WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Stylight GmbH v. Zheng Zebiao

Case No. D2018-1327

1. The Parties

The Complainant is Stylight GmbH of Munich, Germany, represented by BPM Legal, Germany.

The Respondent is Zheng Zebiao of Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <cheapstylight.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2018. On June 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 2018, 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 June 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2018.

The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on July 17, 2018. 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 following summary sets out the uncontested factual submissions made by the Complainant:

The Complainant was established in 2008 and provides an online platform, which inter alia offers fashion from over 100 online shops. The Complainant currently has an online presence in numerous countries worldwide, namely Australia, Belgium, Brazil, Canada, Germany, Spain, France, Ireland, Italy, Mexico, Netherlands, Norway, Austria, Switzerland, Sweden, United Kingdom of Great Britain and Northern Ireland, and United States of America (“US”).

The Complaint owns several trademarks for STYLIGHT, inter alia European Union Trademark Registration no. 007416051 STYLIGHT, registered on June 16, 2009, International Registration no. 1011334 STYLIGHT, registered on May 14, 2009, and US trademark registration no. 3910299 STYLIGHT, registered on January 25, 2011 (hereinafter collectively referred to as the “STYLIGHT Mark”).

The Complainant provides its services online at several country related domain names, such as <stylight.com.au>, <stylight.be, <stylight.com.br>, <stylight.ca>, <stylight.de>, <stylight.es>, <stylight.fr>, <stylight.ie>, <stylight.it>, <stylight.com.mx>, <stylight.nl>, <stylight.no>, <stylight.at>, <stylight.ch>, <stylight.se>, <stylight.co.uk>, and, last but not least, <stylight.com>.

In addition, the Complainant owns numerous domain names related to its STYLIGHT Mark, including <mystylight.at>, <mystylight.de>, <mystylight.net>, <mystylight.org>, <stylight.com.pt>, <stylight.com.vn>, <stylight.fi>, <stylight.com.hk>, <stylight.co.za>, <stylight.com.ar>, <stylight.com.mx>, <stylight.cz>, <stylight.events>, <stylight.gr>, <stylight.hu>, <stylight.jp>, <stylight.kr>, <stylight.my>, <stylight.pl>, <stylight.ru>, <stylight.uk>, <stylight.biz>, <stylight.co.in>, <stylight.co.za>, <stylight.com.ar>, <stylight.eu>, <stylight.info>, <stylight.company>, <stylight.fashion>, and <stylight.mobi>.

There have also been several UDRP decisions relating to the STYLIGHT Mark whereby the panels recognized the Complainant’s rights thereof. These include disputes involving the domain names <stylight-de.com>, <stylight.vip>, <stylight.co>, and <stylight.pro>.

The disputed domain name was registered on January 22, 2018. The disputed domain name currently resolves to a website that appears to market wallets and bags, particularly those of the Louis Vuitton brand.

The Respondent is the registered owner of numerous domain names. The Respondent’s domain name portfolio contains domain name registrations such as <ferragamshop.com> and <newpandorauk.com>.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has rights in the trademarks listed in section 4 above and has produced copies of the relevant registration records available online.

The Complainant contends that the disputed domain name is identical or confusingly similar to its trademark, which it says is highly distinctive. The Complainant further contends that the additional word “cheap” in the disputed domain name does not eliminate the similarity between the Complainant’s trademark and the disputed domain name. The Complainant attaches evidence in the form of a Google search for STYLIGHT which produces references only to the Complainant. Furthermore, the Complainant contends that the generic Top-Level Domain (“gTLD”) should be disregarded in the determination of confusing similarity to the trademark.

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has not licensed or otherwise permitted the Respondent to use its trademark or to apply for a domain name incorporating its STYLIGHT Mark. The Complainant submits that these assertions constitute a prima facie case that places the burden upon the Respondent to demonstrate any rights or legitimate interests in the disputed domain name.

The Complainant further contends that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant’s trademark is an invented word and the Complainant has been in business since 2008 with over six million people using its various platforms. It contends that it is inconceivable that the Respondent was previously unaware of the Complainant’s trademark. Furthermore, the fact that the Respondent is offering products on sale which are directly competing with the Complainant’s business allegedly shows that the Respondent is targeting the Complainant with the registration of the disputed domain name and intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s own website by creating a likelihood of confusion with the Complainant’s STYLIGHT Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

The Complainant says that the Respondent’s registration of the disputed domain name prevents the Complainant from reflecting its trademark in a corresponding domain name. According to the Complainant, the Respondent’s registration and use of the disputed domain name containing a trademark with which it has no connection suggests opportunistic bad faith. The Respondent’s use of the disputed domain name is alleged to disrupt the Complainant’s business as it is capable of reducing the number of visitors to the Complainant’s website, which may adversely affect the Complainant’s business. Furthermore, the Respondent’s holding of the disputed domain name constitutes an abusive threat hanging over the head of the Complainant.

B. Respondent

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

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:

(a) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(b) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(c) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied with the evidence adduced by the Complainant to establish its rights to the STYLIGHT Mark. The STYLIGHT Mark is not only registered by the Complainant in numerous jurisdictions but it has also been used extensively by the Complainant directly or indirectly on a worldwide basis. The Complainant has acquired substantial goodwill in the use of the mark as evidenced by the use of the STYLIGHT Mark since 2008 and the high traffic generated through its collective websites.

The Panel is guided by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Under section 1.8 of the WIPO Overview 3.0, it states that:

“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”

The disputed domain name comprises the STYLIGHT Mark in its entirety preceded by the descriptive word “cheap”. The STYLIGHT Mark is clearly recognizable within the disputed domain name and the additional descriptive word does not prevent a finding of confusing similarity between the disputed domain name and the trademark. The Complainant referred this Panel to the cases of Sanofi v. Kathleen Fasone, WIPO Case No. D2018-0412 and Pet Plan Ltd v. Contact Privacy Inc. Customer 1241410113 / Paul Richmond, 808Paul LLC, WIPO Case No. D2017-2259 where the addition of the word “cheap” did not prevent a finding of confusing similarity between the disputed domain names and the complainants’ trademarks in those cases and this Panel is in agreement with said decisions.

As such, the Panel finds that the Complainant has proved that the disputed domain name is confusingly similar to the Complainant’s STYLIGHT Mark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is well settled that a complainant may put forward a prima facie case that the respondent lacks rights or legitimate interests in a domain name. The burden of production then shifts to the respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name in order to rebut that prima facie case. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416.

The Panel is satisfied with the unrebutted evidence adduced by the Complainant in support of its prima facie case. Based on the absence of a response and the absence of any nexus between the disputed domain name and the Respondent’s name, the Panel could not find any justification, rights or legitimate interests on the part of the Respondent to the disputed domain name. The notoriety of the Complainant’s STYLIGHT Mark and the distinctiveness of the trademark itself would present a significant hurdle for the Respondent to justify rights or legitimate interests to the trademark without submitting compelling reasons to this Panel to conclude otherwise.

Further, there is also no evidence to indicate that the Respondent is known by the name “cheap”, “stylight” or any combinations thereof.

In the circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.

C. Registered and Used in Bad Faith

This Panel accepts the Complainant’s submission that the disputed domain name was registered and is being used in bad faith by the Respondent. The very use of the disputed domain name by someone with no connection with the Complainant suggests opportunistic bad faith. The Respondent’s conduct of holding registrations for several other domain names that seemingly misappropriates the trademarks of well-known brands and businesses also suggests that the Respondent is not acting in a bona fide manner. Whilst the particulars of these other potential domain name abuses are beyond the ambit of this case, and their merits depend on a duly submitted complaint before a properly-constituted panel, previous UDRP panels have held the view that opportunistic bad faith is sufficient to satisfy the bad faith requirement under the third element of paragraph 4(a) of the Policy. This Panel was referred to the previous decisions of America Online Inc. v. Chinese ICQ Network, WIPO Case No. D2000-0808; General Motors LLC v. desgate, WIPO Case No. D2012-0451 and RapidShare AG, Christian Schmid v. Ali Private Company, Ali Kamran,WIPO Case No. D2010-0610 and the Panel agrees with the aforementioned decisions.

Furthermore, as the Panel has determined that the disputed domain name is identical or confusingly similar with the Complainant’s STYLIGHT Mark, the Panel agrees with the Complainant’s contention that this can give rise to confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on such website. The Panel agrees with the contention by the Complainant that the Respondent had or should have had knowledge of the Complainant’s STYLIGHT Mark when it registered and started using the disputed domain name. The factors that were taken into account to arrive at this conclusion include the date of registration of the disputed domain name which was much later than the date the Complainant started using the STYLIGHT Mark and the widespread use of the STYLIGHT Mark by the Complainant at an international level. The fact that the Respondent is offering products on sale which are directly competing with the Complainant’s business is evidence of bad faith registration and use.

The Panel is satisfied that the Respondent had or should have had knowledge of the reputation and goodwill of the STYLIGHT Mark when it sought to register the disputed domain name and that it intended to use and indeed used the disputed domain name in order to misrepresent a connection with the Complainant when in fact no such connection existed.

In light of the above, the Panel finds that bad faith has been demonstrated under paragraph 4(b) of the Policy and that the third element of paragraph 4(a) of the Policy has been met.

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 <cheapstylight.com> be transferred to the Complainant.

Syed Naqiz Shahabuddin
Sole Panelist
Date: July 24, 2018