The Complainant is J. Choo Limited of London, the United Kingdom of Great Britain and Northern Ireland, represented by A. A. Thornton & Co., the United Kingdom of Great Britain and Northern Ireland.
The Respondent is Lisa Xu of Nanking, Jangsu, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2011. On March 23, 2011, the Center transmitted by email to eNom and CentralNic a request for registrar verification in connection with the disputed domain name. On March 24, 2011, CentralNic transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient regarding the hard copies, the Complainant confirmed with the Center that the Complaint and its annexes in hard copies have been sent to the Center on March 28, 2011. On April 6, 2011, the Center acknowledged receipt of the hard copies.
The Center verified that the Complaint satisfied the formal requirements of the CentralNic Resolution Policy (the “Policy”) and the Rules for CentralNic Dispute Resolution Policy (the “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 April 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 26, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on April 27, 2011.
The Center appointed Dennis A. Foster as the sole panelist in this matter on May 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 an established company based in the United Kingdom of Great Britain and Northern Ireland that makes and internationally markets quality footwear, handbags and other leather goods bearing the trademark JIMMY CHOO. The Complainant has obtained numerous trademark registrations with various national and international authorities, such as the People’s Republic of China (e.g., Registration No. 3189589; issued December 7, 2003) and the Office for Harmonization in the Internal Market (“OHIM”) (e.g., Community Trademark Registration No. 1662543: issued September 16, 2002).
The disputed domain name, , was registered on October 12, 2010 by the Respondent. The Respondent uses the disputed domain name to offer goods that are purportedly produced by the Complainant. 5. Parties’ Contentions A. Complainant
Operating under the trademark JIMMY CHOO since 2001, the Complainant produces and markets one of the most recognized high fashion footwear and handbags, and small leather goods brands in the world. The Complainant has spent considerable amounts of money promoting its goods, which are regularly featured globally in magazines and newspaper articles. The Complainant has more than sixty own-branded stores across the world.
The Complainant has several OHIM trademark registrations, as well as many trademark registrations with the appropriate authorities in the People’s Republic of China – the nation in which the Respondent resides. The Complainant also owns and operates numerous domain names in connection with its business, including , and .
The disputed domain name, , is identical to the Complainant’s JIMMY CHOO mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent refused to reply to the Complainant’s letter objecting to the Respondent’s registration of the name, such letter making clear the Complainant’s intent to file the instant Complaint in the absence of a satisfactory reply.
There is no evidence that the Respondent is using the disputed domain name for legitimate noncommercial or fair use purposes. Instead, the Respondent uses the name to offer goods purportedly produced by the Complainant – but which the Complainant believes to be counterfeit – to unsuspecting Internet users. This practice serves only to divert potential customers from the Complainant’s legitimate websites.
The disputed domain name was registered and is being used in bad faith. The Respondent, by usurping the Complainant’s trademark within the name, seeks to disrupt the Complainant’s business through diversion of Internet users from its genuine websites.
Moreover, the Respondent is intentionally attempting to attract for commercial gain Internet users by creating an impression that the website under the domain name is associated with, or endorsed by, the Complainant. The Respondent does so by displaying the Complainant’s style names in conjunction with the Complainant’s mark, JIMMY CHOO, to describe the goods sold on the Respondent’s website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraphs 4(a)(i) – (iii) of the Policy, the Complainant may prevail in these proceedings and obtain a transfer of the disputed domain name, , if the Complainant can prove that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar
Based upon the Complainant’s submission to the Panel of appropriate evidence (Annex C) that the Complainant owns, among others, valid registrations for the JIMMY CHOO trademark in the People’s Republic of China and the OHIM, the Panel concludes that the Complainant has rights in that trademark sufficient to satisfy the requirements of Policy paragraph 4(a)(i). See, for example, Alstom v. Yulei,WIPO Case No. D2007-0424 (finding that the complainant had satisfied the trademark ownership requirements of Policy paragraph 4(a)(i) where “[t]he Complainant has…registered trademark rights in the marks ALSTOM in many countries throughout the world including China.”); and Devitt Insurance Services Limited v. Randall Stevens, NAF Claim No. FA1257387 (“The Panel finds Complainant has established rights in the DEVITT mark for purposes of Policy [paragraph] 4(a)(i) through its trademark registration with the OHIM”).
In the Panel’s view, the disputed domain name, , is identical to the Complainant’s JIMMY CHOO mark except for the minimal deviations occasioned by the deletion of the space between two terms in the mark and the additions of the second level domain “.uk” and the gTLD “.com”, which entail no relevant distinction. See, EPSON Europe BV for and on behalf of Seiko EPSON Corporation v. Hasan Fefelian,WIPO Case No. DIR2010-0002 (“where the panel found to be identical to the EPSON mark and stated that “…the addition of the technically necessary ccTLD ‘.ir’ should be disregarded for purposes of comparison between domain names and trademarks under the Policy.”); Cupa Materiales S.A. v. S c/o Whois Identity Shield/Vertical Axis, Inc.,WIPO Case No. D2009-0216 (“Panels disregard the gTLD suffix in determining whether a disputed domain name is identical or similar to a complainant's marks.”); and Gurney’s Inn Resort & Spa Ltd. v. Whitney, NAF Claim No. FA140656 (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”).
Therefore, the Panel finds that the Complainant has shown that the disputed domain name is identical to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Policy places upon the Complainant the burden of proving that the Respondent has no rights or legitimate interests in the disputed domain name. To that end, the Complainant has shown to the Panel’s satisfaction that the Complainant owns appropriately registered rights in the trademark, JIMMY CHOO, and thus controls the authority to use the same in commerce. The Complainant has also presented evidence that it sent the Respondent a letter objecting to the Respondent’s use of the trademark in the disputed domain name, convincing the Panel that the Complainant did not grant the Respondent the authority to use that mark. As such, the Panel concludes that the Complainant has put forth a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. This effectively shifts the burden to the Respondent to come forward with creditable evidence supporting its claim to those rights or interests. See, G.D. Searle & Co. v. Fred Pelham, NAF Claim No. FA117911 (“Complainant has presented a prima facie case against Respondent and as a result shifts the burden to Respondent to establish that it does have rights and legitimate interests in the disputed domain name.”); and PwC Business Trust v. CulitoSa,WIPO Case No. D2001-1109 (“Once a Complainant makes a prima facie showing that a Respondent lacks rights in the Domain Name, the burden of proof shifts to the Respondent to come forward with demonstrable evidence proving a legitimate interest in the Domain Name.”)
Although the Respondent has provided the Panel with no evidence in this case, the Panel will consult the record in these proceedings to determine whether there is anything to prevent said prima facie case from prevailing otherwise. In doing so, the Panel will examine the possible applicability of paragraph 4(c) of the Policy, which allows the Respondent to establish rights or legitimate interests in the disputed domain name thusly:
(i) before any notice to you 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 (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 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.
In the record, the Complainant contends and furnishes evidence (Annexes G and H) that the Respondent uses the disputed domain name to host a website that offers for sale to Internet users leather products with the implication – through reference to Complainant’s trademark and styles – that those products are made by the Complainant. Since there is no contradictory evidence to be found in the record, the Panel is bound to accept this reasonable contention as true. In the Panel’s view, subparagraph 4(c)(iii) of the Policy is clearly inapplicable to this case because presumably the Respondent receives commercial revenue from such Internet sales, which does not square with “a legitimate noncommercial or fair use” of the disputed domain name.
With respect to subparagraph 4(c)(i) of the Policy, the Panel recognizes that someone is not necessarily barred from using another’s trademark to sell the latter’s trademarked goods, even if the former is not specifically authorized by the latter to do so. See, AB Electrolux v. Ong Nguyen Huu Vinh,WIPO Case No. D2011-0318; and Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946 (“Respondent is not an authorized dealer. This is not dispositive because, in principle, it is not an infringement of a trademark without the authority of the trademark owner to resell or promote for resale genuine trademarked goods by reference to the mark.”).
However, prior UDRP panels have cited a number of conditions that must be met before a respondent may claim that the unauthorized sale of a complainant’s trademarked products is “a bona fide offering of goods or services” in satisfaction of subparagraph 4(c)(i) of the Policy. Among those conditions are that the products for sale be actually only those produced by that complainant and that the relationship between that respondent and complainant be made clear at respondent’s website (e.g., there must be prominent disclosure that the website functions on a non-exclusive agency basis instead of as the complainant’s official website, if such is the case). See, for example, Philip Morris, supra; and Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
In this case, the Complainant contends, without contradiction elsewhere in the record, that the goods offered at the disputed domain name are not Complainant’s, but are instead counterfeit versions. More importantly, the Panel finds nothing in the record to suggest that the Respondent has made clear on its website, found at the disputed domain name, that the site operates absent affiliation with or authorization from the Complainant. For these reasons, the Panel concludes that the Respondent has failed to meet the conditions necessary to invoke subparagraph 4(c)(i) of the Policy in its favor.
Finally, in discounting the relevance of subparagraph 4(c)(ii) of the Policy, the Panel detects absolutely nothing in the record to support the notion that the Respondent, Lisa Xu, has been commonly known as the disputed domain name, , as there is no discernible resemblance between the two names.
In summation, the Panel rules that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered or Used in Bad Faith
As stated above, the Panel has accepted the Complainant’s contention that the Respondent uses the disputed domain name to host a website that offers Internet users leather products, with the implication that these products are made by the Complainant. The Panel concludes that, in so doing, the Respondent is intentionally attempting to gain commercially through the likely confusion of Internet users about whether the disputed domain name is connected to the Complainant and its trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Accordingly, the Panel believes that the disputed domain name was registered and is being used in bad faith per paragraph 4(b)(iv) of the Policy. See, Cigna Intellectual Property, Inc. v. Yun Sung Lee,WIPO Case No. D2003-1042 (“[b]y advertising products which might be generally associated with the Complainant's mark, it appears that the Respondent is attempting for commercial gain to attract Internet users by creating a likelihood of confusion with the Complainant's mark”).
Accordingly, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith. 7. Decision
For 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.
Dennis A. Foster
Sole Panelist
Dated: May 20, 2011
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