The Complainant is DKH Retail Limited trading as Laundry Athletics of Cheltenham, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Fox Williams Solicitors, United Kingdom.
The Respondent is wangzhenhua of Putian, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2012. On May 16, 2012, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On May 17, 2012, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 6, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On June 8, 2012, the Complainant confirmed its request that 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 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 proceeding commenced on June 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2012.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on July 23, 2012. 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 A. Complainant
The Complainant is a company incorporated in the UK and the owner of numerous national and international registrations for the trade mark SUPERDRY (the “Trade Mark”), the earliest dating from 2004, including registrations in China, where the Respondent is based. B. Respondent
The Respondent is an individual apparently with an address in China. C. The Disputed Domain Name
The disputed domain name was registered on May 12, 2011. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant was founded in 1985. It markets and sells clothing and accessories under the Trade Mark in 40 countries through distributors, agents, licensees and franchisees. Its websites cover 91 countries worldwide.
The disputed domain name is confusingly similar to the Trade Mark. It comprises the Trade Mark in its entirety, together with the non-distinctive word “outlet”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with or authorised by the Complainant in any way and is not commonly known by the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name has been registered and used in bad faith.
Although, at the time of preparing and filing the Complaint, the disputed domain name was being held passively, it was previously used in respect of a website offering for sale unauthorised, and probably counterfeit, clothing and accessories under the Trade Mark (the “Website”). The Website also reproduced images of the Complainant’s clothing and accessories without permission. It was taken down shortly after the Complainant’s legal representatives sent a letter of demand to the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) the Website was an English language website directed to English language speakers and accepting payment in US dollars;
(2) the Website was taken down shortly after the Complainant’s legal representatives sent an English language letter of demand to the Respondent;
(3) As the Complainant is a UK company, it would cause significant expense and delay if the Complainant were required to translate the Complaint and Annexes into Chinese.
The Respondent did not file a Response and did not file any submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
The Panel notes, for the reasons specified by the Complainant, it appears the Respondent is proficient in the English language (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
The Panel therefore finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be unduly prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) that the language of the proceeding shall be English. 6.2 Decision
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by many years.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
In the present case, the disputed domain name contains the Trade Mark in its entirety. The Panel concludes that the use of the generic word “outlet” does not serve to distinguish the disputed domain name from the Trade Mark in any way.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organisation) has been commonly known by the domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by many years. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name was previously used in respect of the Website offering for sale unauthorised, and possibly counterfeit, clothing and accessories under the Trade Mark and featuring unauthorised reproductions of the Complainant’s copyright images. Such use does not amount to a bona fide offering of goods or services under the Policy (Lilly ICOS LLC v. Dan Eccles,WIPO Case No. D2004-0750).
Since the filing of the Complaint, the disputed domain name has been linked to at least three different websites offering for sale clothing or providing sponsored links to third party websites offering for sale clothing products. As at the date of this Decision, the disputed domain name is linked to an English language website providing sponsored links to third party clothing related websites.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Complainant asserts that the disputed domain name was previously used to offer for sale unauthorised, and probably counterfeit, products under the Trade Mark. Using domain names to facilitate the sale of counterfeit goods is strong evidence of bad faith (Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019). The Complainant also asserts the Website featured unauthorised reproductions of the Complainant’s copyright images.
Even if the goods on the Website are not counterfeit, the Panel finds the Respondent’s conduct in registering the disputed domain name and setting up the Website using the Trade Mark and the Complainant’s copyright images, and offering for sale clothing and accessories under the Trade Mark, all without the authorisation, approval or licence of the Complainant, amounts to bad faith registration and use under paragraph 4(b)(iv) of the Policy, irrespective of whether the goods offered for sale on the Website are counterfeit.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
At some stage following receipt of the letter of demand from the Complainant’s legal representatives, the Respondent took down the Website. It is well-established under UDRP jurisprudence that passive use of a disputed domain name can, in certain circumstances, amount to evidence of bad faith. In all the circumstances of this case, the Panel finds the Respondent’s conduct in this regard, and also the failure of the Respondent to file a Response, are further indications of bad faith.
The disputed domain name has been used, since the filing of the Complaint, in respect of websites offering for sale clothing products, or otherwise providing sponsored links to third party websites offering for sale clothing products. This is a clear further indication of bad faith, under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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.
Sebastian M.W. Hughes
Sole Panelist
Dated: August 1, 2012
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