WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roger Vivier S.p.A. v. Lee Rose, Super Privacy Service LTD c/o Dynadot, Sara Cade, and Tonya Roxana
Case No. DME2019-0010
1. The Parties
The Complainant is Roger Vivier S.p.A., Italy, represented by Convey Srl, Italy.
The Respondents are Lee Rose, China, Super Privacy Service LTD c/o Dynadot, Sara Cade and Tonya Roxana, United States of America. For the reasons set out in section 6.A. below, for the purposes of the decision, the Panel will refer to the Respondents as a single Respondent.
2. The Domain Names and Registrars
The disputed domain names (collectively “Domain Names”) <rogervivieroutlet.me> and <rogervivierstore.me> are registered with Name.com, Inc. (Name.com LLC). The disputed domain names <rogerviviershop.me> and <rogerviviervip.me> are registered with NameCheap, Inc. The disputed domain name <rogerviviershoes.me> is registered with Dynadot (collectively the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2019. On September 27, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On September 27, 29 and 30, 2019, the Registrars transmitted by email to the Center their verification responses 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 October 14, 2019 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 15, 2019.
The Center verified that the Complaint together with the amended Complaint (hereafter 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 October 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2019.
The Center appointed Nicholas Smith as the sole panelist in this matter on November 21, 2019. 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 specializing in the production of high-end and luxury footwear. The Complainant’s business was started in 1937 in Paris by Roger Henri Vivier, a specialist footwear maker. The Complainant presently offers a range of luxury products such as shoes, bags and accessories. In 2018 the Complainant’s annual turnover was 179 million Euros.
The Complainant has held a trade mark registration for the word mark ROGER VIVIER (the “ROGER VIVIER Mark”) in various jurisdictions including an European Union trade mark for goods and services in classes 3, 9, 14, 16, 18, 20, 21, 24, 25, 26, 34, 35 and 42 with a registration date of October 17, 2008 (registration no. 006349138). The Complainant also uses, as part of its brand, a distinctive logo, consisting of the ROGER VIVIER Mark in slanted cursive font, above the word Paris (the “Roger Vivier Logo”).
The Domain Name <rogerviviershop.me> was registered on July 17, 2019. The Domain Name <rogerviviervip.me> was registered on August 26, 2019. The Domain Name <rogerviviershoes.me> was registered on June 11, 2019. The Domain Name <rogervivieroutlet.me> was registered on March 24, 2017. The Domain Name <rogervivierstore.me> was registered on September 20, 2016. Each of these Domain Names, prior to the Complainant first writing to the Respondent, resolved to strikingly similar websites (the “Respondent’s Websites”) that purported to offer the Complainant’s branded ROGER VIVIER footwear to the general public, including by reproducing the Roger Vivier Logo (with the Respondent’s Website accessible from <rogervivieroutlet.me>, reproducing it less prominently than the other Respondent’s Websites, only on photos of the packaging of the products). The Complainant alleges that the footwear products offered on the Respondent’s Websites are counterfeit.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s ROGER VIVIER Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the ROGER VIVIER Mark having registered the ROGER VIVIER Mark in the European Union since 2008 and it or its predecessors in title having used it in various forms since the late 1930s. The Complainant has developed a considerable reputation in the ROGER VIVIER Mark as a specialist supplier of footwear, including by designing and creating distinctive footwear used by numerous celebrities. Currently there are over 60 Roger Vivier boutiques worldwide. Each of the Domain Names incorporates the whole of the Complainant’s ROGER VIVIER Mark and adds a generic term such as “outlet”, “shoes” and “vip”, which does not decrease the likelihood of confusion with the ROGER VIVIER Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Names. The Respondent is not commonly known as any of the Domain Names, nor does the Respondent have any authorization or license from the Complainant to use the ROGER VIVIER Mark. The Respondent is not making a legitimate noncommercial fair use of the Domain Names. Rather the Respondent is using the Domain Names to operate the Respondents’ Websites where the Respondent offers for sale counterfeit products under the Complainant’s ROGER VIVIER Mark.
The Domain Names were registered and are being used in bad faith. By using the Domain Names for websites that reproduce the ROGER VIVIER Mark and Roger Vivier Logo and sell counterfeit products, the Respondent is preventing the Complainant from using the Domain Names, is disrupting the business of the Complainant and is intentionally attempting to attract for commercial gain, Internet users to the Respondent’s Websites, by creating a likelihood of confusion with the Complainant’s ROGER VIVIER Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Websites.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Consolidation of Proceedings
The named registrant of the Domain Names <rogervivieroutlet.me> and <rogervivierstore.me> is Lee Rose. The named registrant of the Domain Name <rogerviviershoes.me> is Super Privacy Service LTD c/o Dynadot. The named registrant of the Domain Name <rogerviviervip.me> is Tonya Roxana. The named registrant of the Domain Name <rogerviviershop.me> is Sara Cade.
UDRP proceedings are normally brought against a single respondent. However paragraph 10(e) of the Rules states that in certain circumstances a panel may consolidate multiple domain name disputes. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 4.11.2, states:
“Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).”
Based on the information before it, the Panel is prepared to allow the consolidation of the proceedings against each of the named registrants on the basis that the Domain Names are under common control. The Domain Names have redirected to almost identical English-language websites, offering identical products with identical shipping information; clearly under the control of the same entity. Each of the Domain Names has a similar naming pattern, being the ROGER VIVIER Mark, a descriptive word and the country code top-level domain (“ccTLD”) “.me” (being the ccTLD for Montenegro). Finally, the Panel notes that none of the named registrants has denied any association with the other or objected to the consolidation of the proceedings requested by the Complainant. The Panel finds that, on the balance of probabilities, the Domain Names are subject to common control and that the consolidation would be fair and equitable to all the Parties. As such, for the purposes of the decision, the Panel will refer to the named registrants of the Domain Names as a single Respondent.
B. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and each Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the ROGER VIVIER Mark, having registrations for ROGER VIVIER as a trade mark in various jurisdictions including the European Union.
The Domain Names each incorporate the ROGER VIVIER Mark in its entirety with the addition one or more generic terms. The addition of a generic term to a complainant’s mark is insufficient to dispel the impression of confusing similarity, see Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056. An individual viewing any of the Domain Names may be confused into thinking that the each of the Domain Names would refer to a site in some way connected to the Complainant. The Panel finds that each of the Domain Names are confusingly similar to the Complainant’s ROGER VIVIER Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
C. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the ROGER VIVIER Mark or a mark similar to the ROGER VIVIER Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar names. There is no evidence that the Respondent has used or made demonstrable preparations to use any of the Domain Names in connection with a legitimate noncommercial use.
The Respondent has used the Domain Names to operate websites that are strikingly similar to the Complainant’s website (and reproduce the Roger Vivier Logo) and uses the ROGER VIVIER Mark to sell shoes that purport to be legitimate Roger Vivier products. Given the lack of any connection between the Complainant and the Respondent, the manner in which the Respondent’s Websites impersonate the Complainant and the prices for which the shoes are sold, it is highly likely that the shoes sold by the Respondent are not genuine Complainant products. If this is the case the Respondent’s use of the Domain Names does not grant it rights or legitimate interests since it is using the Complainant’s ROGER VIVIER Mark for a site selling counterfeit products.
Even if the Respondent is offering genuine Roger Vivier products from the Respondent’s Websites, such use does not automatically grant it rights and legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
“… Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.
The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.”
In this case, the Respondent’s Websites do not accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorized dealer or has any particular connection with the Complainant. Rather the Respondent is actively impersonating the Complainant online. Even in the event that the Respondent is reselling genuine Roger Vivier products, its use of the Domain Names for the Respondent’s Websites does not grant it rights or legitimate interests in the Domain Names.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Names under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Names in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registrations to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or
(ii) The Respondent has registered the Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, the Respondent has intentionally attempted 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 the Respondent’s website or location. (Policy, paragraph 4(b)).
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the ROGER VIVIER Marks at the time the Domain Names were registered. The Domain Names have resolved to websites that purport to be the website(s) of the Complainant, including by reproducing the Complainant’s Roger Vivier Logo and selling Roger Vivier footwear, indicating that the Respondent was aware of the Complainant at the time of registration.
In the circumstances, the Respondent’s conduct in registering the Domain Names when it was aware of the Complainant’s rights and lacked rights or legitimate interests of its own amounts to registration in bad faith.
The Respondent registered the Domain Names for the purpose of operating websites specifically to sell either the Complainant’s footwear products or counterfeit footwear products that compete with the Complainant’s products. The Respondent has used the Domain Names that are confusingly similar to the ROGER VIVIER Mark to sell products, be they legitimate or otherwise, in competition with the Complainant and without the Complainant’s approval. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant and the Complainant’s ROGER VIVIER Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Websites.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy.
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 <rogervivieroutlet.me>, <rogerviviershoes.me>, <rogerviviershop.me>, <rogervivierstore.me> and <rogerviviervip.me> be transferred to the Complainant.
Date: November 23, 2019