The Complainant is TWINSET S.p.A. of Carpi, Italy, represented by Jaumann sas di Paolo Jaumann & C, Italy.
The Respondent is Yu Ke Rong of Zhongshan, Guangdong, China.
The disputed domain name <twinset.ltd> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (“www.net.cn”) (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 2017, 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 November 22, 2017, the Center sent 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 November 23, 2017. The Respondent did not comment on the language of the proceeding.
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 November 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2017.
The Center appointed Matthew Kennedy as the sole panelist in this matter on January 5, 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 an Italian fashion company with more than 120 flagship stores around the world. The Complainant is the owner of multiple trademarks including international trademark registration number 1284077 for TWIN-SET, registered on December 9, 2015, designating multiple jurisdictions including China, and specifying bags and other goods in class 18 and clothing in class 25. The Complainant has also registered domain names including <twinset.com>, registered on June 19, 2001, and <twinset.cn>, registered on July 19, 2012 that it uses in connection with its official online store.
The Respondent is an individual located in China. The Respondent is the registrant of at least 81 domain names, many of which comprise well-known brands, particularly in the field of fashion. These include <rolexwatch.trade> and <calvin-klein.club>, as well as <escada.ltd>, <h-m.ltd> and <redvalentino.info> that were registered on or about the same date as the disputed domain name. A panel in a previous proceeding under the Policy found that the Respondent had registered and was using a domain name in bad faith: see Statoil ASA (“Statoil”) v. Yu Ke Rong, WIPO Case No. D2017-1255.
The disputed domain name was registered on June 2, 2017. It does not resolve to any active website but is passively held.
The disputed domain name is identical or confusingly similar to the Complainant’s TWIN-SET trademark. The disputed domain name incorporates that trademark in its entirety. The Top-Level Domain (“TLD”) suffix “.ltd” may be disregarded in the assessment of confusing similarity between the disputed domain name and the Complainant’s trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has never been commonly known by the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks or a variation thereof. The Respondent is not engaged in a bona fide offering of goods or services. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The Complainant registered trademarks including the words “Twin-Set” long before the disputed domain name: for example, it obtained international trademark registration number 758836 for TWIN-SET SIMONA BARBIERI in 2001. The Respondent has a history of registering domain names incorporating well-known marks. An Internet search for “twinset” reveals only references to the Complainant. The disputed domain name is identical to the Complainant’s trademark. The disputed domain name is currently inactive.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 11(a) of the Rules provides that “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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that: language requirements should not lead to undue burdens being placed on the Parties and undue delay to the proceeding; the disputed domain name is in Latin characters and includes the English TLD suffix “.ltd”; the Respondent is associated with many other domain names in English; and the Respondent did not object to the use of English as the language of an earlier proceeding under the Policy to which he was party.
The Respondent did not comment on the language of the proceeding.
The Panel notes that all email communications sent by the Center to the Parties have been in both Chinese and English. The Respondent was given an opportunity to object to the Complainant’s request that English be the language of the proceeding but the Respondent did not in fact object.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the Parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English. The Respondent has not expressed any wish to respond to the Complaint or otherwise participate in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.
The Respondent’s default does not lead automatically to a decision in favor of the Complainant. 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 TWIN-SET trademark.
The disputed domain name wholly incorporates the Complainant’s TWIN-SET trademark, but for the hyphen. The Panel does not consider that the omission of the hyphen, as mere punctuation between words, diminishes the confusing similarity between the disputed domain name and the trademark.
The disputed domain name also contains the TLD suffix “.ltd” but a TLD suffix may generally be disregarded in the assessment of confusing similarity between a domain name and a trademark for the purposes of the Policy. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.
Therefore, the Panel finds that the disputed domain name is 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.
The disputed domain name does not resolve to any active website and there is no evidence of any preparations to use it in connection with an active website. Accordingly, there is no evidence that the Respondent has rights or legitimate interests in the disputed domain name within the terms of the first or third circumstances of paragraph 4(c) of the Policy.
The Respondent’s name is “Yu Ke Rong”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
In summary, 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 name. The Respondent failed to rebut that case because he did not respond to the Complaint.
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 name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.
With respect to registration in bad faith, the Panel observes that the disputed domain name wholly incorporates the Complainant’s TWIN-SET trademark, but for the hyphen. The disputed domain name registration postdates the Complainant’s trademark registrations – including in China, where the Respondent is located. Although “twinset” is a somewhat uncommon dictionary word in English meaning a matching pullover and cardigan, there is no evidence that the Respondent chose to register the disputed domain name in connection with a purpose relating to its dictionary sense. On the contrary, the evidence shows that the Respondent has registered many other domain names that, like the disputed domain name, incorporate well-known trademarks, including some domain names registered on or about the same date as the disputed domain name. Therefore, the Panel considers it implausible that the similarity between the disputed domain name and the Complainant’s trademark is coincidental. The Respondent provides no explanation for the choice of the disputed domain name. In view of these circumstances, the Panel is persuaded that the disputed domain name was registered in bad faith.
With respect to use in bad faith, the Respondent makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, the Complainant has a reputation in its trademark due to its use in many countries in connection with fashion, including through the Complainant’s official online store. The Respondent has registered many other domain names that, like the disputed domain name, incorporate well-known trademarks, including for other fashion brands. In these circumstances, the Panel finds that the disputed domain name is being used in bad faith.
Therefore, the Panel finds that the disputed domain name has been registered and is 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 name <twinset.ltd> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: January 9, 2018