WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Diadora Sport Srl v. Lisheng
Case No. D2016-1722
1. The Parties
The Complainant is Diadora Sport Srl of Caerano di S. Marco, Italy, represented by Brandstock Domains GmbH, Germany.
The Respondent is Lisheng of Xia Men, Fu Jian, China.
2. The Domain Name and Registrar
The disputed domain name <diadora.xin> (the “Domain Name”) is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2016. On August 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 25, 2016, 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. On August 29, 2016, the Center transmitted by email to the Parties in both English and Chinese a request for comment on the language of the proceeding. The Complainant submitted a request for English to be the language of the proceeding on August 29, 2016. On the same day, the Complainant filed an amended Complaint in response to a request by the Center regarding the remedy. The Respondent did not comment on the language of the proceeding by the specific 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 of the Complaint in both English and Chinese, and the proceeding commenced on September 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 25, 2016. The Respondent submitted a request to transfer the Domain Name to the Complainant on September 23, 2016. Accordingly, on September 26, 2016, the Center informed the Parties by email the if they wish to explore settlement options, the Complainant should submit a request for suspension by October 1, 2016. The Complainant did not request for suspension by the specific due date. The Center notified the Parties the commencement of panel appointment process on October 4, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on October 6, 2016. 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 sport shoe, clothing and accessories manufacturer founded in Italy in 1948.
The Complainant’s distribution network includes more than 60 countries in the world. Its most important markets are Italy, the United Kingdom of Great Britain and Northern Ireland (“UK”), Germany, Japan, Canada, Chile and Israel. The Complainant’s products are distributed in over 14,500 retail points over the world, including 2,500 shops in Italy, 1,800 in Japan, 650 in Canada, 500 in the United States of America, and 400 in Norway, the UK and Indonesia. These products bear the DIADORA trade mark (the “Trade Mark”). These products have been and are currently worn by a number of high-profile sport players such as George Weah, Roberto Baggio, Giuseppe Signori, Francesco Totti, Roy Keane and Antonio Cassano. The Complainant’s products have been worn at major sports events such as the Roland Garros international tennis championship by Gustavo Kuerten. The Complainant’s products were also worn by Italian athletes during the Rio de Janeiro Olympic Games 2016.
The Trade Mark is registered in many different territories globally. The earliest submitted in evidence was registered on April 27, 1981. The Complainant is also the owner of a large portfolio of domain names which includes the Trade Mark. These include <diadora.shoes>, <diadora.us>, <diadora-cycling-shoes.com>, <diadoraheritage.it>, <diadorautility.it>, <utilitydiadora.clothing>, <diadora.com>, <diadora.co.uk>, <diadorautility.bike> and <diadorautility.equipment>.
The Domain Name was registered on March 15, 2016. The Domain Name has not been connected to any active websites. The Complainant’s representative sent a cease and desist letter to the Respondent on June 14, 2016. The Respondent did not respond to it.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and being used in bad faith. The Complainant requests transfer of the Domain Name.
Other than offering to transfer the Domain Name to the Complainant, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and being used in bad faith.
B. Language of 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 proceeding. According to the information received from the Registrar, the language of the registration agreement for the Domain Name is Chinese.
The Complainant submits in paragraph IV of the Complaint and confirmed in an email on August 29, 2016 that the language of the proceeding should be English. A reverse WhoIs search based on the email address of the Respondent reveals that it owns more than 30 domain names, several of which contain common generic English words. These include <bananaumbrella.xin>, <angelcitiz.xin>, <earthmusic.xin>, <space7.xin> and <googbaby.xin>. It would therefore appear that the Respondent has sufficient understanding of English. The Complainant and its legal representative on the other hand are not able to communicate in Chinese. They would not be in a position to conduct the proceeding in Chinese without a great deal of additional expense and delay in order to translate the Complaint. That being the case, the Respondent would be given an unfair advantage over the Complainant if the proceeding is conducted in Chinese.
The Panel notes that on September 23, 2016 the Respondent emailed the Center in English offering to transfer the Domain Name to the Complainant. The Panel accepts the Complainant’s submissions regarding the language of the proceeding and is satisfied that the Respondent appears to understand English. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case all of the communications from the Center to the Parties were transmitted in both Chinese and English. There is therefore no question of the Respondent being able to understand the Complaint. The Respondent also chose not to respond to the Complainant’s contentions. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the disputed domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Name comprises the Complainant’s distinctive trade mark DIADORA in its entirety which is identical to the Trade Mark. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”).
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed 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, or to tarnish the trade mark or service mark at issue.
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 paragraph 2.1 of the Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. 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 disputed domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant alleges that the Respondent is not commonly known by the Domain Name. It has also not acquired any trade mark rights in relation to the name “diadora”. There is no active use of the Domain Name which means that there is no evidence of the Respondent using or making any preparations to use the Domain Name for a bona fide offering of goods or services. Neither is there any evidence of legitimate noncommercial fair use of the Domain Name. Further, the Complainant has no commercial link with the Respondent. It has not granted the Respondent any authorization, licence or any right whatsoever to use the Trade Mark. 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 responded to the Complainant’s contentions and 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 Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Domain Name is not connected to an active website. This does not prevent a finding of bad faith. The Consensus View in paragraph 3.2 of the WIPO Overview 2.0 states that the apparent lack of active use of the disputed domain name without any active attempt to sell or to contact the trade mark owner does not prevent a finding of bad faith. The panel has to examine the circumstances of the case to determine whether the respondent is acting in bad faith. The panel may draw inferences about whether the disputed domain name was used in bad faith given the circumstances surrounding registration, and vice versa.
The Tarde Mark was registered and used a long time before the Domain Name was registered. The Trade Mark is also very well known. A search on an online search engine shows results only related to the Complainant. It would be inconceivable that the Respondent had no knowledge of the Trade Mark when the Domain Name was registered.
The Complainant contends that the Respondent has registered other domain names that consist of other well-known brand names e.g. <bananaumbrella.xin>, <cachecache.xin>, <pullandbear.xin> and <borghese.xin>. The Panel recognises three of the brands “Cache Cache”, “Pull and Bear” and “Borghese”. Accordingly, the Panel finds that the Respondent registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and the Respondent’s actions therefore amount to bad faith. The Complainant did not submit any evidence which supports the allegation that these marks are famous.
In addition to the circumstances of registration referred to above, the following facts indicate that the Domain Name was registered and is being used in bad faith. The Complainant’s trade mark is a famous mark with no other meaning other than in reference to the Complainant, the Respondent failed to respond to the cease and desist letter or reply to the Complainant’s contentions and it has registered at least three other domain names consisting of trade marks that it most likely has no rights.
Considering the circumstances, the Panel considers that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <diadora.xin> be transferred to the Complainant.
Date: October 6, 2016