Skorpio Ltd. v. Li Huaiqing

WIPO Case No. D2022-0538

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Skorpio Limited v. 李怀青

Case No. D2022-0538

1. The Parties

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

The Respondent is 李怀青, China.

2. The Domain Name and Registrar

The disputed domain name <therickowensshop.com> is registered with Name.com, Inc. (Name.com LLC)

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2022. On February 17, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 18, 2022, 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 February 21, 2022. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2022.

The Center appointed Edoardo Fano as the sole panelist in this matter on March 21, 2022. 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 Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers, or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

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Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to the Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules, and the Supplemental Rules and without the benefit of a response from the Respondent.

The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is Skorpio Limited, a Swiss company that manages the intellectual property rights of the American fashion designer Rick Owens, owning several trademark registrations for RICK OWENS, among which:

- European Union Trade Mark Registration No. 008209736 for RICK OWENS, registered on November 2,

2009;

- United States of America Trademark Registration No. 3828467 for RICK OWENS, registered on August 3,

2010; and

- Chinese Trademark Registration No. 6162781 for RICK OWENS in stylized form, registered on August 7,

2014.

The Complainant provided evidence in support of the above.

According to the WhoIs records, the disputed domain name was registered on December 7, 2021, and it
resolves to a website where the Complainant’s trademark in stylized form is reproduced and the

Complainant’s products are offered for sale. According to the Complainant, these products are counterfeits.

5. Parties’ Contentions
A. Complainant

The Complainant states that the disputed domain name <therickowensshop.com> is confusingly similar to its trademark RICK OWENS, as the disputed domain name wholly contains the Complainant’s trademark with the addition of the terms “the” and “shop”.

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, it is not commonly known by the disputed

domain name and it is not making either a bona fide offering of goods or services or a legitimate
noncommercial or fair use of the disputed domain name.

The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark RICK OWENS is distinctive and internationally known in the fashion field. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name and the Complainant contends that the use of the disputed domain name with the purpose of selling counterfeits goods by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, qualifies as bad faith registration and use.

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B. Respondent

The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.

A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable
facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with
paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc., WIPO Case
No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International
PLC v. Mark Freeman, WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et.
al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit

Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

(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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of the trademark RICK OWENS both by registration and acquired reputation and that the disputed domain name <therickowensshop.com> is confusingly similar to the trademark RICK OWENS.

Regarding the addition of the terms “the” and “shop”, the Panel notes that it is now well established that the addition of terms or letters to a domain name does not prevent a finding of confusing similarity between the disputed domain name and the trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland

GmbH v. Jonathan ValicentiD2005-0037Red Bull GmbH v. Chai LarbthanasubWIPO Overview 3.0”), section 1.8.
, WIPO Case No. ; , WIPO of the terms “the” and “shop” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“

It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, is ignored when assessing the similarity between a trademark and a domain name. See WIPO Overview 3.0, section 1.11.1.

The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondent has failed to file a response in accordance with the Rules, paragraph 5.

prima facie

The Complainant in its Complaint, and as set out above, has established a case that the domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods

Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the

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or services, but instead in the website at the disputed domain name counterfeits goods bearing the
Complainant’s trademark are offered for sale.

The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.

Should the Complainant’s products sold on the website to which the disputed domain name is redirecting
Internet users be genuine products, legitimately acquired by the Respondent, the question that would arise is
whether the Respondent would therefore have a legitimate interest in using the disputed domain name that
is confusingly similar to the Complainant’s trademark in circumstances that are likely to give rise to

confusion.

According to the current state of UDRP decisions in relation to the issue of resellers as summarized in the

WIPO Overview 3.0, section 2.8.1:

“[...] resellers, distributors, or service providers using a domain name containing the complainant’s conditions of a UDRP case:

trademark to undertake sales or repairs related to the complainant’s goods or services may be making
a bona fide offering of goods and services and thus have a legitimate interest in such domain name.

(i)        the respondent must actually be offering the goods or services at issue;

(ii)       the respondent must use the site to sell only the trademarked goods or services;

(iii)      the site must accurately and prominently disclose the registrant’s relationship with the trademark

holder; and

(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.”

This summary is based on the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case
No. D2001-0903.

On the other hand, should the products offered for sale on the website to which the disputed domain name is redirecting Internet users be counterfeit products, as declared by the Complainant, that would be clear evidence that the Respondent does not have any rights or legitimate interests in the disputed domain name.

In the present case, the Panel is reluctant to accept the unsupported allegation of counterfeiting asserted by the Complainant as based only on mere conclusory statements.

According to the UDRP panel decisions in relation to the issue of a respondent default and a complainant’s unsupported allegations as summarized in the WIPO Overview 3.0, section 4.3:

“Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. In cases involving

wholly unsupported and conclusory allegations advanced by the complainant, or where a good faith
defense is apparent (e.g., from the content of the website to which a disputed domain name resolves),
panels may find that – despite a respondent’s default – a complainant has failed to prove its case.”

Therefore, the Panel considers that the Complainant’s claim that the goods sold on the website to which the disputed domain name is redirecting Internet users are counterfeited is not adequately supported, since it is not proved in any way in the Complaint.

Nevertheless, the Panel does not consider necessary to invite the Complainant to file supplemental submissions in order to prove the above, not only to keep the UDRP as simple and speedy as it should be,

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but also for the following reasons.

Even if the products sold by the Respondent were the Complainant’s genuine products, from inspection of the Respondent’s website, the Panel finds that the use of the Complainant’s trademark in stylized form in the homepage and the lack of any disclaimer would falsely suggest to Internet users, under the Oki Data principles (see above), that the website to which the disputed domain name resolves is owned by the Complainant or at least affiliated to the Complainant.

The Panel therefore concludes that the disputed domain name is not being used in connection with a bona fide offering of goods or services.

Moreover, the Panel finds that the composition of the disputed domain names carries a risk of implied
affiliation as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See

WIPO Overview 3.0, section 2.5.1.

The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that “[…] for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the Respondent has] registered or has acquired the domain name for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the

(ii) that [the Respondent has] 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 [the

Respondent has] engaged in a pattern of such conduct; or

(iii) that [the Respondent has] registered the domain name primarily for the purpose of disrupting the

business of a competitor; or

(iv) that by using the domain name, [the Respondent has] intentionally attempted to attract, for
commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a
likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or
endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s]
website or location.”

Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark RICK OWENS in the fashion field is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain name, especially because the disputed domain name resolves to a website consisting of advertising for the sale of various purported Complainant products, in which the Complainant’s trademark in stylized form is reproduced.

The Panel further notes that the disputed domain name is also being used in bad faith since the Respondent is trying to attract Internet users to its website by creating likelihood of confusion with the Complainant’s trademark in order to sell products bearing the Complainant’s trademark, an activity clearly detrimental to the Complainant’s business.

The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order both to disrupt the Complainant’s business, in accordance with paragraph 4(b)(iii) of

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the Policy, and to attract, for commercial gain, Internet users to its website in accordance with
paragraph 4(b)(iv) of the Policy.

Furthermore, the Panel considers that the nature of the disputed domain name, which is almost identical to the Complainant’s trademark with the mere addition of the terms “the” and “shop”, further supports a finding of bad faith. See, WIPO Overview 3.0, section 3.2.1.

The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 name <therickowensshop.com> be transferred to the Complainant.

/Edoardo Fano/
Edoardo Fano
Sole Panelist
Date: March 31, 2022