WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valentino S.p.A. v. Wu Dong

Case No. D2018-0641

1. The Parties

The Complainant is Valentino S.p.A. of Milan, Italy, represented by Studio Barbero S.p.A, Italy.

The Respondent is Wu Dong of Fujian, China.

2. The Domain Names and Registrars

The disputed domain name <valentino-outlet.cc> is registered with Web Commerce Communications Limited dba WebNic.cc. The disputed domain name <valentinoreplica.org> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (collectively the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2018. On March 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 23, 2018, 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 March 27, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on March 27, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center verified that 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 in English and Chinese of the Complaint, and the proceedings commenced on April 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2018.

The Center appointed Jonathan Agmon as the sole panelist in this matter on May 9, 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.

4. Factual Background

The Complainant, Valentino S.p.A (“Valentino”), is a fashion house founded in 1960 by the fashion designer Valentino Garavani. The Complainant offers a wide range of luxury products, from Houte Couture and Prèt-à-Porter to an extensive accessories collection that includes bags, shoes, small leather goods, belts, eyewear, silks and perfumes. The complainant’s products are available in over 90 countries through a retail network of 160 Valentino directly-operated stores as well as in over 1,300 points of sale. Several of the Complainant’s stores are located in China, where the Respondent is prima facie based.

The Complainant is the owner of numerous trademark registrations for VALENTINO (word mark), including International Trademark Registration No. 570593, registered on April 24, 1991, in classes 3, 14, 18 and 25, also designating China; European Union Trademark Registration No. 001990407, filed on December 7, 2000, in classes 3, 9, 14, 16, 18, 19, 20, 21, 24, 25, 27, 34 and 35; and United States Trademark Registration No. 0910955, registered on April 6, 1971, in International Class 25.

The Complainant also owns over 500 domain names identical or comprising of the trademark VALENTINO. In addition, the Complainant maintains an active presence online through social media such as: Facebook, Twitter, Instagram, YouTube, Pinterest, etc.

The Complainant sent the Respondent a Cease and Desist letter regarding the disputed domain name <valentino-outlet.cc> on June 22, 2016. After receiving no reply, a reminder was sent on June 30, 2016. On October 20, 2016 another reminder was sent including a Cease and Desist demand regarding the disputed domain name <valentinoreplica.org>.

The disputed domain name <valentine-outlet.cc> was registered on January 26, 2016. The disputed domain name valentinoreplica.org> was registered on June 18, 2015. The disputed domain names resolve to English websites featuring the Complainant’s VALENTINO trademark and promoting the sale of purported VALENTINO products.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain names are confusingly similar to the Complainant’s famous and registered mark VALENTINO because they contain the Complainant’s mark in its entirety.

The Complainant argues that the Respondent started using the disputed domain names long after the Complainant began using its mark and did so due to the international reputation it has acquired in the mark VALENTINO, ROCKSTUD and VALENTINO GARAVANI.

The complainant argues that the trademark VALENTINO is also a well-known trademark worldwide. The Complainant bases this argument on its extensive wide spread commerce; a TIME Magazine publication stating VALENTINO as the second most widely owned luxury brand in China in 2007 (the prima facia residence of the Respondent); its substantial investment in advertising (which amounts to EUR 13,093,248 in 2013, of which EUR 1,540,652 was invested only in China).

The Complainant further argues that the Respondent uses the disputed domain names to offer counterfeit products and misleads Internet users to think that the origin of the products is with the Complainant. According to the Complaint, the Respondent apart from using the Complainants’ trademarks posts pictures taken from the Complainants advertising campaigns. Furthermore, the domain name <valentinoreplica.org> itself, suggests the products sold on the website are counterfeit by using the word “replica” in the domain name <valentinoreplica.org>.

The Complainant also argues that the Respondent is not known under the disputed domain name and is not authorized by the Complainant to use the disputed domain names, which are associated with the Complainant.

The Complainant further argues that the fame it has acquired in the VALENTINO marks makes it impossible for the Respondent to be associated with the disputed domain names.

The Complainant claims that the Respondent registered and used the disputed domain names in bad faith.

For all of the above reasons, the Complainant requests the transfer of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11 of the Rules provides that:

“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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.”

The language of the Registration Agreement for the disputed domain name <valentine-outlet.cc> is English, as confirmed by the Registrar in its verification email to the Center of March 23, 2018.

Therefore, English will be the language of the proceedings for the disputed domain name <valentine-outlet.cc>.

However, the language of the Registration Agreement for the disputed domain name <valentinoreplica.org> is Chinese, as confirmed by the Registrar in its verification email to the Center of March 23, 2018.

The Complainant requested that the language of the proceeding, for both domain names, be English.

The Respondent did not respond.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case regarding the domain name <valentinoreplica.org>, the following should be taken into consideration upon deciding on the language of the proceeding:

(i) The disputed domain name consists of Latin letters, rather than Chinese characters;

(ii) The Respondent used the English language in the website under the disputed domain name;

(iii) The Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language;

(iii) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.

Upon considering the above, the Panel determines that English be the language of the proceeding for both disputed domain names.

6.2. Consolidation of the disputed Domain Names

The Complainant moves for the consolidation of the disputed domain names in a single UDRP proceeding.

Paragraph 3(c) of the Rules, provides that “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” Paragraph 10(e) of the Rules, provides that “A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”.

According to the WhoIs information, the disputed domain names <valentino-outlet.cc> and <valentinoreplica.org> are registered in the name of Wu Dong of Fujian, China with slight differences in the address. The Complainant believes that the two registrants are in fact one of the same, thus meet the criteria set in paragraph 3(c) to the Rules consolidate the dispute.

It is well established that if common control or ownership of several domain names is found, a UDRP Panel may consolidate the proceedings over several disputed domain names. Such consolidation may be ordered when it is procedurally efficient and would not prejudice unfairly the rights of the parties. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 4.11.2; Speedo Holdings B.V v. Programmer, Miss Kathy Beckerson, John Smitt, Mattew Simmons WIPO Case No. D2010-0281; Apple Inc. v. Stanley Pace (a.k.a. Jordan Smith, Chris Carter, sunhei.org, Keith Besterson, Shahamat, Staci Michele and Courtney Culbertson) and Fundacion Private Whois, WIPO Case No. D2013-1313; Bayerische Motoren Werke AG v. MIKE LEE / WHOISGUARD PROTECTED, WHOISGUARD, INC., Yang Xiao, Xiao Yang, Ning Li, Li Ning, MIKE LEE, WIPO Case No. D2016-2268)).

Common control or ownership can be found in various circumstances which differ from case to case. It is a fact dependent inquiry and the finding thereof is subject to the discretion of the Panel. Ordinarily, Panels will look to the registration details provided by the registrants during the registration process and to the other circumstances of the case and determine if common control or ownership may be inferred. This case is no different. The WhoIs records show that the Respondent’s name, email address, and fax number are identical for both disputed domain names. Moreover, the telephone number in the WhoIs records of the disputed domain name <valentino-outlet.cc> is identical to the telephone number noted in the WhoIs records for the administrative and technical contact for the disputed domain name <valentinoreplica.org>. Both disputed domain names WhoIs records show postal addresses located in the province of Fujian, China; and the same Name Servers. In view of the common contact details in both WhoIs records for the disputed domain names, the Panel is satisfied that both disputed domain names are subject to common control or ownership.

The Panel therefore accepts the Complainant’s request to consolidate the proceedings involving both disputed domain names registered by the Respondent.

6.2. Substantive Issues

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademark registrations for the VALENTINO mark. The disputed domain name <valentino-outlet.cc> integrates the Complainant’s VALENTINO trademark in its entirety. The disputed domain name and the Complainant’s trademark differ in the addition of a hyphen “-” and the component “outlet” and the addition of the generic Top-Level Domain (“gTLD”) “.cc” .

The additional component “-outlet” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark. Previous UDRP panels have ruled that the mere addition of a generic element does not serve to avoid a finding of confusing similarity between the domain name and the registered trademark (see Valentino S.p.A. v. hong chen, chen hong, WIPO Case No. D2014-2129; Bottega Veneta International S.A.R.L. v. PrivacyProtect.org and henli, luo xiaojie, WIPO Case No. D2012-0715).

The disputed domain name <valentinoreplica.org> integrates the Complainant’s VALENTINO trademark in its entirety. The disputed domain name and the Complainant’s trademark differ in the addition of the component “replica” and the addition of the gTLD “.org”. The additional component “replica” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark (see Turlen Holding SA v. San Lintun, WIPO Case No. D2016-0730; Cartier International A.G. v. Chong James, buysellkey, WIPO Case No. D2015-0404).

The addition of the gTLD “.cc” or “.org” to the disputed domain names serves in this case as a technical element and does not avoid confusing similarity (see Moncler S.p.A. v. Ndiaye Therese and Ndiaye Therese, Newbeta, WIPO Case No. D2017-0346; Accor v. Noldc Inc. , WIPO Case No. D2005-0016;F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; L’Oréal v Tina Smith, WIPO Case No. 2013-0820; Titoni AG v Runxin Wang, WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877). Therefore, the gTLD “.cc” and “.org” iswithout significance in the present case since the use of a TLD is technically required to operate a domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to a trademark, in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names. WIPO Overview 3.0, section 2.1.

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard. In previous decisions, UDRP panels found that in the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed considering Respondent’s use of the disputed domain names(Groupe Auchan v. Gan Yu, WIPO Case No. D2013-0188; LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138). The Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services.

Notably, the goods offered for sale on the Respondent’s websites, while clearly unauthorized by the Complainant appear to be counterfeit of the Complainants’ products, seek to take unfair advantage of the Complainant’s trademarks and reputation (see among others: Prada S.A. v. Chen Mingjie, WIPO Case No. D2015-1466; Valentino S.p.A. v. Qiu Yufeng, Li Lianye, WIPO Case No. D2016-1747)

The Respondent has not submitted any Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain names sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainant registered its trademarks. According to the evidence filed by the Complainant, the Complainant has owned a registration for the VALENTINO trademark since the year 1964. In view of the evidence filed by the Complainant, and the widespread use of the VALENTINO trademarks, it is suggestive of the Respondent’s bad faith in these particular circumstances that the trademarks, owned by the Complainant, were registered long before the registration of the disputed domain name (see The Nasdaq Stock Market, Inc. v. H. Pouran, WIPO Case No. D2002-0770; Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

Furthermore, the disputed domain names include the Complainant’s trademark in its entirety with the terms “outlet” and “replica” correspondingly. The term “outlet” is generic and is likely to cause further confusion since it constitutes a reference to a potential discount store. Hence, Internet users could wrongly believe that the disputed domain name was registered by the Complainant to promote their products. In fact, it could suggest that the Respondent meant to link its’ own website to the fashion industry and be considered an attempt to lead to consumer confusion. The use of a component such as “replica” is likely to inform Internet users that the website under the disputed domain name is offering for sale counterfeit goods associated with the Complainant and is therefore insufficient to distinguish the disputed domain name from the Complainant’s trademark. As noted above, the disputed domain names and the Complainant’s trademark are confusingly similar. Previous Panels held that in such cases “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

The evidence provided by the Complainant shows that the disputed domain names resolved to websites, which create a false affiliation with the Complainant and targets the Complainant’s market in China, where the Complainant is present and well-known. The evidence shows that on the websites under the disputed domain names, the Respondent was operating websites showing the Complainant’s trademark to offer for sale goods similar to those the Complainant’s offers. The evidence also shows that the Respondent is using the disputed domain names to promote what appear to be the Complainant’s goods being offered when in fact, most likely the goods offered may be counterfeit. The use of the Complainant’s trademarks to promote and sell what appear to be counterfeit is evidence that the Respondent registered and is using the disputed domain names having knowledge of the Complainant and the Complainant’s trademarks and indicates that the Respondent’s primary intent with respect to the disputed domain names is to trade off the value of these.

Such actions by the Respondent constitute clear indications of bad faith registration and use of the disputed domain names (see Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the Complainant’s trademark registration amounts to bad faith”, and Sanofi-Aventis v. Billionaire Club, WIPO Case No. D2004-0805). The Panel also finds that the Respondent’s attempt to attract, for commercial gain, Internet users to its website with the intent to creating a likelihood of confusion with the Complainant’s trademarks and its affiliation with the Respondent’s website falls under paragraph 4(b)(iv) of the Policy.

The Respondent failed to reply to any of the cease and desist letters issued by the Complainant. The Respondent’s failure to express any denial or explanation despite the opportunity offered to him reinforces the inference of bad faith registration and bad faith use (see Sanofi-Aventis v. Above.com Domain Privacy/ Transure Enterprise Ltd, Host Master, WIPO Case No. D2009-1634).

Based on the evidence presented to the Panel, including the registration of the disputed domain names long after the registration of the Complainant’s marks, the confusing similarity between the disputed domain names and the Complainant’s mark and the Respondent’s use of the disputed domain name and the Complainant’s trademarks, including their designs, the Panel draws the inference that the disputed domain names were registered and are being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. 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 name <valentino-outlet.cc> and the disputed domain name <valentinoreplica.org> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: May 15, 2018