The Complainant is Coach, Inc. of New York, United States of America, represented internally.
The Respondent is Zongxin Trade Co Ltd. of Putian, Fujian, the People’s Republic of China. 2. The Domain Name) and Registrars
The Respondent registered the following domain names:
registered with HiChina Zhicheng Technology Ltd., and,
; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; and ,
all of which are registered with Xin Net Technology Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2010. On November 22, 2010, the Center transmitted by email to Xin Net Technology Corp. and HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain names. On November 23, 2010, Xin Net Technology Corp. and HiChina Zhicheng Technology Ltd. transmitted by emails to the Center there verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
On November 24, 2010, Xin Net Technology Corp. informed the Center that the disputed domain names , , and should be renewed pursuant to paragraph 3.7.5.7. of the ICANN Expired Domain Name Deletion Policy. On December 10, 2010, Xin Net Technology Corp. confirmed to the Center that the aforementioned disputed domain names were renewed.
On December 14, 2010, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On December 16, 2010, the Complainant requested English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date. The Center sent an email communication to the Complainant on December 14, 2010 regarding the amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 18, 2010.
The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2011.
On November 20, 2010, an email from “[…]@” was sent to the Complainant indicating the websites at the disputed domain names would be deleted. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2011.
The Center appointed Dr. Hong Xue as the sole panelist in this matter on January 18, 2011. 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 a retailer of handbags, footwear, eyewear, fragrances, outerwear and accessories under the brand name COACH. The Complainant first registered the COACH word mark in the United States on August 9, 1977. The Complainant, along with its subsidiary Coach Services, Inc., now owns almost 1,200 COACH-formative trademark registrations around the world, including Europe and China.
The Respondent registered the following disputed domain names:
Disputed Domain Name
Date of Registration
Registrar
August 5, 2009
Xin Net Technology Corp.
October 8, 2009
Xin Net Technology Corp.
October 19, 2009
Xin Net Technology Corp.
October 20, 2009
Xin Net Technology Corp.
November 9, 2009
Xin Net Technology Corp.
November 9, 2009
Xin Net Technology Corp.
November 13, 2009
Xin Net Technology Corp.
January 4, 2010
Xin Net Technology Corp.
January 10, 2010
Xin Net Technology Corp.
January 14, 2010
Xin Net Technology Corp.
January 14, 2010
Xin Net Technology Corp.
February 23, 2010
Xin Net Technology Corp.
March 6, 2010
Xin Net Technology Corp.
March 7, 2010
Xin Net Technology Corp.
March 11, 2010
Xin Net Technology Corp.
March 11, 2010
Xin Net Technology Corp.
March 12, 2010
Xin Net Technology Corp.
March 16, 2010
Xin Net Technology Corp.
March 16, 2010
Xin Net Technology Corp.
April 11, 2010
Xin Net Technology Corp.
April 25, 2010
Xin Net Technology Corp.
May 1, 2010
Xin Net Technology Corp.
May 1, 2010
Xin Net Technology Corp.
May 1, 2010
Xin Net Technology Corp.
May 18, 2010
Xin Net Technology Corp.
May 19, 2010
Xin Net Technology Corp.
May 31, 2010
Xin Net Technology Corp.
June 1, 2010
Xin Net Technology Corp.
September 1, 2010
HiChina Zhicheng Technology Ltd.
October 19, 2010
Xin Net Technology Corp.
All the disputed domain names appear properly locked by the pertinent registrars all through the proceeding. 5. Parties’ Contentions A. Complainant
The Complainant states that it is a retailer of handbags, footwear, eyewear, fragrances, outerwear and accessories with presence in over 30 countries.
The Complainant states that COACH is the trademark that has been registered since 1977 in many countries and regions, including the United States, China and the United Kingdom of Great Britain and Northern Ireland.
The Complainant contends that the Respondent’s following disputed domain names, i.e. , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are confusingly similar to the COACH trademark in which the Complainant has rights.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant contends that the disputed domain names were registered and are being used in bad faith.
The Complainant requested that the Panel issue an order that the all disputed domain names be transferred to it. 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 agreements for the disputed domain names specified above, as confirmed by the concerned Registrars, is Chinese. The Complainant has requested that the language of the proceeding be English and has presented the reasons. The Respondent did not make any submissions in relation to the language of the 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 vis-à-vis the proceeding.
In the present case, the Panel finds that the Respondent has sufficient capacity to understand and use English. The Panel notes that the websites at a number of the disputed domain names, such as , , , , , , , , , , , , , , , , , , display the contents in English. Furthermore, the Complainant has submitted the Complaint in English and there is little need for it to bear considerable costs to translate all the submissions into and take part in the proceeding in the language of the registration agreements.
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
According to the Policy, paragraph 4 (a)(i), a complainant must prove that a disputed 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 identity or confusing similarity between the disputed domain name and its trademark.
The Panel finds that before the registration of the disputed domain names the Complainant has acquired the trademark right over the mark COACH through registrations in a number of countries and regions, including China which is the Respondent’s country of residence.
The disputed domain names are , , , , , , , , , , , , , , , , , , , , , , , , , , , , and .
Apart from the generic top-level domain suffix “.com” or “.net”, 29 disputed domain names take the “coach + generic word(s)” model. Those generic words added before or after “coach” are “outlet”, “outlets”, “store”, “stores”, “sotre”, “sotres”, “shop”, “factory”, “mall”, “online”, “onlines”, “handbags”, “handbag”, “purse”, “service”, letter “i” and dash mark. All of these generic words, though some of which are misspelled, are related to the Complainant’s retail business under the mark COACH. 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. FA93670). Therefore, 29 above-mentioned disputed domain names comprising of the Complainant’s registered trademark COACH in its entirety and other descriptive words related to the Complainant’s business are confusingly similar to the Complainant’s registered trademark COACH.
There is one disputed domain name , which consists of “caoch”, “outlet”, “stores” and “dash”. Since this domain name contains the generic words directly refer to the Complainant’s business and “caoch” is merely slightly different from the Complainant’s mark COACH, the domain name is still confusingly similar to the Complainant’s mark as a whole.
Accordingly, the Complaint has proven the first element required by paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
The Complainant asserted that the Respondent has no rights or legitimate interests in the disputed domain names and, as stated above, the Respondent did not provide any information to the Panel asserting any rights or legitimate interests it may have in the disputed domain names.
It is apparent from the Complaint that there is no connection between the Respondent and the Complainant or its business. The Respondent did not rebut the Complainant’s contention that the disputed domain names were not used in connection with any bona fide offering of goods or services. The lack of a Response in this case 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 names.
Accordingly, the Complaint has proven the second element required by paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
The Complainant contended that the Respondent had registered and is using the disputed domain names in bad faith. The Respondent did not respond.
The Complainant presents the evidence that 18 disputed domain names, i.e. , , , , , , , , , , , , , , , , , , are being used for websites that copy both the contents and layouts of the Complainant’s website “” and possibly sell counterfeit Coach products. Since the disputed domain names were registered and are fully controlled by the Respondent, the Respondent is responsible for any use of them. Such use of the disputed domain names is highly likely to attract and confuse the Internet users with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the disputed domain names’ websites or of the products on the websites. Therefore, the registration and use of 18 above-mentioned disputed domain names constitute the evidence of bad faith specified in paragraph 4(b)(iv) of the Policy.
With respect to the other disputed domain names, the Panel finds that they are confusingly similar to the Complainant’s trademark COACH and refer directly to the Complainant’s retail business. Since the Respondent has shown a pattern of conduct to take advantage of the Complainant’s trademark and business, the group of domain name registration constitutes the evidence of bad faith specified in paragraph 4(b)(ii) of the Policy.
Therefore, the Complaint successfully proves 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 disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant.
Dr. Hong Xue
Sole Panelist
Dated: February 1, 2011
Full & Egal Universal Law Academy