WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Manolo Blahnik, Manolo Blahnik International Limited, MB Foundation Limited v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Loley Free / Vicky Rogers / Chen WenTing
Case No. D2018-0392
1. The Parties
The Complainant is Manolo Blahnik of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) (the “First Complainant”), Manolo Blahnik International Limited of London, United Kingdom, (the “Second Complainant”), MB Foundation Limited of St. Helier, Jersey, United Kingdom (the “Third Complainant”), represented by DLA Piper UK LLP, United Kingdom.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts of United States of America (“United States”) / Loley Free of Columbia, Washington, United States/ Vicky Rogers of Staffordshire, United Kingdom / Cheng WenTing of Fuzhon, Fujian, China.
2. The Domain Names and Registrar
The disputed domain names <manoloblahnik-outlet.com> (the “first disputed domain name”) and <manoloblahnik-outletonline.com> (the “second disputed domain name”) are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “first Registrar”). The disputed domain name <manoloblahnikonlineoutlet.com> (the “third disputed domain name”) is registered with Shanghai Meicheng Technology Information Development Co Ltd. d/b/a cndns.com (the “second Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2018. On February 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 22, 2018, the Registrar transmitted by email to the Center its verification response disclosing:
(a) it was the Registrar for the first and second disputed domain names;
(b) English is the language of the Domain Registration Agreements by which the first and second disputed domain names were registered;
(c) registrant and contact information for the first and second disputed domain names which differed from the named Respondent and contact information in the Complaint;
(d) the first disputed domain name was first registered in the name of Lolely Free (the First Respondent) on April 11, 2017; and
(e) the second disputed domain name was first registered in the name of Vicky Rogers (the Second Respondent) on August 28, 2017.
The Center sent an email communication to the Complainant on February 27, 2018 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 March 7, 2018.
The Center verified that the Complaint together with the amendment to 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 March 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 13, 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 Rules, paragraph 7.
By email dated April 26, 2018, the Complainant requested leave to file a further amended Complaint in light of the Complainant’s discovery (after the appointment of the Panel) that at least one of the disputed domain names now resolved to a website at the third disputed domain name. After reviewing the request and the reasons, the Panel issued Panel Administrative Order No. 1 on April 30, 2018 directing the Center to send a verification request to the Registrar of the third disputed domain name.
On May 2, 2018, the second Registrar provided its verification response confirming:
(a) it was the Registrar for the third disputed domain name;
(b) Chinese is the language of the registration agreement;
(c) the contact details of Chen WenTing (the “Third Respondent”); and
(d) the third disputed domain name was registered by the Third Respondent on March 14, 2018.
On May 4, 2018, the Panel issued Panel Administrative Order No. 2 directing the Complainant to file a further amended Complainant which, amongst other things, addressed the basis on which the Complainant sought consolidation of the disputes in respect of all three disputed domain name including the appropriate language of the proceeding.
Following receipt of the Complainant’s further amended Complaint pursuant to Panel Administrative Order No. 2, the Panel issued Panel Administrative Order No. 3 on May 23, 2018 directing the Respondents to file any Responses by June 5, 2018.
No Responses were received.
4. Factual Background
The First Complainant is internationally-known famous footwear and fashion designer. According to the Complaint,1 the First Complainant owns the shares in the second and third Complainants. He also owns some of the trademarks on which the Complainants rely in this proceeding.
The Third Complainant owns the, or some of the, trademarks on which the Complainants rely in this proceeding.
The Second Complainant is the corporate vehicle which manufactures, distributes and sells the designs of the First Complainant under a licence of trademarks from the First and/or the Third Complainant.
One of the First Complainant’s designs is the Hangisi shoe which the Complainants contend achieved particular notoriety after being featured as the engagement present of one of the lead characters, Carrie Bradshaw, in the film Sex and the City: The Movie. The Complainants’ products also feature regularly in leading fashion magazines and have been pictured being worn by a number of “high profile celebrity owners”.
The Complainants’ trademark registrations include:
(a) European Union trade mark registration No. 2754166, BLAHNIK, for a range of goods and services in International Classes 3, 18 and 35 registered on September 19, 2003;
(b) European Union trade mark registration No. 2773547, MANOLO, for a range of goods and services in International Classes 18, 25 and 35 registered on August 23, 2005;
(c) European Union trade mark registration No. 005310685, MANOLO BLAHNIK, for a range of goods and services in International Classes 3, 4, 9, 14, 16, 18, 21, 25, 27, 30, 35 registered on October 8, 2007;
(d) United States trademark registration No. 3373422, MANOLO BLAHNIK, for a range of goods and services in International Classes 18, 25 and 35, filed on December 14, 2004 and registered on January 22, 2008;
(e) Chinese trademark registrations No. 14107998 to 14108008, MANOLO BLAHNIK, for a range of goods and services in International Classes 3, 14, 16, 18, 20, 24, 27, 35 and 42. These were filed on March 4, 2014 and are registered except the application in class 25, which is still pending.
The Complainants market their products through a number of websites including “www.manoloblahnik.com” to which the other domain names resolve. This domain name was registered in 1998 and has been active since at least 2008.
As noted above:
(a) the first disputed domain name was registered on April 11, 2017;
(b) the second disputed domain name was registered on August 28, 2017; and
(c) the third disputed domain name was registered on March 14, 2018 (some three weeks after the Complaint was filed and five days after the Center notified the Complaint to the first and second Respondents).
When the Complaint was filed, the first disputed domain name redirected to the website to which the second disputed domain name resolved. That website offered for sale a range of shoes, said to be Manolo Blahnik shoes. The prices of the shoes being offered was significantly cheaper than the price available through the Complainants’ website. For example, the Hangisi shoe was offered for sale on the website which the second disputed domain name resolved to at USD 235 compared to USD 995 on the Complainants’ website. On the “About us” page, there was substantial text in English, the opening paragraphs of which read:
“Welcome to the official Manolo Blahnik sale online store.
manoloblahnikoutlet.com is an official Manolo Blahnik outlet store online, authorized by Manolo Blahnik International Limited, all the products are 100% authentic and all with original invoices and packages.”
At some point after the Complaint was filed, at least the second disputed domain name began redirecting to the website which the third disputed domain name resolved to.2 That website also offers for sale the Complainants’ shoes in English and with pricing in USD. It appears to be the same, or essentially the same, as the website to which the first and second disputed domain names resolved when the Complaint was originally filed. Even to the extent that the “About us” page has the same text as formerly on the website to which the second disputed domain name resolved including the text extracted above. The product pricing is the same.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of its 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.
No response has been filed. The Complaint has been sent, however, to each Respondent at the electronic coordinates confirmed as correct by the respective Registrars in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly provided to each Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Before considering the substantive issues, however, it is necessary to resolve the Complainants’ request for joinder of the Complaints against the different Respondents and the issue of the language of the proceeding.
A. Consolidation of complaints
The Complainant has requested consolidation of its Complaints as the disputed domain names have been registered in the names of a number of different entities.
Paragraph 3(c) of the Rules expressly permits a complaint to relate to more than one domain name where all the domain names are registered by the same domain name holder. Notwithstanding this express provision, UDRP panels have frequently held that the Panel’s powers under paragraph 10(e) of the Rules may permit consolidation of multiple domain name disputes, subject to satisfaction of the other requirements of the Policy and Rules. In particular, paragraph 10(b) of the Rules requires the Panel to ensure that all parties are treated equally and each is given a fair opportunity to present his, her or its case.
In accordance with those requirements, UDRP panels have typically allowed joinder against multiple respondents who have registered different domain names where, amongst other things, the domain names in question, or the websites to which they resolve, appear to be under common control and consolidation would be fair and equitable to all parties. The onus of establishing that these requirements have been met falls on the party seeking consolidation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.
In the present case, the Panel notes that each Respondent is located on a different continent in different countries. However, each of the disputed domain names is formed around the sign “Manolo Blahnik”. Each disputed domain name resolves to, or in the case of the first disputed domain name has resolved to, an active website offering for sale what purport to be the Complainants’ products. As discussed above, the content including imagery, arrangement and pricing on the website which the first two disputed domain names resolved to when the Complaint was originally filed appears to be the same content as the website to which (at least) the second and third disputed domain names resolve now. This includes the text on the “About us” page. Moreover, the text on the “About us” page in all versions refers just to <manoloblahnik-outlet.com> in all versions and regardless of which disputed domain name is being used.
In these circumstances, it appears that the three disputed domain names are being operated under common control or by people co-operating together. Subject to the question of the language of proceedings discussed below, it appears to the Panel to be fair and equitable to all Parties, and an efficient use of resources, to consolidate all of the disputed domain names in the one Complaint. It would be particularly inappropriate for separate proceedings with an attendant risk of inconsistent decisions being reached.
B. Language of the proceeding
The default language of a proceeding unless the parties agree otherwise or there is some other good reason is the language of the registration agreement for the disputed domain name: see paragraph 11 of the Rules and WIPO Overview 3.0, section 4.5.
The language of the registration agreements for the first and second disputed domain names is English. However, the Registrar of the third disputed domain name has confirmed that the language of the registration agreement for that disputed domain name is Chinese.
As discussed above, the website to which the third disputed domain name resolves offers for sale what purport to be the Complainants’ products in English and in USD pricing. There are options for other currencies: CAD, EUR and GBP. English is of course the or an official language of both the United Kingdom and Canada. Although “English” as the language option is presented as if it were a “drop down box” on the website, there are no other options. As noted, the About Us page presents the website as the official online store of the Complainants in English.
In these circumstances, the operator of the website is plainly offering to deal with potential customers in English. The Third Respondent has not challenged the Complainants’ arguments that proceeding in English is appropriate.
Accordingly, having regard to the factors identified in WIPO Overview 3.0 at section 4.5.1 as applied in this case, the Panel considers that English can be used as the language of the proceeding.
C. Identical or Confusingly Similar
The first element that the Complainants must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainants’ trademark rights.
There are two parts to this inquiry: the Complainants must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainants have proven ownership of at least the registered trademarks referred to in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system: WIPO Overview 3.0, section 1.7. 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.
The disputed domain names differ from the Complainants’ trademarks for MANOLO BLAHNIK by the addition of the gTLD “.com” and the addition of descriptive elements such as “outlet” and “onlineoutlet”, with or without additional hyphens.
These differences do not affect the assessment. The Complainants’ trademark is plainly recognisable within each disputed domain name. Accordingly, the Panel finds that the Complainants have established that the disputed domain name is confusingly similar to the Complainants’ trademarks and the requirement under the first limb of the Policy is satisfied.
D. Rights or Legitimate Interests
The second requirement the Complainants must prove is that each Respondent has no rights or legitimate interests in her or his 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 Complainants. UDRP 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. See, e.g., section 2.1 of the WIPO Overview 3.0.
The disputed domain names are plainly not derived from any of the Respondents’ names. Given the registrations achieved by the Complainants in each of the Respondent’s countries, it is unlikely that any of them would have any trademarks based on MANOLO BLAHNIK for the goods they are offering.
The Complainants state that they have not authorised any of the Respondents to use the disputed domain names. None of the Respondents is licensed by or affiliated with the Complainants.
It is not possible to tell from the websites whether the Respondents are offering genuine MANOLO BLAHNIK products for sale. Even if they were, however, the representation that the website is an official online presence of the Complainant is quite misleading. Accordingly, the usage would fail an important requirement that the relationship with the Complainants be clearly and prominently disclosed for use by a reseller to be in good faith under the Policy.
Further, the Complainants say that attempts were made to make trap purchases from the Respondents’ websites, but the sales were declined. The prospective purchaser followed up with his bank which confirmed that no attempt had been made by the vendor to seek authorization of the payment. The Complainants contend therefore that the website is not actually offering any goods for sale, but may also be a credit card phishing site.
Even without relying on the Complainants’ phishing contention, the matters set out above demonstrate that the Respondents are not making an offering of goods or services in good faith under the Policy. The Complainants therefore have demonstrated a clear prima facie case that each Respondent has no rights or legitimate interests in the disputed domain names. None of the Respondents has sought to rebut that prima facie case. Accordingly, the Panel finds the Complainants have established the second requirement under the Policy also.
E. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainants must establish that the disputed domain names have been both registered and used in bad faith by the respective Respondents. 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.
As each disputed domain name has resolved to, or still resolves to, a website apparently offering for sale Manolo Blahnik brand shoes, there can be little doubt that the Respondents were well aware of the Complainants’ trademark. The name Manolo Blahnik has significance in relation to the products apparently being offered for sale from the Respondents’ website only because of its association with the Complainants, all the more so having regard to the length and extent of the Complainants’ use.
As the Respondents have been found not to have any rights or legitimate interests in using the disputed domain names apparently to offer for sale shoes, it follows that each Respondent has registered and is using his or her disputed domain name in bad faith under the Policy. That conclusion is reinforced in relation to the third disputed domain name by its registration shortly after the Complaint was originally filed to include the content from the website initially used by the first two disputed domain names. Those circumstances suggest that the registration was effected in some form of “cyber flight”.
Accordingly, the Complainants have established the third requirement 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 names, <manoloblahnik-outlet.com>, <manoloblahnik-outletonline.com> and <manoloblahnikonlineoutlet.com> be transferred to the Complainant, Manolo Blahnik International Limited.
Warwick A. Rothnie
Sole Panelist
Date: June 12, 2018
1 For ease of reference, the Panel will refer only to the Complaint encompassing thereby the further amended Complaint and the amended Complaint.
2 At the time this decision is being prepared, access to any website to which the first disputed domain name resolves is blocked “because the email address of the domain holder (Registrant) has not been verified.”