WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
J. Choo Limited v. Sinclare Vabalon, BHG
Case No. D2008-1091
1. The Parties
The Complainant is J. Choo Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by A. A. Thornton & Co, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Sinclare Vabalon, BHG, Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”), is registered with Basic Fusion, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2008. On July 21, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 22, 2008, 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”), 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 July 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2008.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on August 20, 2008. 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 is an English company which has traded under the JIMMY CHOO brand in the high fashion footwear and leather goods business since 2001. The JIMMY CHOO brand is one of the world’s best known fashion brands. It is regularly featured in magazines and newspaper articles and maintains over sixty own-branded stores worldwide.
The Complainant is the proprietor of several trademark registrations of or including the name JIMMY CHOO, the earliest of which is United Kingdom registration No. 2292643 dated August 2, 2002 being a word/stylized word mark. The registration is in class 3 (soaps/perfumes), 9 (sunglasses/spectacles/recording discs), 14 (jewellery), 18 (leather goods), and 43 (retail outlets/retail websites). The territorial effect of this trademark was extended to Gibraltar, where the Respondent is based, on August 18, 2003.
Prior to the date of registration of the Domain Name, the Complainant and its predecessors spent a total of �13,591,168 on worldwide advertising and marketing of the JIMMY CHOO brand.
The Domain Name was registered by the Respondent on March 6, 2008.
5. Parties’ Contentions
A. Complainant
The Domain Name contains the Complainant’s trademark in its entirety. Numerous UDRP decisions have recognized that this can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. The word “knockoffs” is entirely non-distinctive and its inclusion in the name reinforces the connection between the trademark JIMMY CHOO and the Complainant. The Respondent’s use of the mark JIMMY CHOO is clearly an attempt to catch Internet users searching for goods using the Complainant’s registered trademarks.
There is no evidence the Respondent has been or is commonly known by the Domain Name, or has acquired any trademark or service mark rights in them. The Respondent has no relationship with or permission from the Complainant for the use of the JIMMY CHOO mark. There is no evidence the Respondent is making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain misleadingly to divert consumers or to tarnish the marks at issue so as to create an impression of association with the Complainant.
There is no evidence of the Respondent making a bona fide offering of goods and services through the Domain Name. Rather, the Domain Name simply leads to a click through parked page where Internet browsers looking for JIMMY CHOO branded goods will click on the sponsored links, thereby creating revenue for the Respondent. There appears to be no connection between the Domain Name and the third party shopping sites.
The Respondent is using the Complainant’s JIMMY CHOO trademark to attract users to the Respondent’s web page. The web page features click through opportunities to third party shopping sites which are entirely unconnected with the Complainant’s trademark JIMMY CHOO. The Respondent is using a widely recognized trademark, of which the Respondent is likely to have actual constructive knowledge, to generate revenue with no intention of offering a bona fide service or information through the website.
The addition of the word “knockoffs” is clearly aimed at disrupting the Complainant’s business by diverting attention away from genuine JIMMY CHOO branded products when an Internet user searches the Internet using the trademark JIMMY CHOO. The use of additional terms relating to copy or counterfeit goods in combination with a well-known luxury brand has been found to be bad faith in past UDRP cases.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Panel finds that the Complainant has established rights in its JIMMY CHOO trademarks given that the Complainant is the proprietor of an extensive portfolio of registered trademarks. The Complainant has also provided evidence of use of the JIMMY CHOO brand dating from before 2001.
The Domain Name is not identical to the Complainant’s trademark. However, it includes the mark in its entirety together with the word “knockoffs”. In the Panel’s view, the dominant and distinctive element of the Domain Name is the Complainant’s trademark JIMMY CHOO. The word “knockoffs” is wholly generic and does nothing to displace this dominant element. The Complainant’s mark is well-known worldwide. It has been recognized in previous cases under the Policy that where such a distinctive and well-known mark is incorporated in its entirety within a domain name, the addition of one or more generic words will not distinguish that domain name from the mark (see, for example, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409). Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Complainant is required under paragraph 4(a)(ii) of the Policy to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in a disputed domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As the Respondent did not respond to the Complaint, it did not submit any evidence demonstrating rights or a legitimate interest in the Domain Name. The Complainant asserts that the Respondent has no relationship with or permission from the Complainant for the use of the JIMMY CHOO mark. The Complainant also points out that the current use of the Domain Name is as a click through parked page where Internet browsers looking for the Complainant’s branded goods will click on the sponsored links, thereby creating revenue for the Respondent.
The Respondent has neither explained its conduct nor attempted to set out any rights or legitimate interests in the Domain Name. No such rights or legitimate interests on the part of the Respondent are apparent to the Panel. The Panel considers that, in the absence of any alternative explanation, the Respondent in all likelihood selected the Domain Name because of its incorporation of the Complainant’s trademark with a view to receiving revenue from web traffic which the Respondent directs to the various links on the associated website. This could not be described as a bona fide offering of goods or services, and it is clear to the Panel that the Respondent’s use of the Domain Name in this manner does not confer any rights or legitimate interests upon it.
Accordingly, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Complainant is required under paragraph 4(a)(iii) of the Policy to prove that the Respondent has registered and is using the Domain Name in bad faith. The Complainant refers to the Respondent’s “actual constructive knowledge” of the Complainant’s registered trademark and adds that the use of the word “knockoffs” with that mark indicates an intention to disrupt the Complainant’s business. It is not clear to the Panel whether the Complainant’s submission was intended to state that the Respondent had actual or constructive knowledge of the trademark; in the Panel’s mind the two may be mutually exclusive.
Nevertheless, the Panel considers that the coupling of the Complainant’s highly distinctive trademark with the word “knockoffs” in the Domain Name allows a reasonable inference to be made that the Respondent is engaged in a deliberate and bad faith endeavour to target the Complainant’s brand. Furthermore, the use of the associated website in connection with a sponsored link parking page demonstrates to the Panel’s satisfaction that, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website, as contemplated by paragraph 4(b)(iv) of the Policy. The Panel cannot conceive of any alternative good faith explanation as to the nature of the Respondent’s registration and use of the Domain Name, and the Respondent has chosen to provide no such explanation despite having been afforded an opportunity to do so.
In these circumstances, the Panel finds that the Complainant has proved that the Respondent has registered and used the Domain Name in bad faith.
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 be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Dated: September 1, 2008
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