The Complainant is Mr. Ralph Anderl of Berlin, Germany, represented by Habermann, Hruschka & Schnabel, Germany.
The Respondent is Xian Sheng Luo, Luo Xian Sheng of Shenzhen, Guangdong, China.
The disputed domain name <icberlineyewear.com> (“the Domain Name”) is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2013. On April 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 7, 2013, 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 April 8, 2013, the Center transmitted by email to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant requested that English be the language of the proceeding. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2013.
The Center appointed Karen Fong as the sole panelist in this matter on May 14, 2013. 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 the owner or co-owner of the trade marks IC, IC!, IC! BERLIN IC!-BERLIN and the curved slit device mark (“Logo”). These trade marks are registered all over the world including China. The earliest trade mark registration filed in evidence dates back to 1997. The trade marks are licensed exclusively to the German company ic! Berlin brillen GmbH, a manufacturer of designer spectacles and sunglasses sold under the brand IC! BERLIN (“the Trade Mark”).
The Respondent is based in China and registered the Domain Name on March 26, 2013. At the time of the filing of the Complaint, the Domain Name was connected to a website offering for sale discounted ic! berlin eyewear (“the Website”). The Website bears the Trade Mark and Logo. The Website does not appear to be active now.
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the registration agreement is Chinese.
The Complainant submits in an email to the Center on April 8, 2013 that the language of the proceeding should be English since the Respondent is well acquainted with the English language. The Website is entirely in English; the currency options for purchase of the products on the Website are US Dollars, Australian Dollars, British Pounds, Canadian Dollars and Euros, therefore targeting English speaking markets and the word “eyewear” which describes the products is an English word. The owner of the Website is clearly conducting its business in English only. The Respondent did not comment on the language of the proceeding by the specified due date.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding and is satisfied that the Respondent appears to be familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Name is made up primarily of the Trade Mark without the exclamation mark after “ic”. The addition of the word “eyewear” which describes the products bearing the Trade Mark does nothing to minimise the risk of confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.com”. The Panel finds that the Domain Name is identical or confusingly similar to a Trade Mark in which the Complainant has rights.
The Complainant contends that the Respondent is not an authorize dealer of ic! berlin products. The Respondent is not known to the Complainant. Further, the prices for the spectacles offered for sale on the Website are lower than the retail price offered by the Complainant’s licensee which makes it likely that the products are counterfeit. There can be no legitimate interest in the sale of counterfeits (see Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552 and Farouk Systems, Inc v. QYM, WIPO Case No. D2009-1572).
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Trade Mark when it registered the Domain Name. The Complainant has provided sufficient evidence that the Domain Name registration post dates the registration of the Trade Mark. The very incorporation of the Trade Mark in the Domain Name and the display of the Trade Mark, Logo and counterfeit products on the Website confirm the Respondent’s awareness of the Trade Mark.
Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The products offered for sale on the Website appear to be counterfeit for reasons set out in paragraph 6.D. The use by a respondent of a domain name which includes a trade mark to resolve to a website which offers and sells counterfeit products under that trade mark is evidence of bad faith registration and use. (See Burberry Limited v. Jonathan Schefren, WIPO Case No. D2008-1546 and Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019).
In addition, the Website was set up to deliberately mislead Internet users that it is connected to, authorised by or affiliated to the Complainant. The Complainant’s Trade Mark and Logo appear on the Website, the products sold are counterfeit products bearing the Trade Mark and the Website also contain images and content taken from the Complainant licensee’s own website.
From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Website is and the products sold on it are those of or authorised or endorsed by the Complainant.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) 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 Domain Name <icberlineyewear.com> be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: June 3, 2013