The Complainant is C & J Clark International Limited of Somerset, United Kingdom of Great Britain and Northern Ireland, represented by Stevens Hewlett & Perkins, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Hu Shaotang of Quanzhou, Fujian, China. 2. The Domain Name and Registrar
The disputed domain names and are registered with Shanghai Yovole Networks, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2012. On June 29, 2012, the Center transmitted by email to Shanghai Yovole Networks, Inc. a request for registrar verification in connection with the disputed domain names. On July 2, 2012, Shanghai Yovole Networks, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 3, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings 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 proceedings commenced on July 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2012.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on August 7, 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
The Complainant is the proprietor of a large number of trade mark registrations for its CLARKS mark effective in a number of territories and the Complainant’s CLARKS trade mark and business can be traced back to the year 1825 in the United Kingdom in respect of sheepskin slippers devised by James and Cyrus Clark.
The disputed domain names and were registered on March 30, 2012 and March 23, 2012 respectively. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights on the following grounds:
1. The disputed domain names and each contain the Complainant’s CLARKS mark in its entirety.
2. It is an established principle that the addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar.
3. The addition of the words “shoes”, “sale” and “uk” in the disputed domain names do nothing to distinguish the disputed domain names from the Complainant’s CLARKS registrations since these words merely emphasise the fact that goods bearing the Complainant’s CLARKS trade mark are being offered for sale on the Respondent’s website and it is known that the Complainant is a UK company.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names on the following grounds:
1. The Respondent is not commonly known by either of the disputed domain names and .
2. The Respondent does not have any affiliation, association, or business relationship of any kind with the Complainant, and the Respondent is not licensed or authorized to use the CLARKS trade mark.
3. The Respondent is using each of the disputed domain names and in order to sell directly to the public goods bearing the Complainant’s mark CLARKS.
4. The Respondent’s attempt to benefit commercially from the unauthorized use of the Complainant’s CLARKS mark does not constitute a bona fide offering of goods and services under the Policy or a legitimate noncommercial or fair use under the Policy.
The Complainant contends that the disputed domain names are registered and are being used in bad faith on the following grounds:
1. The Respondent’s business is to obtain the disputed domain names to which it has no legitimate right with the aim of purely taking unfair advantage of rights that third parties have established.
2. The Respondent is using the disputed domain names as ecommerce platform which directly compete with the Complainant’s goods and services.
3. The registration and use of the disputed domain names are likely to cause confusion and to deceive consumers into mistakenly believing that the Respondent’s disputed domain names and websites are offered, authorized, or are sponsored by the Complainant, or otherwise affiliated with the Complainant.
4. The registration and use of the disputed domain names will unfairly disrupt and deprive the Complainant of Internet traffic rightly intended for its websites.
5. An attempted purchase of the sample product offered for sale at the disputed domain name did not succeed and the order went unfulfilled. 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 Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the Case File, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceedings should be in English. The Complainant has submitted a request that English should be the language of the present proceeding.
After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language for the present proceeding shall be in English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel’s discretion under the Policy
Paragraph 11 of the Rules provides:
“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.”
Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The Circumstances of this Case
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that in the interests of fairness, the language of the proceeding ought to be the English language. In particular, the Panel notes that (a) the disputed domain names are made up of letters in Ascii-Script and could be pronounced phonetically in English and (b) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has chosen not to respond to the Complainant’s allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
After considering the circumstances of the present case, the Panel decides that the proceeding shall be English and the decision will be rendered in English. 6.2 Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must establish that each of the three following elements is satisfied:
1. the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
3. the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has adduced evidence to demonstrate that it has registered trade mark rights and continues to have such rights in the CLARKS trade mark in many territories. The Panel finds that the Complainant has rights and continues to have such rights in the relevant CLARKS mark.
In assessing the degree of similarity between the Complainant’s trade mark and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain names is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.
The disputed domain names comprise (a) an exact reproduction of the Complainant’s trade mark CLARKS with the words “shoes”, “sale”, and the acronym of the word United Kingdom “uk”; and (b) the top level domain suffix “.com”. The Panel finds that the addition of the words “shoes”, “sale” and the acronym of the word United Kingdom “uk” to be non-distinctive and it does not provide additional specification or sufficient distinction from the Complainant or its trade mark CLARKS. Internet users could be confused that the Respondent’s website is one of the Complainant’s official websites selling Clarks shoes online. It is also a well accepted principle that the addition of a suffix such as “.net” or “.com” being the generic top level domain is not a distinguishing factor.
Accordingly, the Panel finds that the disputed domain names and are confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
The burden of proof on this element lies with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the 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 trade mark 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 trade mark or service mark at issue.
The Panel finds that the Complainant has made out a prima facie showing and notes that the Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain names.
Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names:
1. The Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of and in his/her business operations;
2. There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trade mark or to apply for or use any disputed domain names incorporating the trade mark;
3. There is no indication that the Respondent is commonly known by the disputed domain names and/or is using the disputed domain names in connection with a bona fide offering of goods or services;
4. The Complainant and its CLARKS mark enjoy a substantial global reputation including China with regard to footwear and socks.
Consequently, in the absence of contrary evidence and satisfactory explanations from the Respondent, the CLARKS mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel finds for the Complainant on the second part of the test. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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.
The above circumstances are evidence of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of a domain name in bad faith by a respondent in the appropriate cases.
One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain names in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trade mark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcend national borders. Taking into account the global reputation of the Complainant and its CLARKS mark, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trade mark rights at the time of the registration of the disputed domain names.
Consequently, in the absence of contrary evidence and satisfactory explanations from the Respondent, the Panel finds that the term “clarks” in the Complainant’s CLARKS mark which has acquired a global reputation in footwear and socks is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, it would have been pertinent for the Respondent to provide an explanation of his/her choice in the disputed domain names. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain names were registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit there from.
Given the reputation of the Complainant’s CLARKS mark in footwear and socks, the compelling conclusion is that the Respondent, by choosing to register and use the disputed domain names which are identical or confusingly similar to the Complainant’s widely known and distinctive trade mark, intended to ride on the goodwill of the Complainant’s trade mark in an attempt to exploit, for commercial gain, Internet traffic destined for the Complainant. In fact, the Complainant has adduced evidence to show that the Respondent has offered for sale unauthorized goods bearing the Complainant’s CLARKS mark on the websites to which the disputed domain names points. The Respondent is not an authorized agent of the Complainant and does not adequately disclose the his/her relationship with the Complainant on the websites associated with the disputed domain names. Additionally, the Complainant alleges that an attempted test purchase of a sample product offered for sale at the disputed domain names was unsuccessful and the order went unfulfilled. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain names and the conduct of the Respondent are indicative of registration and use of the disputed domain names in bad faith.
The Panel finds for the Complainant on the third part of the test. 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 names and be transferred to the Complainant.
Susanna H.S. Leong
Sole Panelist
Dated: August 28, 2012
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