DECISION

 

Skorpio Limited v. Louise Daniels / zhangqiang

Claim Number: FA2311002072534

 

PARTIES

Complainant is Skorpio Limited ("Complainant"), represented by David Yeomans of Keltie LLP, United Kingdom. Respondent is Louise Daniels / zhangqiang ("Respondent"), Germany.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <rickowensstockholm.com.se> ("Domain Name"), registered with Paknic (Private) Limited.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated.

 

Complainant submitted a Complaint to Forum electronically on November 28, 2023; Forum received payment on November 30, 2023.

 

On November 28, 2023, Paknic (Private) Limited confirmed by e-mail to Forum that the <rickowensstockholm.com.se> domain name is registered with Paknic (Private) Limited and that Respondent is the current registrant of the name. Paknic (Private) Limited has verified that Respondent is bound by the Paknic (Private) Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the "CDRP Policy" or "Policy").

 

On November 30, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 2023 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@rickowensstockholm.com.se. Also on November 30, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On December 21, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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 CDRP Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is the IP holding company for clothing designer Rick Owens. Complainant asserts rights in the RICK OWENS mark based upon registration in numerous jurisdictions including with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 3,828,467, registered August 3, 2010). The <rickowensstockholm.com.se> domain name is identical or confusingly similar to Complainant's mark because the Domain Name includes the entirety of the RICK OWENS mark with the addition of the geographic term "stockholm" as well as the addition of the country code top level domain ("ccTLD") ".se" and the generic top-level domain ("gTLD") ".com".

 

Respondent does not have rights or legitimate interests in the <rickowensstockholm.com.se> domain name. Respondent is not licensed or authorized to use Complainant's RICK OWENS mark and is not commonly known by the Domain Name. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent is diverting Internet users to a website that passes off as an official website of the Complainant in order to sell competing goods.

 

Respondent registered or uses the <rickowensstockholm.com.se> domain name in bad faith. Respondent is creating a likelihood of confusion with the Complainant's mark to mislead consumers into thinking that its website (which offers competing goods) is an official website of the Complainant, thus disrupting Complainant's business. Additionally, Respondent had actual knowledge of Complainant's rights in the RICK OWENS mark at the time of registering the Domain Name given that Respondent's website reproduces Complainant's logo as well as copyrighted material  from the Complainant's website at <www.rickowens.eu> (indeed the website is almost an exact copy).

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the RICK OWENS mark.  The Domain Name is confusingly similar to Complainant's RICK OWENS mark.  Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these 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.

 

The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.

        

Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments.  See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant has rights in the RICK OWENS mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g., Reg. No. 3,828,467, registered August 3, 2010). Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i).  See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).

 

The Panel finds that the <rickowensstockholm.com.se> domain name is confusingly similar to Complainant's RICK OWENS mark because it wholly incorporates Complainant's RICK OWENS mark and adds the geographic term "stockholm" and the ".com.se" top-level Domain ("TLD").    Addition of a geographic term and a TLD does not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i).  See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as "[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).") 

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) ("Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names."). The Panel holds that Complainant has made out a prima facie case.

        

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the RICK OWENS mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  The WHOIS lists "Louise Daniels / zhangqiang" as registrant of record.  Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).

 

The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to a website which, through the reproduction of the RICK OWENS mark, Complainant's logo and copyrighted material from Complainant's official website at <www.rickowens.eu>, passed itself off as an official website of the Complainant for the purpose of advertising goods for sale, in direct competition with Complainant's merchandise. The use of a confusingly similar domain name to resolve to a webpage that offers goods or services that compete with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant.  See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain's resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use).  See also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that "use of a domain to sell products and/or services that compete directly with a complainant's business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).").  See also Am. Int'l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant's mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration or Use in Bad Faith

The Panel finds that, at the time of registration of the Domain Name, June 27, 2023, Respondent had actual knowledge of Complainant's RICK OWENS mark since the website to which the Domain Name resolved passed itself off as an official website of the Complainant including making repeated references to Complainant and its RICK OWENS mark. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register a domain name incorporating to the RICK OWENS mark and use it to redirect visitors to a website offering clothing in direct competition with the Complainant under the RICK OWENS mark other than to take advantage of Complainant's reputation in the RICK OWENS mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant's RICK OWENS for commercial gain by using the identical Domain Name to resolve to a website that passes off as an official website of the Complainant, including by reproducing Complainant's copyrighted material, and offers goods in direct competition with goods offered by Complainant.  Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (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)."). See also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.").

 

 The Panel while noting that the Policy only requires that a complainant show that a respondent registered or used a domain name at issue in bad faith, finds that the Respondent has registered and used the Domain Name in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <rickowensstockholm.com.se> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: December 21, 2023