Manolo Blahnik International Limited, Mr. Manolo Blahnik, and MB Foundation Limited v. chen chen
Claim Number: FA1807001796635
Complainant is Manolo Blahnik International Limited, Mr. Manolo Blahnik, and MB Foundation Limited (“Complainant”), represented by Christina M. Licursi of Wolf Greenfield & Sacks, P.C., Massachusetts, USA. Respondent is chen chen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <manoloblahnik.us>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on July 13, 2018; the Forum received payment on July 13, 2018.
On July 13, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <manoloblahnik.us> domain name (the “Domain Name”) is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 16, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of August 6, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@manoloblahnik.us. Also on July 16, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
Multiple Complainants
Three parties, Manolo Blahnik International Limited (“MBIL”), Mr. Manolo Blahnik, and MB Foundation Limited (“MBF”), filed this administrative proceeding as Complainants. The relevant rules governing multiple complainants are Rule 3(a) and the Forum’s Supplemental Rule 1(e). Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In this case, Complainant Manolo Blahnik is a co-director of and the designer for MBIL. See, Complaint Annex A. The Complaint alleges that he is also the owner of Complainant MBIL and the owner of Complainant MBF. According to the Complaint, Complainant MBIL manufactures, distributes and sells Manolo Blahnik designs and product, and it is also the owner of certain trademark registrations for the MANOLO, BALHNIK, and MANOLO BLAHNIK marks. The Complaint further states that Complainant MBIL is authorized to use and license trademarks owned by Mr. Blahnik. It is also the registrant organization for <manoloblahnik.com>, the primary web site for the Manolo Blahnik brand. See, Complaint Annex D.
Based upon the information in Complaint Annex A and the uncontested and undisputed allegations in the Complaint, the Panel is satisfied that there is a sufficient nexus between the named Complainants to enable each of them to claim rights in the Domain Name. It is both procedurally efficient and equitable to all parties for a single Complaint to be permitted by all three Complainants, and the Panel will treat them as a single entity for the purposes of this proceeding. All references to “Complainant” in this Decision, even though in the singular, are to all three named Complainants.
Complainant uses the MANOLO BLAHNIK mark to design and sell world famous footwear. It registered the MANOLO BLAHNIK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,373,422) on January 22, 2008. Respondent’s Domain Name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and merely adds a “.us” country code top-level domain (“ccTLD”) to the mark.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not permitted or licensed to use Complainant’s MANOLO BLAHNIK mark and is not commonly known by the Domain Name. Additionally, Respondent is not using the Domain Name to make a bona fide offering of goods or services or a legitimate non-commercial or fair use but instead is using it to sell counterfeit versions of Complainant’s products.
Respondent has registered and is using the Domain Name in bad faith. It intentionally attempts to attract, for commercial gain, users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and the links contained therein. Respondent disrupts the business of Complainant by selling poor quality counterfeit goods which it represents are Complainant’s, and its registration of the disputed domain name prevents Complainant from reflecting its MANOLO BLAHNIK mark in a corresponding “.us” ccTLD. Respondent had actual knowledge of Complainant and its marks when it registered the Domain Name.
The Panel makes the following findings with respect to the matters at issue herein.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel makes the findings set forth below with respect to the matters at issue herein.
Complainant alleges that it registered the MANOLO BLAHNIK mark with the USPTO (Reg. No. 3,373,422). Registration of a mark with a governmental agency has often been held to demonstrate rights in a mark for the purposes of Policy ¶ 4(a)(i). Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). For some reason, however, Complainant failed to submit a registration certificate or any other documentary evidence of its alleged USPTO registration, nor did it allege or prove the date of the registration. Nevertheless, in light of Respondent’s default the Panel may accept unsupported allegations in the Complaint as true, and, given the fact that the Complaint did allege a specific number for the USPTO registration, it appears that it did register the mark with the USPTO at some unstated time.
Also, a trademark registration is not necessary to support a claim of rights in a mark, and a complainant may base its claim upon common law trademark rights. Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Complainant did submit a WHOIS report showing that it registered its primary domain name <manoloblahnik.com> in 1998 (See, Complaint Annexes B and D), and a screenshot of an archived version of its web site under that domain as of October 2007 (See, Complaint Annex C). This evidence demonstrates that Complainant was using its MANOLO BLAHNIK mark in commerce at least as early as 2007, and this is sufficient to demonstrate its common law trademark rights in that mark. Based upon the uncontested allegation of USPTO registration and upon the evidence of common law trademark rights, the Panel concludes that Complainant has proven its rights in that mark for the purposes of Policy ¶ 4(a)(i).
Respondent’s Domain Name is identical to the MANOLO BLAHNIK as it incorporates that mark verbatim, altering it only by adding the “.us” ccTLD. The addition of a ccTLD to a mark is insufficient to distinguish a domain name from a mark for the purposes of Policy ¶ 4(a)(i). See Crocs, Inc. v. [Registrant], FA 1043196 (Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”).
Based upon the forgoing, the Panel finds that the Domain Name is confusingly identical or similar to the MANOLO BLAHNIK mark, in which Complainant has rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) you are the owner or beneficiary of a trade or service mark that is identical to the domain name,
(ii) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(iii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iv) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) it is not authorized or licensed by Complainant to use its mark, (ii), it is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because it is using it to sell counterfeit goods under Complainant’s mark, and (iii) it is not commonly known by the Domain Name. These allegations are supported by competent evidence.
According to information furnished to The Forum by the registrar of the Domain Name, the registrant is “chen chen.” This name bears no resemblance to the Domain Name. UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, Complainant submitted evidence that a search of the WIPO data base for chen chen yielded no results (See, Complaint Annex G), and evidence of a Google search that yielded results for a poet named chen chen but no results for Respondent (See, Complaint Annex H). It is evident, then, that Respondent is not commonly known by the Domain Name.
Complainant states that Respondent is not affiliated with it in any way, and that it has never authorized Respondent to use its MANOLO BLAHNIK mark in any domain name registration. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complaint Annex F contains screenshots of Complainant’s web site at <manoloblahnik.com> and Respondent’s web site. Complainant’s web site shows women’s shoes being offered for sale at prices ranging from $755.00 to $1,065.00. The screenshots of Respondent’s web site show women’s shoes somewhat similar in appearance being offered for prices ranging from approximately $220.00 to $250.00. Respondent’s web site clearly states that its shoes are genuine Manolo Blahnik products and the content of that site is clearly intended to deceive consumers into believing that this site is authorized by or affiliated with Complainant. The sale of counterfeit products has frequently been held not to qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of a disputed domain name within the meaning of Policy ¶ 4(c)(iii). Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence of Respondent’s use of the Domain Name discussed above in connection with the rights and legitimate interests analysis also supports a finding of bad faith use and registration. Respondent registered and is using the Domain Name to sell counterfeit goods, passing itself off as Complainant or an authorized representative thereof, and passing his goods off as those of Complainant. Respondent is in the business of selling women’s shoes, which is the same market in which Complainant operates. (See, Complaint Annex F) As such, Respondent is clearly a competitor of Complainant. There is no question that its diversion of business from Complainant to Respondent disrupts Complainant’s business, as do the customer relations issues it creates for Complainant by peddling substandard merchandise under Complainant’s mark. This conduct also amounts to attracting, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site. This conduct falls squarely within the circumstances articulated by Policy ¶¶ 4(b)(iii) and (iv). Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products.) Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Further, it is evident from Complainant’s world-wide standing in the fashion industry and the close similarity between Complainant’s mark and web site on the one hand and Respondent’s Domain Name and web site on the other that Respondent had actual knowledge of Complainant’s MANOLO BLAHNIK mark when it registered the Domain Name. Complainant failed to submit any documentation from the WHOIS record or any other source that would show the date it was registered, but the Complaint does allege that that date was June 15, 2017, and that allegation is not disputed or contested. In light of the open ended, non-exclusive nature of Policy ¶ 4(b), actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Finally, as noted by Complainant, Respondent’s registration of the Domain Name effectively prevents Complainant from reflecting its mark in a corresponding domain name using the usTLD. This is evidence of bad faith under Policy ¶ 4(b)(ii).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <manoloblahnik.us> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: August 10, 2018
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