The Complainant is French Connection Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Lewis Silkin LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Hu Shaotang of Quanzhou, China. 2. The Domain Name and Registrar
The disputed domain names and are registered with Shanghai Yovole Networks, Inc. and Click Registrar, Inc. d/b/a P, respectively. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2012. On August 10, 2012, the Center transmitted by email to Shanghai Yovole Networks, Inc. a request for registrar verification in connection with the disputed domain name . On August 15, 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 August 15, 2012, the Complainant submitted Supplemental Annexes 9 and 10 to the Center. On August 17, 2012, the Complainant submitted Supplemental Annex 11 to the Center. On August 15, 2012, the Center transmitted an email to the Parties in both Chinese and English language regarding the language of the proceeding. Upon request from the Complainant, the language submission due date for the Complainant was extended to August 20, 2012 and accordingly the language submission due date for the Respondent was extended to August 22, 2012. On August 17, 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 proceedings commenced on August 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2012.
On September 21, 2012, the Complainant submitted a supplemental filing by email to the Center, requesting that the disputed domain name be added to the proceeding.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on October 8, 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.
On October 15, 2012 the Panel issued a Panel Order preliminarily accepting the addition of the disputed domain name , requiring the Complainant to file an Amended Complaint including full details of the additional domain name and its request for addition of the additional domain name, and requesting the Center to send a request for registrar verification to Click Registrar, Inc. d/b/a P. On October 26, 2012, the Complainant submitted an Amended Complaint to the Center. On October 29, 2012, the Center transmitted by email to Click Registrar, Inc. d/b/a P a request for registrar verification in connection with the disputed domain name . On October 30, 2012, Click Registrar, Inc. d/b/a P transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
In accordance with the Rules, paragraphs 2(a) and 4(a) and in compliance with the Panel Order, the Center formally notified the Respondent of the Amended Complaint on October 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on November 21, 2012. 4. Factual Background A. Complainant
The Complainant is a company incorporated in the United Kingdom and the owner of numerous registrations worldwide for the trade mark FRENCH CONNECTION (the “Trade Mark”), including in China, where the Respondent is based, the earliest registration (in the United Kingdom) dating from 1977. The Complainant is active in the area of clothing and the retailing of clothing. 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 June 6, 2012.
The disputed domain name was registered on August 3, 2012. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant has used the Trade Mark in relation to clothing and the retailing of clothing since 1972. Since this time, the Complainant’s business has been conducted on an increasingly international scale, to the point that it now holds registrations for the Trade Mark in 59 countries and sells clothing under the Trade Mark in over 52 countries.
The disputed domain names are confusingly similar to the Trade Mark. They comprise the Trade Mark in its entirety, together with the non-distinctive words “dresses” and “uk”, the latter designating the United Kingdom.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not affiliated with or authorized by the Complainant in any way and is not commonly known by the disputed domain names.
The disputed domain names have been linked to unauthorised English language websites (the “Websites”) which:
(1) Reproduce the stylisation for the Trade Mark used until recently by the Complainant;
(2) Offer for sale what appears to be FRENCH CONNECTION clothing;
(3) Contain false copyright notices;
(4) Contain product images and product names taken without permission from the Complainant’s own website.
The Complainant has received numerous complaints from customers who have ordered products from the Websites in the mistaken belief that they were connected with the Complainant.
The Respondent has registered and is using the disputed domain names in bad faith because, by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Websites, by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the Websites. 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 and the language of the Registration Agreement for the disputed domain name is English.
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 Websites are in English and target customers in the United Kingdom, Canada, the United States, Australia and Europe (most of which are predominantly English-speaking regions). This demonstrates the Respondent is able to communicate in English;
(2) The Complainant is a business based in the United Kingdom and most frequently conducts its business in English;
(3) The Complainant would incur additional costs if the proceeding was to be conducted in Chinese.
The Respondent did not file any submissions with respect to the language of the proceeding and did not file a Response.
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).
It appears from the content of the Websites that 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 Websites are sophisticated websites featuring several pages using flawless English.
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) of the Rules that the language of the proceeding shall be English. 6.2 Addition of Disputed Domain Name
According to paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, provided the complainant has relevant trade mark rights, and all relevant domain names are registered by the same domain name holder, additional domain names may in certain circumstances be added to a complaint after filing, but prior to formal commencement of the proceeding. For example, if it should come to light after the filing of a complaint that there are additional domain names registered by the same domain name holder which are alleged to be identical or confusingly similar to the invoked trade mark, this may constitute grounds for their addition to the complaint where fair and practicable.
In the present case, the registration details for both of the disputed domain names are identical. The Complainant has filed submissions to the effect the disputed domain name did not show up in the reverse Whois search initially conducted by the Complainant, and did not come to the attention of the Complainant until after the proceeding had been commenced.
In order to ensure procedural fairness, the Panel Order was issued allowing the Respondent sufficient time under the Rules to respond to the Amended Complaint. The Respondent did not file a Response and did not make any submissions with respect to the Complainant’s request to add the additional disputed domain name.
In all the circumstances, the Panel concludes it is fair and practicable for the additional disputed domain name to be added to the Complaint. 6.3 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 names by several decades.
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 a 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).
The disputed domain names contain the Trade Mark in its entirety. The Panel concludes that the use of the generic words “dresses” and “uk” (the commonly used acronym for the United Kingdom, the country in which the Complainant is based) does not serve to distinguish the disputed domain names from the Trade Mark in any way.
The Panel finds that the disputed domain names are 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 a 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 organization) 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 names 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 names by decades. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, 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 names or that the disputed domain names are used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain names have been used in respect of the Websites which feature prominently the Trade Mark (using the stylization for the Trade Mark used until recently by the Complainant), contain false copyright notices, offer for sale unauthorized clothing under the Trade Mark, and unlawfully reproduce images of the Complainant’s clothing taken from the Complainant’s website. Such use cannot possibly give rise to rights or legitimate interests in the disputed domain names.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making any legitimate non-commercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. 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 Panel finds that the Respondent has registered and used the disputed domain names in order to pass off the Websites as websites of or licensed by the Complainant, for commercial gain. Furthermore, the Websites feature prominently the stylization for the Trade Mark used until recently by the Complainant, contain false copyright notices, and unlawfully reproduce images of the Complainant’s clothing copied from the Complainant’s website. All of this amounts to strong evidence of bad faith.
At some stage following the filing of the Complaint, both of the Websites have been taken down by the Respondent. As at the date of this Decision, the disputed domain names are not being used by the Respondent. In all the circumstances of this case, the Panel finds this constitutes further evidence of bad faith.
For the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are 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 names and be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: December 5, 2012
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