WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Buscemi LLC v. Xinnet Whois Privacy Pro Service / Whois Agent, Whois Privacy Protection Service / Chen WenTing / Lao Yuan Dong / Sun Yanqi

Case No. D2018-1834

1. The Parties

The Complainant is BUSCEMI LLC of Los Angeles, California, United States of America (“USA”), represented by CSC Digital Brand Services AB, Sweden.

The Respondents are Xinnet Whois Privacy Pro Service of Beijing, China / Whois Agent, Whois Privacy Protection Service of Shanghai, China / Chen WenTing of Fuzhou, Fujian, China / Lao Yuan Dong of Kaiping, Guangdong, China / Sun Yanqi of Hangzhou, Zhejiang, China.

2. The Domain Names and Registrars

The disputed domain name <buscemi-online.com> is registered with Shanghai Meicheng Technology Information Development Co., Ltd.; the disputed domain name <buscemi-outlet.com> is registered with Xin Net Technology Corp.; the disputed domain name <buscemi-sale.com> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrars”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2018. On August 10, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On August 13, 2018 and August 14, 2018, the Registrars transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on August 22, 2018 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email to the Parties in English and Chinese regarding the language of the proceeding. The Complainant filed an amended Complaint and requested that English be the language of the proceeding on August 28, 2018. The Respondents did not comment on the language of the proceeding by the specified 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 Respondents in English and Chinese of the Complaint, and the proceedings commenced on August 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 21, 2018.

The Center appointed Sok Ling MOI as the sole panelist in this matter on September 26, 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, founded in 2013, is an USA-based luxury footwear and accessories brand for men, women and children. It sells its products in luxury retailers and speciality boutiques in many countries worldwide. The brand Buscemi shot to fame after a famous rapper mentioned it in one of his songs and a famous celebrity showed off his pair of handcrafted Buscemi sneakers on Instagram. Today, the brand Buscemi has a strong Internet presence through its primary website at “www.buscemi.com” and boasts of an elite clientele.

The Complainant is the proprietor of the following trade mark registrations for BUSCEMI:

The disputed domain names <buscemi-online.com>, <buscemi-outlet.com> and <buscemi-sale.com> were registered by the Respondents on March 10, 2018, December 16, 2017 and September 24, 2017 respectively. The disputed domain names resolve to websites which reproduced the Complainant’s BUSCEMI mark and logo, and purported to offer for sale the Complainant’s Buscemi footwear and accessory products.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain names are confusingly similar to its trade mark.

The Complainant contends that as the Complainant has not licensed or otherwise authorized the Respondents to use its trade mark, the Respondents’ use of the disputed domain names to publish websites purportedly offering for sale identical goods to those offered by the Complainant was for the purpose of trading on the Complainant’s goodwill for financial gain. The Complainant claims that the Respondents lack rights or legitimate interests in the disputed domain names.

The Complainant contends that the disputed domain names are used to create confusion and mislead Internet users into believing that the Respondents’ websites are authorised by the Complainant. The Complainant alleged that the goods offered for sale by the Respondents on their websites are counterfeits. The Complainant claims that the Respondents have registered and are using the disputed domain names in bad faith.

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

B. Respondent

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

6. Discussion and Findings

6.1 Consolidation of Respondents

The Complainant has submitted a request to have the Complaint filed against multiple domain names. According to paragraph 3(c) of the Rules, a complaint may relate to more than one domain name provided the domain names are registered by the same domain-name holder.

According to the WhoIs information, the disputed domain names <buscemi-online.com>, <buscemi‑outlet.com> and <buscemi-sale.com> are registered in the name of “Chen WenTing”, “Sun YanQi” and “Lao Yuan Dong” respectively. Although neither the Policy nor the Rules explicitly provides for the consolidation of multiple respondents, the issue has been considered by various prior UDRP panels. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.

In order to file a single complaint against multiple respondents, the complaint must typically meet the following criteria:

(i) the domain names or the websites to which they resolve are subject to common control; and

(ii) the consolidation would be fair and equitable to all parties.

In this regard, the Complainant cited the following reasons, inter alia, to support its allegation that the three disputed domain names are owned by the same individual or entity operating under different aliases, or at least subject to common control:

(a) both disputed domain names <buscemi-sale.com> and <buscemi-outlet.com> redirect to the website at “www.buscemioutlet.com”;

(b) the website to which the disputed domain name <buscemi-online.com> resolves and the website at “www.buscemioutlet.com” are nearly identical in terms of layout and textual contents;

(c) the shipping terms, payment terms and return policy stated on the websites of all three disputed domain names are nearly identical.

Given the commonalities in the websites to which the disputed domain names resolve, the Panel is satisfied, on a balance of probabilities, that all three disputed domain names are subject to common control. The Respondents have been given an opportunity to object to the Complainant’s request for consolidation, but did not do so.

In view of all the above, the Panel allows the Complainant’s request to consolidate the proceedings involving the three disputed domain names registered by the Respondents.

6.2 Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, 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.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.

The language of the Registration Agreements for the disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondents regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.

The Panel finds persuasive evidence in the present proceeding to suggest that the Respondents have sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain names are all registered in Latin characters, rather than Chinese script;

(b) the disputed domain names each comprises the Complainant’s trade mark BUSCEMI coupled with an additional English term, namely, “online”, "outlet” and “sale”; and

(c) according to the evidence submitted by the Complainant, the contents of the websites to which the disputed domain names resolve are entirely in English.

Additionally, the Panel notes that:

(a) the Center has notified the Respondents of the proceeding in both Chinese and English;

(b) the Respondents have been given the opportunity to present their case in this proceeding and to respond to the issue of the language of the proceeding but chose not to do so; and

(c) the Center has informed the Respondents that it would accept a Response in either English or Chinese.

Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to all Parties and is not prejudicial to any of the Parties in their ability to articulate the arguments for this case. The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.

In view of all the above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.

6.3 Substantive Finding

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

(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.

On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in BUSCEMI by virtue of its use and registration of the same as a trade mark.

Each of the disputed domain names incorporates the Complainant’s trade mark BUSCEMI in its entirety. The addition of the hyphen “-” together with an additional English term “online”, “outlet” or “sale” does not avoid the confusing similarity between the disputed domain names and the Complainant’s trade mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not impact the analysis of whether the disputed domain names are identical or confusingly similar to the Complainant’s trade mark in this case.

Consequently, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of proof to establish that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence in support of its rights or legitimate interests in the disputed domain name. The respondent may establish its rights in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it 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 has been commonly known by the disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd, WIPO Case No. D2013-0974.

The Complainant has confirmed that the Respondents are not in any way affiliated with the Complainant or otherwise authorized or licensed to use the BUSCEMI trade mark or to seek registration of any domain name incorporating the trade mark. There is also no evidence suggesting that the Respondents are commonly known by the disputed domain names or have acquired any trade mark rights in the term “buscemi”.

According to the evidence submitted by the Complainant, the Respondents were using the disputed domain names to publish nearly identical websites that appeared to pass themselves off as the Complainant’s websites. The said websites reproduced the Complainant’s BUSCEMI mark and logo, claiming to be the “official Buscemi products online sale store, authorized by Buscemi company, all the products are 100% authentic and all with original invoices and packages” in one, and offering for sale the Complainant’s products. This suggests that the Respondents are using the disputed domain names to mislead Internet visitors by creating an affiliation with the Complainant where there is none.

The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondents lack rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondents to come forward with evidence of their rights or legitimate interests in the disputed domain names. Since the Respondents have failed to respond, the Panel determines that the prima facie case has not been rebutted.

Consequently, the Panel finds that the Respondents lack rights or legitimate interests in the disputed domain names.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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.

The Complainant has used BUSCEMI as its trade mark since 2013, and enjoys a strong reputation amongst its target audience and a significant online presence. There is no doubt that the Respondents were aware of the Complainant’s trade mark when they registered the disputed domain names given that they have reproduced the Complainant’s BUSCEMI mark and logo, and were offering for sale the Complainant’s products on their websites. By adding the word “online”, “outlet” and “sale” respectively to the Complainant’s BUSCEMI trade mark in a domain name, the Respondents are seeking to create an impression that their websites are the Complainant’s official websites.

The Panel is satisfied that the Respondents’ purpose of registering the disputed domain names was to trade on the reputation of the Complainant and its trade mark by diverting Internet users seeking the Complainant’s branded products to their own websites for financial gain. Irrespective of whether the goods offered on the Respondents’ websites are in fact counterfeit, the reproduction of the Complainant’s trade marks on the Respondents’ websites without also displaying a clear disclaimer of a lack of relationship between the Respondents and the Complainant, is indicative of bad faith.

The Panel therefore determines that the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondents’ websites. As such, the Panel is satisfied that the Respondents are using the disputed domain names for mala fide purposes and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

Such use of the disputed domain names not only misleads the public but also causes disruption to the Complainant’s business. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iii) of the Policy are also applicable to the present case.

The Center was not able to reach the Respondents at the facsimile numbers recorded with the Registrar, which may suggest that the Respondents had provided false contact details at the time of registering the disputed domain names. The Panel notes that the Respondents had engaged privacy shield services for the purpose of registering the disputed domain names in order to conceal their identities, which further suggests a lack of bona fides.

The Respondents have not denied the Complainant’s allegations of bad faith. In view of the above finding that the Respondents do not have rights or legitimate interests in the disputed domain names, and taking into account all the circumstances, the Panel concludes that the Respondents have registered and are using the disputed domain names in bad faith.

Accordingly, the Complainants have satisfied the requirements of the third element under paragraph 4(a) 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 names, <buscemi-online.com>, <buscemi-outlet.com> and <buscemi‑sale.com> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: October 12, 2018