{ "case_number": "CAC-UDRP-106224", "time_of_filling": "2024-02-07 09:58:30", "domain_names": [ "off-whiteturkey.com", "off-whitecolombia.com", "off-whitedanmark.com", "off-whitedeutschland.com", "off-whitegreece.com", "off-whitehungary.com", "off-whiteindonesia.com", "off-whitemexico.com", "off-whitenetherlands.com", "off-whitesuomi.com", "off-whitepolska.com", "off-whiteromania.com", "off-whiteschweiz.com", "off-whitesverige.com", "off-whiteargentina.com", "offwhite-canada.com", "offwhite-chile.com", "off-whiteespana.com", "offwhite-greece.com", "offwhite-hungary.com", "offwhite-ireland.com", "offwhiteitalia.com", "offwhite-japan.com", "offwhitemexico.com", "off-whitenz.com", "offwhiteperu.com", "off-whiteschuhe.com", "offwhiteslovenija.com", "off-whitesrbija.com", "offwhiteuae.com", "off-whiteindia.com", "offwhiteshoe.com", "off-whiteuk.com", "off-whiteusa.com", "offwhitehoodieofficial.com", "off--whites.com", "offwhiteshoodie.com", "offwhitesoutlet.com", "off-whitenike.com", "off-whiteonline.com", "off-white-colombia.com", "offwhitesouthafrica.com", "offwhite-romania.com", "off--whiteclothing.com" ], "case_administrator": "Olga Dvořáková (Case admin)", "complainant": [ "OFF-WHITE LLC" ], "complainant_representative": "Convey srl", "respondent": [ "Client Care (Web Commerce Communications Limited)" ], "respondent_representative": null, "factual_background": "

The Complainant is a U.S. company founded by designer Virgil Abloh. The company was first founded as \"Pyrex Vision\" in Milan, Italy in 2012. Abloh then rebranded the company as Off-White in 2013, which he described as \"the grey area between black and white as the color off-white\" to the fashion world. It has shown collections at Paris Fashion Week shows, and is sold in boutiques in Hong Kong, Tokyo, Milan, London and New York. In August 2019, José Neves, owner of Farfetch, purchased New Guards Group, the parent organization of the Complainant, for US$675 million. The Complainant has collaborated with many world’s leading brands and designers. <\/span><\/p>\n

The trademark OFF-WHITE, registered since years, is distinctive and well known all around the world specializing in luxury fashion. The Complainant has been extensively using the OFF-WHITE denomination on all internet environments including the company’s official website www.off---white.com<\/a> and its official accounts on social media.<\/span><\/p>\n

The disputed domain names were registered by the Respondent in 2022 and 2023, without authorization of Complainant, and have been pointed to websites offering for sale the Complainant’s products. On 27 November 2023, the Complainant’s representative sent a cease-and-desist letter requesting immediate cease of any use and transfer of the disputed domain names to the email addresses indicated on the websites corresponding to the <\/span><<\/span>offwhite-romania.com> and <off-whitepolska.com> domain names, but the Respondent has not deemed it appropriate to answer.<\/span><\/p>\n

The Registrar confirmed that the Respondent is the current registrant of the disputed domain names, and that the language of the registration agreements is English.<\/span><\/p>\n

The Respondent has not filed any Response.<\/span><\/p>", "other_legal_proceedings": "

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.<\/p>", "no_response_filed": "

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.<\/p>\n

The Complainant made the following contentions:<\/span><\/p>\n

THE DISPUTED DOMAIN NAMES ARE IDENTICAL OR CONFUSINGLY SIMILAR<\/span><\/p>\n

The disputed domain names incorporate the whole of the Complainant’s trademark OFF-WHITE and the fact that they include a non-distinctive element such as generic commercial terms (i.e. “outlet”, “online” or “shoe” in English) and\/or geographical terms and the generic Top-Level Domain .com does not affect the confusing similarity. The Complainant suggests that OFF-WHITE is an internationally well-known mark in the sector of luxury fashion and the Complainant’s products are sold worldwide. The combination of the trademark OFF-WHITE with generic and geographical terms could suggest improperly to consumers that the disputed domain names and corresponding web sites might be directly controlled or authorized by the Complainant. <\/span><\/p>\n

RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTEREST IN RESPECT OF THE DISPUTED DOMAIN NAMES<\/span><\/p>\n

The Complainant argues that it has made a prima facie case that the Respondents have no rights or legitimate interest in respect of the disputed domain names. The Respondent is not a licensee or authorized dealer of the Complainant nor has been authorized by the Complainant to use the trademark OFF-WHITE in the disputed domain names or in any other manner. Upon information and belief, the Respondent is not commonly known by the disputed domain names as individual, business or other organization. Furthermore, the Respondent has not provided the Complainant with any evidence of its use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services before any notice of the dispute. The Respondent has not made any attempt to refute the Complainant's prima facie case, or replied to it at all. <\/span><\/p>\n

The Complainant submitted evidence showing that the disputed domain names were redirected by the Respondent to websites with similar layouts where the Complainant’s trademarks OFF-WHITE (both word and logo) were published and prima facie counterfeit OFF-WHITE branded products were offered for sale. In light of the following circumstances, the Complainant finds it evident that the goods offered for sale on the websites are counterfeit: the goods are sold disproportionately below market value, more than half the Complainant’s prices; the Respondent has misappropriated copyrighted images from the Complainant’s website; and the Respondent offers for sale goods using the images of the Complainant’s website.<\/span><\/p>\n

The Complainant concludes that the Respondent's use cannot be considered neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the disputed domain names, and that such wilful conduct clearly demonstrates, to the contrary, that the Respondent did not intend to use the disputed domain names in connection with any legitimate purpose.<\/span><\/p>\n

THE DISPUTED DOMAIN NAMES WERE REGISTERED AND ARE BEING USED IN BAD FAITH<\/span><\/p>\n

Turning to the bad faith argument, the Complainant points out that the Respondent could not have possibly ignored the existence of the Complainant’s trademark, identical to the disputed domain names, particularly because of the registration and intensive use of the trademark OFF-WHITE since many years. The Complainant contends that the OFF-WHITE trademark enjoys worldwide reputation in luxury fashion sector and that the disputed domain names were all registered in 2022 and 2023, which is years after the Complainant adopted the sign OFF-WHITE for his items and services. Therefore, it is clear that the Respondent was well aware of the Complainant’s trademark, and he has registered the disputed domain names with the intention to refer to the Complainant and its trademarks. Considering the trademark’s distinctiveness and well-known character, it is inconceivable that the Respondent was unaware of the existence of the Complainant’s registered trademarks at the time of the registration of the Domain Names, with which it is confusingly similar.<\/span><\/p>\n

As to the use of the disputed domain names in bad faith, the redirections to websites where replicas of OFFWHITE products are offered for sale indicates that the Respondent was fully aware of the reputation of the Complainant’s mark and its association with the Complainant and that his purpose in registering the disputed domain names, which incorporates the Complainant's trademark OFF-WHITE, was solely intended to capitalize on the reputation of Complainant's mark by diverting Internet users seeking products under the OFF-WHITE mark to its own commercial web sites.<\/span><\/p>\n

The Complainant notes that the disputed domain name <offwhite-hungary.com> was at the time of filing the Complaint not redirected to an active website, whereas before the cease-and-desist letter was sent, the corresponding website had been similar to the other ones. The Complainant suggests that this situation could be evaluated according to the passive-holding doctrine. In the present case, the trademark OFF-WHITE has a high degree of distinctiveness, the Respondent has not replied to the cease-and-desist letter, the Respondent has concealed his identity in the Whois records and there is not any chance of good faith use by the Respondent.<\/span><\/p>\n

Furthermore, the Respondent has targeted the Complainant, registering forty-four domain names including the trademark OFF-WHITE, which prevents the Complainant from reflecting the marks in the corresponding domain names. The Complainant suggests that the Respondent has engaged in a pattern of conduct.<\/span><\/p>\n

As an additional circumstance demonstrating bad faith, the Complainant makes the point that the Respondent failed to respond to a cease-and-desist letter.<\/span><\/p>", "rights": "

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).<\/p>", "no_rights_or_legitimate_interests": "

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).<\/p>", "bad_faith": "

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).<\/p>", "procedural_factors": "

The Complainant made a request to consolidate all disputed domain names in a single UDRP proceedings. The Complainant explicitly “believes that the disputed domain names, which all incorporate the trademark OFF-WHITE in their entirety, are under the control of a single individual or entity or, at least, reflective of a group of individuals acting in concert”.<\/p>\n

The Panel notes that, according to the Registrar Verification, all disputed domain names are registered by the same and only one entity – the Respondent. Therefore, the Panel agrees to consider all disputed domain names in a single proceeding pursuant to Paragraph 4(f) of the Policy and Paragraph 10(e) of the Rules.<\/p>\n

 The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.<\/p>\n

 <\/p>", "decision": "Accepted", "panelists": [ "Vojtěch Chloupek" ], "date_of_panel_decision": "2024-04-01 00:00:00", "informal_english_translation": "

The Complainant submitted evidence that it is the registered owner of the following trademark registrations:<\/span><\/p>\n