WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Luxottica Group S.p.A. v. Savchenko Diana

Case No. DUA2021-0001

1. The Parties

The Complainant is Luxottica Group S.p.A., Italy, represented by Convey Srl, Italy.

The Respondent is Savchenko Diana, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <rb-ink.com.ua> is registered with “Service Online” LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2021. On January 11, 2021, the Center transmitted by email to the Registrar a request for registrant verification in connection with the disputed domain name. On January 21, 2021, the Registrar 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 Complainant on February 17, 2021 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 amendment to the Complaint on February 18, 2021 in this regard.

On January 29, 2021, the Center sent an email communication in English and Ukrainian to the Parties indicating the registration agreement for the disputed domain name is in Ukrainian, and inviting the Parties to submit their preference as to the language of the proceeding. On February 3, 2021, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not respond to the email communication from the Center in relation to the language of the proceeding.

The Center verified that the Complaint and amended Complaint satisfied the formal requirements of the .UA Domain Name Dispute Resolution Policy (the “.UA Policy”), the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”).

In accordance with the .UA Rules, paragraph 4(c), the Center formally notified the Respondent of the Complaint in both Ukrainian and English, and the proceeding commenced on February 19, 2021. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was March 11, 2021. The Respondent failed to submit the Response by the above indicated date. Accordingly, the Center notified the Respondent’s default on March 17, 2021.

The Center appointed Oleksiy Stolyarenko as the sole panelist in this matter on March 23, 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 .UA Rules, paragraph 7.

4. Factual Background

The Complainant is an Italian eyewear conglomerate based in Milan, Italy.

The Complainant owns such well-known brands as Ray-Ban, Oakley, Vogue Eyewear, Persol, Oliver Peoples, Arnette, Costa del Mar and Alain Mikli. It also produces its products under the licensed brands including Giorgio Armani, Burberry, Bulgari, Chanel, Coach, Dolce&Gabbana, Ferrari, Michael Kors, Prada, Ralph Lauren, Tiffany & Co., Valentino and Versace.

The Complainant’s global wholesale distribution network covers more than 150 countries across five continents and is complemented by an extensive retail network of approximately 9,200 stores.

The Complainant operates in Ukraine in cooperation with Nova Vista, a Ukrainian distributor based in Kiev with 200 own retail stores and 300 wholesale customers in that country. According to Nova Vista, the total share of Luxottica products is 20%-25% on Ukraine market.

Ray-Ban is an Italian/American brand of luxury sunglasses and eyeglasses created in 1936 by the American company Bausch & Lomb. The brand is known for its Wayfarer and Aviator lines of sunglasses. In 1999, Bausch & Lomb sold the brand to the Complainant for USD640 million.

The Complainant owns numerous trademarks for RAY-BAN and RB throughout the world including:

- Unites States of America (“U.S.”) Trademark for RB No. 76134176 registered on July 19, 2005 for the goods in class 9 including “sunglasses, eyeglasses”;

- European Union (“EU”) Trademark for RB No. 011096336 registered on August 2, 2014 for the goods in class 9 including: “sunglasses, spectacles, aesthetic spectacles, protective eyewear, glasses for sporting activities, lenses for sunglasses, spectacles and cosmetic glasses”;

- International Registration for RAY-BAN No. 1003833 registered December 29, 2008 for goods in class 9 including “sunglasses, spectacles, fashion spectacles, protective goggles and masks for the eyes and for sporting activities”, designations include Ukraine.

Furthermore, the Complainant owns the domain name <ray-ban.com>. According to the WhoIs the Complainant registered the domain name on October 18, 2005.

The Complainant’s website has its Ukrainian page at “www.ray-ban.com/ukraine” translated into Ukrainian and sells branded goods in Ukraine since 2005.

The Respondent is a Ukrainian individual. According to the WhoIs, the disputed domain name was registered in the name of the Respondent on April 9, 2016. The website under the disputed domain name is currently inactive. Based on the evidence and screenshots provided by the Complainant when the website was active, it was resolving to a website offering for sale Ray-Ban branded sunglasses and eyeglasses using RAY-BAN trademarks and was designed to be strikingly similar to the official “www.ray-ban.com/ukraine” website of the Complainant.

Prior to the filing of the dispute, the Complainant and the Respondent exchanged pre-Complaint correspondence.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s trademark.

The Complainant has acquired rights on RB and RAY-BAN trademarks in many jurisdictions throughout the world. The Complainant sells branded goods in Ukraine, including through its official website “www.ray-ban.com”, which is also translated into Ukrainian. Both the Complainant and its RB trademark are well-known in Ukraine. The Complainant’s trademark acquired protection significantly prior to registration of the disputed domain name.

The word “ink”, following the trademark RB, does not reduce the high degree of similarity between the domain name and the Complainant’s trademark. It is a dictionary term that used by the sunglasses andeyeglasses manufacturers to describe the color of their lenses or of their frames.

The hyphen included in the disputed domain name between the trademark RB and the dictionary word “ink” emphasizes that the Complainant intended to refer to the trademark RB.

The Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent is not an authorized dealer of the Complainant nor has ever been authorized by the Complainant to use the trademarks RB or RAY-BAN in the disputed domain name.

The Respondent is not commonly known by the disputed domain name, and the Respondent is not preparing to use it in connection with a bona fide offering of goods and services. The intention of the registration of the disputed domain name is to take advantage of the well-known RB trademark.

The Respondent’s use of the copyright disclaimer on the website, when it was active, indicating that the rights are reserved to RB Ink Store, is not enough to prove rights or legitimate interest in the domain name.

The website corresponding to the disputed domain name is confusingly similar to the Complainant’s website and there are also references and images of the Complainant’s trademarks and products on the website.

The Respondent was fully aware of the Complainant’s trademark reputation and the purpose of the registration of the disputed domain name was solely to capitalize on the reputation of the Complainant’s trademark by diverting Internet users seeking the Complainant’s products to the website under the disputed domain name.

Furthermore, the Respondent used the disputed domain name and website for such fraudulent activity as sales of counterfeit goods, that was confirmed by a test purchase from the Respondent’s website.

The website did not contain any disclaimers that could prevent possible consumer confusion between the Complainant and the Respondent.

The Respondent used the emails […]@gmail.com and […]@gmail.com to in order to divert and fraud Internet users creation an impression that the website corresponding to the disputed domain name offers the products associated with the Complainant.

The Complainant seeks a decision that the domain name be transferred to the Complainant.

B. Respondent

The Respondent did not respond to the Complaint.

6. Discussion and Findings

Given the similarities between the .UA Policy and Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel will refer to the UDRP precedents when relevant.

A. Language of Proceeding

According to paragraph 11(a) of the .UA Rules “unless otherwise agreed by the Parties, the language of the administrative proceeding shall be the language of the Registration Agreement (which shall be in English, Russian or Ukrainian), subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

In this case, the Registrar has confirmed that the language of the Registration Agreement for the disputed domain name is Ukrainian.

The Complainant filed the Complaint in English, and requested English to be the language of this proceeding, indicating that the pre-Complaint correspondence between the Complainant and the Respondent was conducted in English, parts of the website corresponding to the domain name are in English and the fact that the Respondent is offering for sale counterfeit products may result in further losses for the Complainant and internet users purchasing such goods.

The Respondent did not send any email communications (but the Panel notes that the Respondent is located in Ukraine).

The Panel notes that the disputed domain name is composed of Latin characters, and that “RB Ink” has no meaning in Ukrainian or Russian languages.

In previous similar cases, panels after considering the totality of the circumstances found that it would be fair to the parties not having English as their native language and one of which is not familiar with the Respondent’s native language to designate English as the language of the proceeding (see OPPO Pte. Ltd. v. Alexander Leonidovich Shirkov, WIPO Case No. DUA2019-0001).

Furthermore, the Panel concludes that the Respondent has a high level of proficiency in English based on the provided by the Complainant pre-Complaint correspondence conducted in English and the fact that the Respondent claimed to use “ebay.com” website for buying RB branded goods, and this website does not have a Russian or Ukrainian interface.

This Panel also concurs with the findings in, Facebook Inc. v. Private Registration / Denis Khakimov, WIPO Case No. DUA2019-0002, where it is noted that “while applying the provision on the language of the proceeding the Panel considers that it should be also ensured that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition.”

The Center duly notified the Respondent in English and in Ukrainian on the request of the Complainant to use English as the language of the proceeding (being Ukrainian a language of the Registration Agreement accepted by the Respondent when registering the disputed domain name). The Respondent was also provided with an opportunity to object and request the proceeding to not be carried in English. However, the Respondent did not use this opportunity and did not object for English to be the language of the proceeding.
Furthermore, the Panel notes that the Center sent the notification of the Complaint and commencement of the proceeding to the Parties in both languages (English and Ukrainian), accepting the Complaint filed in English, and giving equal opportunities to the Parties to participate in the proceeding. In addition, the Panel notes that the Respondent did not submit a Response, and did not use an opportunity to argue his case.

The Center also appointed the Panel that is familiar with all three languages, English, Russian and Ukrainian, in order to treat the Parties equally in the proceeding.

Therefore, the Panel concludes that each Party of the proceeding was treated fairly and was provided a fair opportunity to present its case.

The Panel also finds additional translation of the filings would unfairly disadvantage and burden the Parties and delay the proceeding and adjudication of this matter.

Based on the foregoing, the Panel concludes that it is not unfair to the Parties to proceed in English and finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English.

B. Identical or Confusingly Similar

The Complainant has proved rights in RB and RAY-BAN trademarks through the US, EU and international registrations designating Ukraine.

Therefore, the Panel considers that the Complainant has satisfied the threshold requirement of having relevant trademark rights.

The Panel also considers that the disputed domain name is confusingly similar to the Complainant’s RB and RAY-BAN trademarks.

The disputed domain name <rb-ink.com.ua> consists of the Complainant’s trademark RB, hyphen, the word element “ink” and the country code Top-Level Domain (ccTLD) suffix “.com.ua.” The ccTLD is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Therefore, the Panel disregards the ccTLD for the purposes of this comparison.

Furthermore, the Panel notes that disputed domain name incorporates the Complainant’s trademark RB in its entirety.

The Panel finds that the word “ink” does not have an established meaning in Ukrainian or Russian languages.

The Panel concurs with the Complainant that the consumers looking for the sunglasses and eyeglasses might understand the word “ink” as the color of eyeglasses lenses or frames.

The Panel also finds that the word “ink” in the disputed domain name <rb-ink.com.ua> in a combination with the well-known trademark RB could be confused with “Inc.” the most widely used abbreviation for a dictionary word “incorporated.”

Nevertheless, the added word “ink” to the Complainant’s RB trademark, does not make the disputed domain name in any way less confusingly similar to the Complainant’s trademark.

The word “ink” might relate to the Complainant’s activities regarding use of RB and RAY-BAN trademarks in Ukraine.

The Complainant uses hyphen in its well-known trademark RAY-BAN, therefore, naturally, use of hyphen in the disputed domain name <rb-ink.com.ua> right after RB trademark strengthens the impression that the disputed domain name is operated by the Complainant.

The Panel finds that according to a side-by-side comparison of the disputed domain name and the textual components of the RB trademark, the disputed domain name reproduces in its entirety the Complainant’s RB registered trademark and, thus, that the Complainant’s RB registered trademark is recognizable within the disputed domain name.

While the content of the website associated with the disputed domain name is usually disregarded by panels when assessing confusing similarity under the first element. In this case, the Panel notes the content of the website associated with the disputed domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target the Complainant’s trademark through the disputed domain name by offering for sale what appears to be counterfeit products of RB and RAY-BAN sunglasses and eyeglasses.

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the .UA Policy.

C. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the .UA Policy the Complainant has to establish that the Respondent has no rights or legitimate interests in the disputed domain name.

Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. However the overall burden of proof remains with the Complainant. Paragraph 4(c) of the .UA Policy provides circumstances that demonstrate the Respondent’s rights or legitimate interests to the disputed domain name, and that complainants frequently address to show that the activities of the Respondent does not fall under the bona fide offering of goods or services (paragraph 4(c)(i) of the .UA Policy), that the Respondent is not commonly known by the disputed domain name (paragraph 4(c)(ii) of the .UA Policy) and that the Respondent is not involved into a legitimate noncommercial or fair use of the disputed domain name (paragraph 4(c)(iii) of the .UA Policy).

The Panel finds that because the disputed domain name <rb-ink.com.ua> reproduces in its entirety the Complainant’s RB registered trademark any use of such domain name by the Respondent carries a high risk of implied affiliation with the Complainant.

According to the Complainant, the Respondent is not an authorized dealer or licensee of the Complainant and has not received permission for use of RB and RAY-BAN trademarks in the disputed domain name or on the corresponding website.

The disputed domain name is currently not resolving to an active website, however, based on the provided by the Complainant screenshots confirmed by information from the Internet Archive Wayback Machine, when the website was active, it looked as it offered for sale RB and RAY-BAN branded sunglasses.

The Responded failed to disclose the relationship (or lack thereof) between the Complainant and the Respondent on the website. However, use of the Complainant`s RB and RAY-BAN trademarks on the website and the content of the website, in particular, the page named “Ray Ban History” suggest that the Respondent was well aware that RB and RAY-BAN are trademarks of the Complainant used by the Responded without the Complainant`s consent.

The Complainant provided evidence confirming that the disputed domain name when previously resolved to a website involved in the sale of counterfeit goods. This suggests the Respondent is not involved in a bona fide offering of goods or services or a legitimate noncommercial or fair use. See. e.g. Wenger S.A. v. Нелепов Владислав Юрьевич / Nelepov Vladislav, WIPO Case No. DUA2020-0013

Based on the evidence provided by the Complainant, the Panel infers that the Respondent aimed to monetize the disputed domain name by selling what appears to be counterfeit products on the website, and claiming affiliation with the Complainant when it was active, and the Panel finds that the Respondent was not involved in a bona fide offering of goods or services (under paragraph 4(c)(i) of the .UA Policy) and the Respondent’s activities does not fall under a legitimate noncommercial use (under paragraph 4(c)(iii) of the .UA Policy).

According to the Registrar’s information, “Savchenko Diana” is the registrant of the disputed domain name. The Panel did not found any evidence that the Respondent is commonly known by the disputed domain name <rb-ink.com.ua>. The Panel concludes that the Respondent is not commonly known by the disputed domain name under paragraph 4(c)(ii) of the .UA Policy.

Thus, the Panel finds that the Complainant has satisfied the second element of the .UA Policy, namely paragraph 4(a)(ii).

D. Registered or Used in Bad Faith

As the Panel established above, the Complainant’s RB and RAY-BAN trademarks are distinctive and well-known including in Ukraine. The Complainant sells its branded products in Ukraine from 2005 through a local distributor and its branded products available through all Ukraine. The Complainant has a website that is translated into Ukrainian and invested in popularization of its brand in Ukraine.

The Panel notes that the Complainant’s marks for RB were registered prior to the registration of the disputed domain name, and the Respondent, through the nature of the activities on the website under the disputed domain name was aware that such registration abuses the Complainant’s trademark rights.

The Responded failed to submit a response or provide any evidence of a good-faith use. Moreover, the composition of the elements and the color scheme of the website, use of the Complainant’s RB and RAY-BAN trademarks, the content of the website that included pages under the names “Ray Ban Store” and “Ray Ban History” as well as disclaimer “RB Ink Store © 2019. Все права защищены” all suggests that the Respondent not only knew about the Complainant’s trademarks and official website, but intentionally copied the elements of the Complainant’s website and used the Complainant’s trademarks in order to create impression that the website under the disputed domain name was associated, affiliated, sponsored or directly operated by the Complainant.

Thus, the Panel, concludes that the Respondent prior actions in relation to the disputed domain name indicate that the Respondent aimed to monetize the disputed domain name by selling what appears to be counterfeit products and claiming affiliation with the Complainant.

Furthermore, the Panel finds it is implausible that the disputed domain name could be put to use by the Respondent in good faith considering that it is confusingly similar to the Complainant’s trademarks.

Therefore, under the totality of the circumstances, the Panel finds that the current “passive holding” of the disputed domain name by the Respondent constitutes bad faith.

The Respondent has no rights or legitimate interests in the disputed domain name.

Noting the previous use of the disputed domain name provided by the Complainant, the Panel finds that the Respondent’s intention has always been to use the disputed domain name to intentionally attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location (see paragraph 4(b)(iv) of the .UA Policy).

Therefore, the Panel concludes that the Respondent registered and used the disputed domain name in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the .UA Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the disputed domain name <rb-ink.com.ua> be transferred to the Complainant.

Oleksiy Stolyarenko
Sole Panelist
Date: April 8, 2021