WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Luxottica Group S.p.A. and Luxottica Fashion Brillen

Vertriebs GmbH v. Gaston Baty

Case No. D2010-1571

1. The Parties

The Complainant is Luxottica Group S.p.A. of Italy and Luxottica Fashion Brillen Vertriebs GmbH of Germany represented by Zirngibl Langwieser of Germany.

The Respondent is Gaston Baty of People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <raybansonnenbrillen.com> is registered with Xin Net Technology Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2010. On September 17, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On September 19, 2010, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the location of the Respondent for the disputed domain name which differed from the listed contact information in the Complaint. The Center sent an email communication to the Complainant on September 23, 2010 providing the correct contact information of the Respondent and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on September 27, 2010.

On September 23, 2010, the Center transmitted by email to the parties a communication in both Chinese and English regarding the language of proceedings. On September 24, 2010, the Complainant submitted a request that English or alternatively German be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.

The Center verified that the Complaint 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, and the proceedings commenced on September 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2010.

The Center appointed Dr. Hong Xue as the sole panelist in this matter on October 26, 2010. 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 Luxottica Group S.p.A. is the owner of the registered trademark RAY-BAN. The Complainant Luxottica Fashion Brillen Vertriebs GmbH is the exclusive licensee of RAY-BAN trademark.

The disputed domain name <raybansonnenbrillen.com> was registered by the Respondent on December 5, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <raybansonnenbrillen.com> is confusingly similar to the trademark RAY-BAN, the registration and use of which by the Complainant long precede the registration of the disputed domain name.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant contends that the disputed domain name was registered and is being used in bad faith.

The Complainant requests that the disputed domain name <raybansonnenbrillen.com> be transferred to the Complainant Luxottica Group S.p.A.

B. Respondent

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

6. Discussion and Findings

A. Language of Proceeding

The language of the registration agreement for the disputed domain name <raybansonnenbrillen.com>, as confirmed by the Registrar, is Chinese. The Complainant has requested that the language of the proceeding be English or alternatively German and has presented the reasons. The Respondent did not make any submissions in relation to the language of proceeding even though the Center’s communications to this effect (as was the Notification of Complaint) were both in English and in Chinese.

According to paragraph 11(a) of the Rules, 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.

Among other circumstances, the respondent’s ability to clearly understand the language of the complaint, and the complainant’s being disadvantaged by being forced to translate, may both support a panel’s determination that the language of the proceeding remains the language of the complaint, even if it is different from the language of the registration agreement (L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

According to the Rules, paragraph 10(b), the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. Therefore a panel shall objectively assess the Parties’ language ability in the proceeding.

In the present case, the Panel finds that the Respondent has sufficient capacity to understand and use both English and German. The Panel’s conclusion is based primarily on the evidence submitted by the Complainant that the website established at the disputed domain name, <raybansonnenbrillen.com>, provides services via a German-English bilingual system. Also, the Panel notes that the website at the disputed domain name doesn’t contain a single Chinese word or character. On the other hand, the Complainant has submitted the Complaint in English and would bear considerable costs to translate all the submissions into and take part in the proceeding in the language of the registration agreement.

Having considered all the circumstances, this Panel determines under the Rules, paragraph 11(a) that English shall be the language of the proceeding.

B. Identical or Confusingly Similar

Pursuant to the Policy, paragraph 4(a)(i), a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such requirement, a complainant must prove its trademark rights and the similarity between the disputed domain name and its trademark.

The Panel finds that before the registration of the disputed domain name Complainant’s trademark RAY-BAN had been registered and used on glasses products in a number of countries.

The disputed domain name is <raybansonnenbrillen.com>. Apart from the generic top-level domain suffix “.com”, the disputed domain name consists of “raybansonnenbrillen”, which combines “rayban” and “sonnenbrillen”, which is German word for sunglasses. It is established by numerous decisions made under the Policy that adding generic words that are related to a complainant’s business is likely to lead the panel to find a confusing similarity between the disputed domain name and the complainant’s trademark (Marriott International, Inc. v. Cafe au lait, NAF Claim No. 93670).

Given that the disputed domain name contains the Complainant’s mark RAY-BAN by merely omitting the dash, adding the generic term “sonnenbrillen” that is related to the Complainant’s glasses products marked with RAY-BAN does not preclude a finding of confusing similarity.

The Panel therefore finds that the disputed domain name <raybansonnenbrillen.com> is confusingly similar to the Complainant’s registered trademark RAY-BAN. Accordingly, the Complainant has proven the first element required by paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and, as stated above, the Respondent did not provide any information to the Panel asserting any right or legitimate interest it may have in the disputed domain name.

It is apparent from the Complaint that there is no connection between the Respondent and the Complainant or its business. Paragraph 4(c) of the Policy lists a number of circumstances which can be taken to demonstrate a respondent’s rights or legitimate interests in a domain name. However, there is no evidence before the Panel that any of the situations described in paragraph 4(c) of the Policy apply here. To the contrary, the lack of a Response leads the Panel to draw a negative inference.

Therefore, and also in light of the Panel’s findings below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name <raybansonnenbrillen.com>. Accordingly, the Complainant has proven the second element required by paragraph 4(a) of the Policy.

D. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Respondent did not respond.

Through examining the evidence submitted, the Panel notes that the website at the dispute domain name <raybansonnenbrillen.com> had showed the Complainant’s registered mark RAY-BAN or similar sign and sold a variety of types of sunglasses. The Complainant, however, stated clearly that they had never granted the Respondent any license or other authorization to sell RAY-BAN products. All these facts show that the Respondent had registered and used the disputed domain name with the intent of profiting from the Complainant’s mark RAY-BAN by selling allegedly counterfeit products.

After the Respondent was notified of the Complaint, the Center, when verifying the use of the disputed domain name, found that the disputed domain name no longer resolved to any active website. Since the disputed domain name was registered and is controlled by the Respondent, the Respondent is responsible for the status of the disputed domain name.

The Panel finds that it is necessary to examine all the relevant circumstances of the case to determine whether the Respondent is in bad faith. Taking into account the reputation of the Complainant’s mark RAY-BAN, similarity between the disputed domain name and the Complainant’s mark, the Respondent’s lack of response to the Complaint, Respondent’s concealment of true address and the Respondent’s apparent act of selling suspect counterfeit products via the disputed domain name, the Panel concludes that it is impossible to conceive of any good faith use of the domain name by the Respondent (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Therefore, the Respondent’s passive holding of the disputed domain name constitutes the evidence of its bad faith.

The Panel finds that this is adequate to conclude that the Respondent has registered and is holding the disputed domain name in bad faith under the Policy, paragraph 4(b)(iv). Therefore, the Complainant has successfully proven the third element required by paragraph 4(a) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <raybansonnenbrillen.com> be transferred to the Complainant Luxottica Group S.p.A.

Dr. Hong Xue
Sole Panelist
Dated: November 9, 2010