Administrative panel decision




Yüklə 41.64 Kb.
tarix29.02.2016
ölçüsü41.64 Kb.






ARBITRATION
AND
MEDIATION CENTER



ADMINISTRATIVE PANEL DECISION

Levi Strauss & Co. v. Private Registration, WhoisGuardService.com



Case No. D2014-1022

1. The Parties
The Complainant is Levi Strauss & Co. of San Francisco, California, United States of America (“U.S.”), represented by Kilpatrick Townsend & Stockton LLP, U.S.
The Respondent is Private Registration, WhoisGuardService.com of Nanjing, Jiangsu Province, China.

2. The Domain Name and Registrar
The disputed domain name is registered with Nanjing Imperiosus Technology Co. Ltd. (the “Registrar”).

3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2014. On June 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on June 24, 2014.
On June 20, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On June 24, 2014, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amended 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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on June 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2014.
The Center appointed Jonathan Agmon as the sole panelist in this matter on July 22, 2014. 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
The Complainant, Levi Strauss & Co., is a U.S. based company which business consists of design and sale of apparel worldwide.
The Complainant was founded in 1853 and has been using the LEVI’S mark in connection with its goods as early as 1927.
The Complainant is the owner of multiple trademark registrations for the mark LEVI’S around the world. For example: U.S. Registration No. 250,265 for LEVI’S, registered on December 4, 1928. The Complainant is also the owner of several trademark registrations for LEVI’S in China, where the Respondent is based, including Chinese Trademark Registration No. 76729 – LEVI’S, registered on December 2, 1978.
Through extensive use and advertising around the world, the LEVI’S trademark has generated vast good will and has become famous in connection with apparel and especially with jeans.
The Complainant also developed a formidable presence on the Internet and is the owner of multiple domain names, which contain the name “Levi”, For example: and .
The disputed domain name was registered in November 2007.
The disputed domain name leads Internet users to a website containing links to retail websites, some of them bearing the Complainant’s LEVI’S mark.

5. Parties’ Contentions
A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.
The Complainant further argues that the fact that the disputed domain name includes the additional generic term “outlet” does not affect the confusing similarity.
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant further argues it had not licensed or otherwise permitted the Respondent to use its LEVI’S trademark and is not affiliated or otherwise connected to the Respondent.
The Complainant further argues that the Respondent is not generally known by the disputed domain name, or has acquired trademark rights in the name LEVI’S.
The Complainant further argues that it sells its goods worldwide, including in China, where the Respondent is located, and is the owner of multiple trademarks for LEVI’S.
The Complainant further argues that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin.
The Complainant further argues that the Respondent registered the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.
The Complainant further argues that the Respondent was aware of the Complainant’s existence and of the LEVI’S trademark and products at the time it registered the disputed domain name.
The Complainant further argues that the fact that the Respondent registered the disputed domain name using a privacy protection service and concealing its contact information is further evidence that the Respondent has registered and is using the disputed domain name in bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings
A. Language of the Proceeding
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 has confirmed to the Center that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requested that the language of the proceeding should be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
a) The disputed domain name consists of Latin letters, rather than Chinese letters;
b) The disputed domain name consists of English words;
c) The disputed domain name resolves to a website which operates in English and targets English speaking viewers;
d) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.
Upon considering the above, the Panel decides to render the Complainant’s request and rules that English be the language of the proceeding.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant is the owner of multiple trademark registrations for the mark LEVI’S around the world. For example: U.S. Registration No. 250,265 for LEVI’S, registered on December 4, 1928. The Complainant is also the owner of several trademark registrations for LEVI’S in China, where the Respondent is based, including Chinese Trademark Registration No. 76729 – LEVI’S, registered on December 2, 1978.
The disputed domain name integrates the Complainant’s LEVI’S trademark in its entirety, as a dominant element.
The disputed domain name differs from the registered LEVI’S trademark by the additional word “outlet”, the omission of the apostrophe and the gTLD “.com”.
The additional word “outlet” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark, as it is a purely descriptive term. The omission of the apostrophe from the mark LEVI’S does not serve to sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark as it is a mere separator and has no trademark meaning, in this case.
The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The gTLD “.com” is without legal significance since it is used here as a mere technical requirement to operate the domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its LEVI’S trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel1, the Complainant used the LEVI’S trademark as early as 1927 and owns a registration for the LEVI’S trademark since the year 1928. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
The Complainant also provided evidence to demonstrate its trademark’s vast goodwill. The Panel cites the following with approval: “The Respondent’s selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence […]. Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent’s registration and use of the disputed domain name other than that of bad faith” (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.
Indeed, “when a domain name is so obviously connected with a complainant, its very use by a registrant with no connection to the Complainant may suggest “opportunistic’ bad faith”. (Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the disputed domain name it has intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the disputed domain name resolved to.
The disputed domain name leads Internet users to a websites containing links to retail websites, including apparel, some of them bearing the Complainant’s LEVI’S mark. The Respondent’s use of the trademark LEVI’S to promote similar or identical goods to the goods being offered by the Complainant is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making in its LEVI’S trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”.
Furthermore, the disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent’s registration of the disputed domain name using a privacy protection service and concealing its contact information is a further indication of the Respondent’s bad faith in this case.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the use of the Complainant’s trademark in the disputed domain name and the similarity between the disputed domain name and the Complainant’s mark, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 name be transferred to the Complainant.

Jonathan Agmon

Sole Panelist



Date: August 5, 2014

1 See paragraph 4.5 of WIPO Overview 2.0



Verilənlər bazası müəlliflik hüququ ilə müdafiə olunur ©azrefs.org 2016
rəhbərliyinə müraciət

    Ana səhifə