WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alice + Olivia, LLC v. Kailong Wen

Case No. D2012-1022

1. The Parties

Complainant is Alice + Olivia, LLC of New York, United States of America represented by Katten Muchin Rosenman LLP, United States of America.

Respondent is Kailong Wen of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <aliceandoliviashop.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2012. On May 15, 2012, the Center transmitted by email to Chengdu West Dimension Digital Technology Co., Ltd. a request for registrar verification in connection with the disputed domain name. On May 16, 2012, Chengdu West Dimension Digital Technology Co., Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On May 18, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of the proceeding. On May 18, 2012, Complainant confirmed its request that English be the language of the proceeding. Respondent did not submit its comments.

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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 14, 2012.

The Center appointed Yijun Tian as the sole panelist in this matter on June 21, 2012. 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

A. Complainant

Complainant, Alice + Olivia, LLC, is a company incorporated in New York, United States of America. It is a world famous designer, manufacturer and retailer of a wide range of apparel and accessories products.

Complainant has registered a number of national, Community and International trademarks reflecting the term “Alice+Olivia”, including international trademark registrations (e.g. in China since 2010), trademarks registration in the United States (since 2002), and Community trademark registrations (since 2010) (Exhibit E to the Complaint).

B. Respondent

Respondent, Kailong Wen of Beijing, China, registered the disputed domain name <aliceandoliviashop.com> on March 11, 2012, which is long after Complainant registered ALICE+OLIVIA mark in the United States (since 2002).

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name is identical or confusingly similar to trademarks or service marks in which Complainant has rights.

Long after Complainant’s adoption and first use of ALICE+OLIVIA mark and Complainant’s acquisition of distinctiveness and secondary meaning therein, Respondent registered the disputed domain name <aliceandoliviashop.com> on March 11, 2012, which is incorporated in its entirety Complainant’s ALICE+OLIVIA mark and combined such mark with the descriptive term “shop”.

Through the website located at the disputed domain name, Respondent offers for sale unauthorized products bearing the ALICE+OLIVIA mark. The website resolved at the disputed domain name depicts the ALICE+OLIVIA mark in the identical stylized format used by Complainant.

Confusion is particularly likely since the website contains express references Complainant, such as photographs of ALICE+OLIVIA branded products, which were copied from Complainant’s own website. This clearly indicates Respondent’s knowledge of Complainant’s mark and indicates Respondent’s bad faith.

Complainant sent a cease and desist letter to Respondent advising of Complainant’s rights in and to the ALICE+OLIVIA mark on April 23, 2012. Respondent never replied to Complainant’s letter (Exhibit F to the Complaint).

(b) Similarity of the disputed domain name to the ALICE AND OLIVIA mark.

The disputed domain name <aliceandoliviashop.com> is identical to and incorporates in its entirety Complainant’s ALICE+OLIVIA mark and Complainant’s <aliceandolivia.com> domain name.

It is well settled that the mere addition of a generic or descriptive term to a domain name neither excludes the likelihood of confusion nor does it detract from the dominant part of the domain name, in this case Complainant’s ALICE+OLIVIA mark. Further, it has been held that the suffix – in this case “.com” – does not influence the consideration of similarity.

Respondent’s registration and use of the disputed domain name was done solely for the purpose of taking advantage of Complainant’s famous ALICE + OLIVIA mark. The disupted domain name is confusingly similar to Complainant’s ALICE+OLIVIA mark and Complainant’s <aliceandolivia.com> domain name.

Respondent’s use of the disputed domain name, including references on each of the sites to Complainant’s ALICE+OLIVIA mark and related products, fosters confusion with consumers searching for information related to Complainant’s ALICE+OLIVIA mark.

(c) Respondent has no rights or legitimate interests in the disputed domain name.

Respondent has not made any demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services.

Respondent has merely use the disputed domain name in a deliberate attempt to intercept and siphon off, for Respondent’s own financial gain, Internet traffic intended for Complainant’s official goods and services.

Respondent has no agreements, legal or otherwise, with Complainant authorizing it to use the ALICE+OLIVIA mark. Respondent has not been personally identified, or commonly known, by names comprised, in whole or in part, of the mark ALICE + OLIVIA.

Respondent cannot show itself to be a reseller that is authorized by Complainant to use the disputed domain name to sell Complainant’s products.

Any and every use by Respondent of the ALICE+OLIVIA mark is unauthorized and constitutes an infringement of Complainant’s valid trademark rights.

(d) The disputed domain name was registered and is being used in bad faith.

Respondent registered the disputed domain name in bad faith with full knowledge of the famous ALICE+OLIVIA mark. Respondent has been placed on actual notice of the trademark rights by Complainant prior to Complainant instituting this administrative proceeding by virtue of the correspondence sent by Complainant to Respondent. (Exhibit F to the Complaint).

Respondent has also used the disputed domain name in bad faith. Respondent is actively using, and has at all time used, the website resolved at the disputed domain name to intentionally misdirect and attract for commercial gain Internet users searching for Complainant’s authorized goods and services by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location and of a product or service on Respondent’s website or location (Exhibit G to the Complaint).

The headings displayed at the top of Respondent’s sites prominently display Complainant’s ALICE+OLIVIA mark, and Respondent’s website features numerous photographs of Complainant’s official product which Respondent is not authorized to sell.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) All of the text and content on the website resolved at the disputed domain name is written in English, all product descriptions and shipping terms on the website are in English, and there is no language other than English used anywhere on the website (Exhibit G to the Complaint).

(b) All of the pricing information on the website at issue is written in English. Moreover, the website requires payment to be made with currency that is used in an English-speaking country, namely U.S. dollars.

(c) The website at issue is intended to target English-speaking consumers and trade off of Complainant’s famous ALICE+OLIVIA name and mark (which is written in English).

(d) The disputed domain name consists entirely of English words. Respondent is clearly familiar with the English language.

(e) It would be financially onerous to require Complainant to bear the burden and cost of having its Complaint transferred into Chinese; in particular, if no request for a change in language has been made by Respondent. Even if such a request is made by Respondent, it should be denied in view of the infringing manner in which Respondent has used the English language on the website at issue.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be 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).

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”) further states: “in certain situations, where Respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company incorporated in the United States, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain name includes English words “Alice”, “and”, “Olivia”, and “shop”. (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047; see also AB Electrolux v. zhutao, Ma Yun, WIPO Case No. D2011-1651).

On the record, Respondent appears to be Chinese individuals and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <aliceandoliviashop.com> is registered in Latin characters and particularly in English language, rather than Chinese script; (b) Respondent’s website at the disputed domain name appears entirely in the English language, and appears to have been directed to Internet users in worldwide (particularly English speakers) rather than Chinese speakers; (see Exhibit G to the Complaint); (c) based on information provided by Complainant, all of the pricing information on the website at issue is written in English, and the website requires payment to be made with currency that is used in an English-speaking country, namely U.S. dollars; (d) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; and (e) the Center informed Respondent that it would accept a response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the disputed domain name should be transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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 evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the ALICE+OLIVIA mark acquired through registration. The ALICE+OLIVIA mark has been registered worldwide including in the United States and China (see Exhibit E to the Complaint), and Complainant has a widespread reputation as a world famous designer, manufacturer and retailer of a wide range of apparel and accessories products.

The disputed domain name <aliceandoliviashop.com> comprises the ALICE + OLIVIA mark in its entirety. The disputed domain name only differs from Complainant’s trademark by replacing “+” with “and” and including the addition of the term “shop” to the mark ALICE+OLIVIA. This does not seem to eliminate the identity or at least the similarity between Complainant’s registered trademark and the disputed domain name.

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).

Mere replacement of “+” with “and” as well as addition of the suffix “shop” to Complainant’s mark fail to distinguish the disputed domain name and Complainant’s trademark. By contrast, it may increase the likelihood of confusion. “+” and “and” have similar meaning. The official website of Complainant is <aliceandolivia.com>. Consumers who visit the website at the disputed domain name are likely to be confused and may falsely believe that <aliceandoliviashop.com> is an online shop which is operated or authorized by Complainant for selling ALICE+ OLIVIA branded products (see ABB Asea Brown Boveri Ltd. v. A.B.B Transmission Engineering Co., Ltd., WIPO Case No. D2007-1466; Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768; See also Jurlique International Pty Ltd v. Domains by Proxy, Inc. / troy ho, WIPO Case No. D2011-1237).

Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the ALICE+OLIVIA mark.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has been commonly known by the disputed domain name; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has rights in the ALICE+OLIVIA mark internationally, including the ALICE+OLIVIA mark registration in the United States since 2002 and international registration covering China (see Exhibit E to the Complaint) which long precede Respondent’s registration of the disputed domain name (March 11, 2012).

According to Complainant, Complainant is a world famous designer, manufacturer and retailer of apparel and accessories products, and its products under the ALICE+OLIVIA mark enjoy substantial sales and are distributed throughout the world. Moreover, Respondent is not an authorized dealer of ALICE+OLIVIA branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the words “Alice and Olivia” in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the ALICE+OLIVIA mark or to apply for or use any domain name incorporating the ALICE+OLIVIA mark.

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name on March 11, 2012. The disputed domain name is identical or confusingly similar to Complainant’s ALICE+OLIVIA mark.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality offering for sale unauthorized products bearing the ALICE+OLIVIA mark through the website located at the disputed domain name. (Exhibit G to the Complaint).

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of 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 Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

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

(iii) 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, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.

The Panel concludes that the circumstances referred to in paragraph 4(b)(i)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the ALICE+OLIVIA mark with regard to its products. Complainant has registered its ALICE+OLIVIA mark internationally, including registration in the United States (since 2002) and international registration covering China.

Based on the information provided by Complainant, Complainant is a world famous designer, manufacturer and retailer of apparel and accessories products, and its products under the ALICE+OLIVIA marks enjoy substantial sales and are distributed throughout the world. It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name (in March 2012). The Panel therefore finds that the disputed domain name is not one that one could legitimately adopt other than for the purpose of creating an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of Respondent to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).”

Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s ALICE+OLIVIA mark.

b). Used in Bad Faith

Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” offering Complainant’s ALICE+OLIVIA branded products without authorization. Based on the information provided by Complainant, the website resolved at the disputed domain name depicts the ALICE+OLIVIA mark in the identical stylized format used by Complainant. Complainant claimed that Respondent’s use of the disputed domain name, including references on each of the sites to Complainant’s ALICE+OLIVIA mark and related products, fosters confusion with consumers searching for information related to Complainant’s ALICE+OLIVIA mark.

To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the ALICE+OLIVIA Mark, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved (see Exhibits E and G to the Complaint). In other words, Respondent has through the use of the confusingly similar disputed domain name and webpage contents (including photographs of ALICE+OLIVIA branded products, which were copied from Complainant’s own website, as well as the ALICE+OLIVIA mark in the identical stylized format used by Complainant) created a likelihood of confusion with the ALICE+OLIVIA mark. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential Internet users are led to believe that the website <aliceandoliviashop.com> is either Complainant’s sites or the sites of official authorized partners of Complainant, which is not. Moreover, Respondent has not responded to the Complaint. The Panel therefore concludes that the disputed domain name was used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use the disputed domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 <aliceandoliviashop.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: July 24, 2012