The company behind the Stone Island clothing brand, Sportswear Company, has recovered hundreds of domain names that were hosting websites selling counterfeit versions of its products.
The domains, which numbered in the hundreds, belonged to various China-based registrants. The majority resolved to sites selling counterfeits, while some remained parked with no website attached. One registrant, Lin Ting, owned around 70.
All of the domains contained some variation of the Stone Island trademark, usually prefixed with ‘buy’ or suffixed with ‘shop’ or ‘sale’. In its UDRP complaint before the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center, Sportswear Company argued that the domains were identical and confusingly similar to its Stone Island trademarks, and that the registrants had no rights or legitimate interests in the domain names.
Sole panellist Sebastian Hughes ruled in favor of Sportswear Company in two separate cases covering the domains, finding that the registrants had clearly used Stone Island’s notoriety in an attempt to draw customers to their own websites.
In particular, Hughes pointed out the “sheer volume” of domains that Ting had registered as evidence of bad faith and said that it was “inconceivable [that Ting]was not aware of the complainant’s trademark at the time of registration”.
The entire decision can be read here