Skorpio Limited v zhang qiang

WIPO Case No. D2024-2738

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Skorpio Limited v. zhang qiang

Case No. D2024-2738

1. The Parties

The Complainant is Skorpio Limited, Switzerland, represented by Keltie LLP, United Kingdom.

The Respondent is zhang qiang, China.

2. The Domain Names and Registrar

The disputed domain names <rickowensargentina.com>, <rickowensaustralia.com>,
<rickowensbelgium.com>, <rickowensbrasil.com>, <rickowenscz.com>, <rickowensdanmark.com>,
<rickowenseesti.com>, <rickowensgreece.com>, <rickowenshrvatska.com>, <rickowensireland.com>,
<rickowenskuwait.com>, <rickowenslithuania.com>, <rickowensnl.com>, <rickowensnorge.com>,
<rickowensperu.com>, <rickowensportugal.com>, <rickowensromania.com>, <rickowenssouthafrica.com>,
<rickowenssrbija.com>, and <rickowensuae.com> are registered with Paknic (Private) Limited (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2024. On July 5, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 5, 2024, 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.

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 of the Complaint, and the proceedings commenced on July 16, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2024.

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The Center appointed Federica Togo as the sole panelist in this matter on August 22, 2024. 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

It results from the Complainant’s undisputed allegations that it is a Swiss company that manages the intellectual property rights of American fashion designer Rick Owens. Rick Owens began his fashion designer career in Los Angeles, United States of America, in 1994 and moved his production to Italy, starting

worldwide distribution, in 2001.

The Complainant is the registered owner of many trademarks worldwide for RICK OWENS, in particular covering a broad range of goods in classes 3, 9, 14, 18, and 25.

All of the disputed domain names were registered on June 27, 2023. Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain names resolved to virtually identical websites allegedly selling the Complainant’s products and reproducing without authorization the Complainant’s

trademark and logo.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Notably, the Complainant contends that the disputed domain names are confusingly similar to the Complainant’s trademark since they contain its trademark RICK OWENS entirely. The additional elements present in the disputed domain names, being geographical names, do absolutely nothing to prevent the confusing similarity of the disputed domain names with the Complainant’s famous trademark, in fact, in each case the extra element merely reinforces the impression that the disputed domain names are connected with the Complainant.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names. According to the Complainant, it has not given its consent for the Respondent to use its registered trademarks or confusingly similar variations thereof in a domain name registration. To the best of the Complainant’s knowledge the Respondent is not commonly known as “Rick Owens,” it appears to be known as “zhang qiang.”

Finally, the Complainant contends that the disputed domain names were registered and are being used in bad faith. According to the Complainant, the Respondent must have been aware of the reputation of the Complainant's business under its RICK OWENS trademark at the time the Respondent registered the disputed domain names, by which point the Complainant already enjoyed tremendous international success. Therefore, the Complainant asserts that on the balance of probability the Respondent clearly registered the disputed domain names in bad faith. In addition, each disputed domain name resolves to a website displaying/advertising goods for sale using the Complainant’s registered trademarks. It is obvious that the websites at the disputed domain names are deliberately intended to exactly replicate the Complainant’s website. Finally, the Complainant points out that the Respondent has been found to have acted in bad faith in many recent UDRP decisions. It is therefore submitted that the Respondent is engaged in a pattern of bad faith behavior.

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B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

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 a complainant to prove each of the following three elements in order to obtain an order that each disputed domain name be transferred or cancelled:

(i) each 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 each disputed domain name; and

(iii) each disputed domain name has been registered and is being used in bad faith.

The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain names. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms (here, “ireland”, “southafrica”, “argentina”, “portugal”, “belgium”,
“romania”, “peru”, “australia”, “greece”, “brasil”, “kuwait”, “lithuania”, “nl” (Netherlands (Kingdom of the)),
“uae” (“United Arab Emirates”), “norge” (“Norway” in Norwegian), “hrvatska” (“Croatia” in Croatian),
“danmark” (“Denmark” in Danish), “cz” (Czech Republic), “eesti” (“Estonia” in Estonian), and “srbija” (“Serbia”
in Serbian) may bear on assessment of the second and third elements, the Panel finds the addition of such
terms does not prevent a finding of confusing similarity between the disputed domain names and the mark

for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with

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relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.

Moreover, the Panel notes that each disputed domain name contains the Complainant’s registered trademark and a geographic term/abbreviation. The nature of those disputed domain names carries a risk of implied affiliation: in fact, geographic terms are seen as tending to suggest sponsorship or endorsement by the trademark owner, see WIPO Overview 3.0 at section 2.5.1. Further, the Panel also notes that the websites at the disputed domain names do not display any accurate and prominent disclaimer regarding the lack of the relationship between the Complainant and the Respondent.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

One of these circumstances is that the Respondent by using the disputed domain names, has intentionally attempted to attract, for commercial gain, Internet users to its websites or other online locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its websites or online locations or of a product or service on its websites or online locations (paragraph 4(b)(iv) of the Policy).

In the present case, the Panel notes that it results from the Complainant’s evidence that the disputed domain names resolve to virtually identical websites displaying the Complainant’s trademark and logo, and purportedly offering for sale the Complainant’s products. For the Panel, it is therefore evident that the Respondent positively knew the Complainant’s mark. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain names included the Complainant’s trademark when it registered the disputed domain names.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

On this regard, the further circumstances surrounding the disputed domain names’ registration and use confirm the findings that the Respondent has registered and is using the disputed domain names in bad faith:

(i) the nature of each disputed domain name (incorporating the Complainant’s mark plus the addition of a

geographical term/abbreviation);

(ii) the content of the websites to which the disputed domain names direct, displaying the Complainant’s

trademark, logo, and purportedly offering for sale the Complainant’s products;

(iii) a clear absence of rights or legitimate interests coupled with no response for the Respondent’s choice of
the disputed domain names.

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Finally, the Respondent has been involved in a number of trademark-abusive domain name registrations (e.g., Aldo Group International GmbH v. Zhang Qiang, WIPO Case No. D2024-1311; Kybun Joya Retail AG v. Zhang Qiang, WIPO Case No. D2024-0824; R.C. Trademarks S.r.l., Giovanni Caldarelli, Essedi S.p.A. v. Zhang Qiang, WIPO Case No. D2024-0809; Frankie Shop LLC v. Zhang Qiang, WIPO Case No. D2024- 0776; 10Days Wholesale B.V. v. Zhang Qiang, WIPO Case No. D2024-0732; Peter Millar LLC v. Zhang Qiang, WIPO Case No. D2024-0644). In the view of the Panel, this behavior demonstrates a pattern of conduct by the Respondent of taking advantage of trademarks of third parties without any right to do so and is indicative of the Respondent’s bad faith. Previous UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration, see WIPO Overview 3.0, section 3.1.2. The Panel considers that this is the case here.

The Panel finds that the Complainant has established the third element of the Policy.

7. Decision

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 names <rickowensargentina.com>, <rickowensaustralia.com>,
<rickowensbelgium.com>, <rickowensbrasil.com>, <rickowenscz.com>, <rickowensdanmark.com>,
<rickowenseesti.com>, <rickowensgreece.com>, <rickowenshrvatska.com>, <rickowensireland.com>,
<rickowenskuwait.com>, <rickowenslithuania.com>, <rickowensnl.com>, <rickowensnorge.com>,
<rickowensperu.com>, <rickowensportugal.com>, <rickowensromania.com>, <rickowenssouthafrica.com>,

<rickowenssrbija.com>, and <rickowensuae.com> be transferred to the Complainant.

/Federica Togo/
Federica Togo
Sole Panelist
Date: September 4, 2024