classes 3, 9, 14, 18 and 25 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks (the “Nice Classification”); and
- EUTM Registration No. 008209736, registered on November 2, 2009, for services in class 35 of the Nice Classification.
The Second Complainant, Owenscorp is a company established and located in Paris, France and holds a non-exclusive license for the First Complainant’s EUTM Registration No. 00249329.
The disputed domain name was registered on August 9, 2017 and has been inactive.
A. Multiple Complainants
Neither the EC Regulations nor the ADR Rules expressly contemplate the possibility of an ADR complaint filed jointly by multiple complainants. However, several prior domain name disputes decided pursuant to the Uniform Domain Name Dispute Resolution Policy (“UDRP”)1, have shown that under certain circumstances a single complaint filed by more than one complainant against a single respondent may be accepted.
According to section 4.11.1. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[when] assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation”.
The Second Complainant is a licensee of the First Complainant’s RICK OWENS EUTM Registrations No. 00249329, which the Respondent fully incorporated in the disputed domain name.
The Complainants have established that they have common interest in the disputed domain name and with that common grievance against the Respondent. Furthermore, the Panel accepts that it would be procedurally inefficient not to permit the consolidation in this matter. These facts and circumstances in view of the Panel warrant permitting consolidation in this proceeding.
B. Language of the Proceeding
The language of this administrative proceeding is English, that being the language of the registration agreement.
5. Parties’ Contentions
The Complainants contend that the disputed domain name <rickowensoutlet.eu> is confusingly similar to the First Complainant’s RICK OWENS trademark, since it reproduces the trademark in its entirety. The addition of generic term “outlet” is not sufficient to distinguish the disputed domain name from the First Complainant’s trademark.
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraph B(11)(e) of the ADR Rules.
The Complainants claim that the Respondent has registered and used the disputed domain name in bad faith since:
- the Respondent must have been aware of the reputation of the First Complainant’s RICK OWENS trademark when registering the disputed domain name;
- by passively holding the disputed domain name, Respondent prevents the Complainants from using it for legitimate commercial purposes;
- the Respondent is engaged in a pattern of registration of domain names incorporating other well-known clothing and apparel brands such as Adidas, Converse, Jordan, Nike, Vans, etc.
The Complainants request that the disputed domain name <rickowensoutlet.eu> be transferred to the Second Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complaint to succeed, the Complainants must show, in accordance with Article 21(1) of Commission Regulation (EC) No. 874/2004 (the “Regulation”) and Paragraph B11(d)(1) of the ADR Rules, that:
(i) The domain name is identical of confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law and; either
(ii) The domain name has been registered by the Respondent without rights or legitimate interest in the name; or
(iii) The domain name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law
The First Complainant holds registered rights in the trademark RICK OWENS, and for the purpose of this proceeding, the Panel establishes that the First Complainant’s EUTM Registrations Nos. 002493294 and 008209736, both for the word mark RICK OWENS satisfy the requirement of having a right recognized by the Community law.
The disputed domain name <rickowensoutlet.eu> incorporates the First Complainant’s inherently distinctive trademark RICK OWENS in its entirety. The only element in the disputed domain name that differs from the RICK OWENS trademark of the First Complainant is the descriptive, dictionary word “outlet”, which is not sufficient to prevent a finding of confusing similarity.
The applicable country code Top-Level Domain (“ccTLD”) suffix in the disputed domain name “.eu” should in relation to this administrative proceeding be disregarded and the Panel finds that the disputed domain name <rickowensoutlet.eu> is confusingly similar to the RICK OWENS trademark of the First Complainant and that the requirement of Article 21(1) of the Regulation and paragraph B11(d)(1)(i) of the ADR Rules is satisfied.
B. Rights or Legitimate Interests
Under paragraph B11(e) of the ADR Rules, a respondent may demonstrate its rights or legitimate interests to the domain name for purposes of paragraph B11(d)(1)(ii) by showing any of the following circumstances, in particular but without limitation:
(1) prior to any notice of the dispute, the Respondent has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so;
(2) the Respondent, being an undertaking, organization or natural person, has been commonly known by the domain name, even in the absence of a right recognized or established by national and/or Community law;
(3) the Respondent is making a legitimate and noncommercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or Community law.
According to section 2.1 of the WIPO Overview 3.0, 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 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 the 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 requirement to prove that the disputed domain name has been registered by the Respondent without rights or legitimate interest in the name.
The Complainants have established that they have no relation to the Respondent, and have never authorized the Respondent to use the First Complainant’s RICK OWENS trademark in any way, whose prior rights in the RICK OWENS trademark long precede the date of registration of the disputed domain name.
The Respondent failed to respond to the Complainant’s contentions, and by doing so failed to offer to the Panel, any type of evidence set forth in paragraph B11(e) of the ADR Rules, or otherwise counter the Complainants prima facie case.
Furthermore Article 22 (10) of the Regulation provides that “[f]ailure of any of the parties involved in an ADR procedure to respond within the given deadlines or appear to a panel hearing may be considered as grounds to accept the claims of the counterparty.”
In accordance with Article 21(1) of the Regulation and paragraph B11(d)(1)(ii) of the ADR Rules the Panel finds that the disputed domain name has been registered by the Respondent without rights or legitimate interest in the name.
C. Registered or Used in Bad Faith
Under Article 21(1) of the Regulation and paragraph B(11)(d)(1) of the ADR Rules lack of rights or legitimate interests is an alternative requirement to registration and use of the domain name in bad faith.
While this Panel found that the Respondent lacks any rights or legitimate interests in the disputed domain name and there would be no need to separately address the bad faith registration or use requirement, the Panel will nevertheless address the third element.
The Panel finds that passive holding of the disputed domain name does not in the circumstances of this case prevent a finding of bad faith. There is no evidence in the record of a legitimate use of the disputed domain name. Moreover, the Respondent has not participated in these proceedings and has failed to rebut the Complainant’s contentions. Based on the evidence and circumstances of this case, the Panel finds that the Respondent’s passive holding of the disputed domain name amounts to registration or use in bad faith.
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name <rickowensoutlet.eu> be transferred to the Second Complainant.2
Date: May 14, 2018
1 Given the similarities between the ADR Rules and the UDRP, cases decided under both the ADR Rules and the UDRP are relevant to this proceeding.
2 The remedy sought by the Complainants is transfer of the disputed domain name to the Second Complainant. As the Second Complainant is established and located within the European Union it satisfies the general eligibility criteria for registration of the disputed domain name set out in Article 4(2)(b) of the Regulation (EC) No 733/2002.