The Complainant is J. Choo Limited of 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 Paris of Paris, France. 2. The Domain Name And Registrar
The disputed domain name is registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2010. On December 3, 2010, the Center transmitted by email to N LLC a request for registrar verification in connection with the disputed domain name. On December 4, 2010, N LLC 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2011.
The Center appointed Lynda M. Braun as the sole panelist in this matter on January 6, 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 company incorporated in the United Kingdom of Great Britain and Northern Ireland. The Jimmy Choo brand is now one of the most recognized designer brands of footwear, handbag and small leather goods in the world. The Complainant has been trading under the trademark JIMMY CHOO since 2001 and has spent considerable amounts of time and money advertising the brand since 2001. The Complainant owns a number of trademark registrations for the trademark JIMMY CHOO in numerous classes of goods in multiple jurisdictions. These registrations include United Kingdom Trade Mark Registration No. 2299841 JIMMY CHOO [series of two] in class 25; Community Trade Mark Registration No. 1662543 JIMMY CHOO in class 25; Community Trade Mark Registration No. 2587830 JIMMY CHOO in classes 3, 9, 14, 18, 25 and 35; Community Trade Mark Registration No. 6889265 JIMMY CHOO (stylized) in classes 3, 9, 14; Community Designation of International Trade Mark Registration No. 863636 JIMMY CHOO in class 24; International Trade Mark Registration No. 938123 JIMMY CHOO in class 4; and Community Designation of International Trade Mark Registration No. 992801 JIMMY CHOO in class 6.
The Complainant owns many gTLDs and ccTLDs incorporating its trademark, either in its own name or in the name of its sister company. These domains include , , , , , , ,
, , , , and . All of these domains resolve to the Complainant’s website at “www.”. The disputed domain name was registered on October 6, 2010. The disputed domain name is used in connection with a website selling Jimmy Choo products as well as products manufactured by Jimmy Choo competitors. 5. Parties’ Contentions A. Complainant
The following are the allegations made by the Complainant in this proceeding:
- The disputed domain name is confusingly similar to the Complainant’s trademark to which the Complainant has rights.
- The Complainant (or its sister company J. Choo (Jersey) Limited) owns a number of registrations for the trademark JIMMY CHOO in numerous countries all over the world.
- The disputed domain name incorporates the Complainant’s trademark JIMMY CHOO in full, deviating from the mark only with the addition of the descriptive element “shop”.
- The incorporation of a trademark in its entirety has been deemed sufficient to establish that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademark.
- The addition of “shop” is not sufficient to avoid confusing similarity with the Complainant’s trademark, as the addition is simply an indication that the website hosted at the disputed domain name offers products for sale marked with the JIMMY CHOO registered trademark.
- The Respondent has no rights or legitimate interests in the disputed domain name since the Complainant has never licensed or otherwise permitted the Respondent to use its trademarks, nor to apply for domain names incorporating its trademarks, nor to sell goods under its trademarks similar to the ones sold by the Complainant on its official website. Therefore, there is no relationship whatsoever between the Complainant and the Respondent.
- The website hosted at the disputed domain name is reportedly selling counterfeit products under the Complainant’s registered trademark, thus misleading Internet users as to the origin or source of the goods.
- There is no evidence of any fair, noncommercial or bona fide use of the disputed domain name.
- On its website, the Respondent offers goods bearing well-known trademarks of competitors of the Complainant, which does not constitute legitimate use of the domain name.
- The disputed domain name was registered and used in bad faith because the Respondent knew or should have known of the existence of the Complainant's trademark prior to registering the disputed domain name in 2010. This prior knowledge constitutes bad faith registration.
- The Respondent uses the disputed domain name in bad faith because the unauthorized use of the Complainant’s trademark evidences the Respondent’s clear intent to attract customers to its website seeking branded Jimmy Choo merchandise.
- The website connected with the disputed domain name is reported to sell counterfeit merchandise, further constituting bad faith use.
- The Respondent uses artwork taken directly from the Complainant’s genuine advertising campaign. This is a clear attempt to create an impression that the website is a genuine website offered by the Complainant.
- The Respondent uses product style names identical to those used by the Complainant in conjunction with the mark JIMMY CHOO. This is further evidence of the Respondent’s intention to mislead consumers for commercial gain by suggesting to them that the Respondent’s website is associated with, or endorsed by, the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion And Findings
In order for the Complainant to prevail and have the disputed domain name transferred to the Complainant, the Complainant must prove the following (the Policy, paragraph 4(a)(i-iii)):
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no right or legitimate interest in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is nearly identical and is confusingly similar to the Complainant’s marks. The word “shop” in the disputed domain name is descriptive and indicates that the website offers products for sale. The addition of “shop” does not remove the similarity but increases the risk of confusion for the consumers, as they would believe that the website at the disputed domain name represents the Complainant’s Internet store, having a connection with the Complainant. Indeed, it is well established that the addition of descriptive or generic words to a mark does nothing to change an otherwise identical or confusingly similar domain name. Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191 (The panel found confusing similarity where “shop” and a hyphen were added to the trademark of the complainant in the disputed domain name). See also, PRL USA Holdings, Inc. v. Unasi Management Inc.,WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality,WIPO Case No. D2005-1028 (the addition of generic words to a mark to form a domain name is insufficient to dispel confusing similarity). Accordingly, the first element of Paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Once a complainant establishes that a respondent’s domain name is identical or confusingly similar to complainant’s mark, and that the complainant has made a prima facie case of lack of right or legitimate interest, the burden shifts to the respondent to establish some right or legitimate interest in respect of the domain name. As the Respondent did not provide the Panel with any evidence in support of any rights or legitimate interests in the disputed domain name, the Panel may decide the dispute on the basis of the Complaint and draw negative inference from the Respondent's default. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions § 4.6; Alstom v. Itete Peru S.A.,WIPO Case No. D2009-0877; see also, Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis,WIPO Case No. D2000-1563 (respondent’s default furthers conclusion that it had no right or legitimate interest in the domain name).
The Respondent’s default notwithstanding, there is no evidence in the record that the Respondent is in any way associated with the Complainant, that the Respondent is now or was ever known by the disputed domain name, or that the Respondent has other authority, license or permission to use the Complainant’s marks. Rather, the Respondent is using the disputed domain name to offer for sale the Complainant’s products. The Complainant contends that the goods being offered for sale on the website connected to the disputed domain name are counterfeits of the Complainant’s products. Given that there is no Response, the Panel considers it unnecessary to decide if the products on sale are counterfeit in this case. See Vibram S.p.A. v. Dai Xiu Mei,WIPO Case No. D2010-0846.
Lastly, the Respondent’s own business name does not appear on the website to which the disputed domain name resolves. Therefore, the Panel infers that the Respondent is using the disputed domain name to divert consumers searching for the Complainant’s website to its own website by capitalizing on the fame and goodwill of the Complainant. This use cannot constitute a legitimate interest in a domain name. Finally, where a party has registered and used a domain name in bad faith (see below), that party cannot be found to have made a bona fide offering of goods or services. Accordingly, the second element of Paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
First, the Complainant sent the Respondent a notice of objection letter dated November 8, 2010, informing the Respondent that the disputed domain name infringed on the Complainant’s marks, and requested that the Respondent transfer the disputed domain name to the Complainant. The Respondent did not respond to the Complainant’s letter. Given the circumstances of this case, the Respondent’s lack of response to the letter as well as its lack of response to the Complaint is considered by the Panel as further evidence of the Respondent’s bad faith intent. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210.
Second, the Complainant has developed a reputation for the trademark JIMMY CHOO in the fashion industry for about 10 years and the Complainant’s trademarked products are sold worldwide. Moreover, the Respondent’s unauthorized sale of Jimmy Choo branded products (counterfeit or otherwise) very strongly suggests that the Respondent knew of the Complainant’s trademarks prior to registration of the disputed domain name. Thus, it is reasonable to infer from the circumstances of this case that the aim of the registration and use of the disputed domain name is to exploit consumer confusion for commercial gain. This behavior constitutes bad faith registration and use of the disputed domain name under the Policy.
Finally, the registration of a domain name reproducing in its entirety the registered trademark of the Complainant is clearly aimed to disrupt the Complainant’s business by diverting Internet users who are searching for the Complainant’s products from the Complainant’s genuine website as well as to prevent the Complainant from registering the disputed domain name. The sale of goods bearing the trademarks of the Complainant’s competitors also constitutes an attempt to disrupt the Complainant’s business by attracting potential customers of Jimmy Choo products and offering competitive products to them instead. The Panel thus concludes that the Respondent has registered and used the disputed domain name in bad faith. Accordingly, the third element of Paragraph 4(a) of the Policy has been met by the Complainant. 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 name be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Dated: January 12, 2011
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