The Complainant is Liu.Jo S.p.A. of Carpi, Italy, represented by Studio Legale SIB, Italy.
The Respondent is Chang Qing Lu of Huaihua, Hunan, China.
The disputed domain names <liujoroma.com> and <soldesliujo.com> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2018. On January 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 23, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of both disputed domain names and providing the contact details.
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 of the Complaint, and the proceedings commenced on February 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2018.
The Center appointed Matthew Kennedy as the sole panelist in this matter on March 1, 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.
The Complainant is a fashion company that sells clothing and accessories through flagship stores and retail stores around the world. The Complainant is the owner of multiple trademark registrations, including European Union Trade Mark registrations numbers 000234351 and 000747923, both for a figurative mark consisting of the letters LIU and JO separated by a dot and written in capital block letters (the “LIU•JO trademark”). These trademarks were registered on August 17, 1999 and July 19, 1999 respectively, and specify goods in class 25 and classes 9, 18 and 19, respectively. They remain current. The Complainant has also registered domain names including <liujo.com> and <liujo.it> since 1997 that it uses in connection with official websites for its products.
The Respondent is an individual located in China. The disputed domain names were both registered on November 28, 2017. They formerly resolved to websites, one in Italian and one in French, that prominently displayed the Complainant’s LIU•JO trademark together with advertising images from the Complainant’s official website and offered for sale what were presented as the Complainant’s clothing, shoes and handbags. Prices were displayed in Euro. As at the date of this decision, the disputed domain names no longer resolve to any active website. On the same day that the Respondent registered the disputed domain names he also registered the domain name <diadorasoldes.com> which resolves to a website that offers for sale what are presented as DIADORA brand sneakers and clothing.
The disputed domain names are confusingly similar to the Complainant’s LIU•JO trademark. Their only additional elements are the generic Top-Level Domain (“gTLD”) suffix “.com” and the descriptive components “roma” and “soldes”. “Roma” refers to the capital city of Italy and can be perceived as a reference to the Italian origin of the Complainant’s brand. “Soldes” means “sales” in French. Consequently, the addition of these components is not sufficient to differentiate the disputed domain names from the Complainant’s LIU•JO trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not affiliated in any way with the Complainant; a search shows that the Respondent does not own any trademark applications or registrations for “liujoroma” or “soldesliujo”; the Complainant has not licensed or otherwise authorized the Respondent to use its LIU•JO trademark or to apply for any domain name incorporating such mark. The Respondent is not commonly known by the disputed domain names and does not make any legitimate commercial use thereof. To the best of the Complainant’s knowledge, the goods offered for sale on the Respondent’s websites are counterfeit copies of the Complainant’s goods.
The disputed domain names were registered and are being used in bad faith. The Respondent uses the Complainant’s genuine product images with a view to offer for sale products which are most likely counterfeits with a clear intent for commercial gain. The Respondent’s bad faith is confirmed by the unauthorized use of the Complainant’s official advertising images and logos, with the aim to pass himself off as the trademark owner, confusing potential customers about the origin of the purchased items. Since the disputed domain names were created only a few months ago, it is obvious that the Respondent registered them with a view to take unfair advantage of the reputation of the Complainant’s LIU•JO trademark. The Respondent’s registration of the disputed domain names may obviously confuse potential customers as to the Respondent’s affiliation with the Complainant
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(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.
Based on the evidence submitted, the Panel finds that the Complainant has rights in the LIU•JO trademark.
The disputed domain name incorporates all the letters in the LIU•JO trademark but omits the figurative elements. Given that the figurative elements are not reproducible in a domain name, these elements need not be considered for the purposes of assessing confusing similarity for the first element of the Policy. See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031.
The disputed domain name <liujoroma.com> contains the additional element “roma”, which means “Rome” in Italian. As a mere geographical term, that element is not capable of dispelling confusing similarity between a domain name and a trademark. See Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768.
The disputed domain name <soldesliujo.com> contains the additional element “soldes”, which means “sales” in French. As a mere dictionary word, that element is not capable of dispelling confusing similarity between a domain name and a trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110.
Both disputed domain names also contain the gTLD suffix “.com”. TLD suffixes may generally be disregarded in the comparison between domain names and trademarks for the purposes of the Policy.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(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.
As regards the first circumstance, the disputed domain names are confusingly similar to the Complainant’s trademark and were being used with websites that offered for sale what were presented as the Complainant’s products. The Complainant states that the Respondent is not affiliated in any way with the Complainant but the websites failed to disclose the Respondent’s lack of any relationship to the Complainant. Whether or not the products were counterfeit, these facts show that the Respondent’s use of the disputed domain names was not in connection with a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. As at the date of this decision, the disputed domain names no longer resolve to any active website. Accordingly, the Panel does not find that the Respondent’s use falls within the first circumstance of paragraph 4(c) of the Policy.
As regards the second circumstance, the Registrar’s WhoIs database indicates that the Respondent’s name is “Chang Qing Lu”. There is no evidence indicating that the Respondent has been commonly known by either of the disputed domain names as envisaged by the second circumstance of paragraph 4(c) of the Policy.
As regards the third circumstance, the disputed domain names resolved to websites that offered clothing, shoes and handbags for commercial sale. That was not a legitimate noncommercial or fair use of the disputed domain names. As at the date of this decision, the disputed domain names no longer resolve to any active website. Accordingly, the Panel does not find that the Respondent’s use falls within the third circumstance of paragraph 4(c) of the Policy.
In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent did not rebut that prima facie case because he did not respond to the Complainant’s contentions.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(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 Respondent registered the disputed domain names in 2017, many years after the Complainant obtained its trademark registrations. The disputed domain names incorporate all the non-figurative elements of the Complainant’s LIU•JO trademark, adding only a geographical term or dictionary word, plus a gTLD suffix. The websites to which the disputed domain names resolved prominently displayed the Complainant’s LIU•JO trademark with advertising images from the Complainant’s official website and offered for sale what were presented as the Complainant’s clothing, shoes and handbags. This indicates to the Panel that the Respondent intentionally chose to register the Complainant’s trademark as part of the disputed domain names in bad faith.
The Respondent used the disputed domain names, which incorporate all the non-figurative elements of the Complainant’s trademark, with websites that prominently displayed the Complainant’s LIU•JO trademark and advertising images from the Complainant’s official website and offered for sale what were presented as the Complainant’s products. The Respondent is not affiliated in any way with the Complainant but this was not disclosed on the websites to which the disputed domain names resolved. This all gave the impression that the websites were approved by, or affiliated with, the Complainant. Given these facts, the Panel considers that the Respondent’s use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of the products on those websites.
The Panel notes that the disputed domain names no longer resolve to any active website as at the date of this decision. The Panel does not consider that this fact alters its conclusion; rather, the recent change of use may constitute further evidence of bad faith.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
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 <liujoroma.com> and <soldesliujo.com> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: March 5, 2018