Complainant is Monsoon Accessorize Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Eversheds, LLP, United Kingdom.
Respondents are Wu Jia of Yueyang, China (Respondent 1); Kang Bai Yi of Fushun, China (Respondent 2); and xu zhonghong of Hangzhou, China (Respondent 3). 2. The Domain Names and Registrar
The disputed domain names , , , are registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2012. On August 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 27, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondents are listed as the registrants and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on August 29, 2012. On August 29, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceedings. On August 29, 2012, Complainant confirmed its request that English be the language of the proceedings. Respondents did not comment on the language of the proceeding by the specified due date. On August 31, 2012, Complainant sent an email communication to the Center requesting that additional domain names and be added to the Complaint and submitted an Amended Complaint. On September 6, 2012, Complainant submitted by email a formal request to add the additional domain names to the Complaint. On September 10, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the additional disputed domain names. On September 11, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondents are listed as the registrants and providing the contact details. On September 13, 2012, the Center transmitted a new email communication to the parties in both Chinese and English language regarding the language of the proceedings for the additional disputed domain names. On September 13, 2012, Complainant confirmed its request that English be the language of the proceedings. Respondents did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceedings commenced on September 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 10, 2012. Respondents did not submit any response. Accordingly, the Center notified Respondent’s default on October 12, 2012.
The Center appointed Yijun Tian as the sole panelist in this matter on November 2, 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.
It has been necessary to this Panel to extend the period for issuing a decision in this case to the date indicated under paragraph 7 below. 4. Factual Background
Complainant, Monsoon Accessorize Limited, is a company incorporated in London, United Kingdom of Great Britain and Northern Ireland (“UK”). Complainant is one of the UK’s most well-known ladies’ fashion retailers and it has been trading in UK under the name MONSOON since 1973. For many years, Complainant’s business has been international; there are now over 400 MONSOON stores in the UK and over 600 stores worldwide.
Complainant has exclusive rights in the MONSOON Marks. Complainant is the exclusive owner of well-known registered trademarks globally, including the UK trademark registration (since 1980) and CTM registration (since 2006) (see Annex 20 to the Complaint). It also owns the domain name registration , which was launched about 15 years ago.
Respondent 1 is Wu Jia of Yueyang, who registered the disputed domain name on July 13, 2012. Respondent 2 is Kang Bai Yi of Fushun, China, who registered the disputed domain names and both on August 2, 2012. Respondent 3 is xu zhonghong of Hangzhou, China, who registered the disputed domain name on June 6, 2012. The registration dates of all these disputed domain names are long after the MONSOON Marks became internationally famous. 5. Parties’ Contentions A. Complainant
(a) The disputed domain names are identical and confusingly similar to a trademark or service mark in which Complaint has rights.
Complainant first started to use the name MONSOON in London in 1973. It has now opened over 400 stores in the UK and over 600 stores internationally.
In the last financial year, Complainant’s turnover in respect of its Monsoon ladies’ clothing business alone was GBP 288 million and the group’s turnover was well in excess of GBP 600 million.
Complainant has its website “www.” launched about 15 years ago and it presently receives over 1.3 million visitors per month.
Complainant has an exclusive worldwide trademark portfolio for its MONSOON brand, including the UK trademark registration (since 1980) and CTM registration (since 2006) (see Annex 20 to the Complaint).
The disputed domain names are virtually identical to the name MONSOON. The only difference between the disputed domain names and Complainant’s mark is the addition (in all cases) of the words “dresses” and; in the other case, “uk”, “buy”, “online” and “shop”. These are generic words and the word “dresses” describes the most well-known range of garments sold in shops by Complainant in the UK and overseas.
Previous UDRP decisions have found this type of domain name (brand name plus descriptive word) to be confusingly similar. In the present case, MONSOON is the distinctive feature of all of the disputed domain names. The addition of generic words is not sufficient to avoid confusion.
The disputed domain names are confusingly similar to a trademark in which Complainant has rights.
(b) Respondents have no rights or legitimate interests in the disputed domain names.
Respondents are not connected to or authorized by Complainant in any way and have no legitimate interests in the mark MONSOON or any rights in the disputed domain names.
None of Respondents is using the disputed domain names in the course of any legitimate trade or bona fide offering of goods or services. By contrast, they are using the websites to which the disputed domain names resolve for fraudulent purposes.
There is no evidence that Respondents have ever used or been known by the name “monsoon” and/or “monsoon dresses” and/or “UK monsoon dresses” and/or “shop monsoon dresses” and/or “buy monsoon dresses” and/or “monsoon dresses online”.
The content of all of the websites make it plain that Respondents do not claim to have any legitimate entitlement to use the disputed domain names and websites for their own business but, rather, they make a deliberate misrepresentation that websites are in fact that of Complainant or are connected to it or affiliated with it.
Respondents are not using the disputed domain names for legitimate non commercial or fair purposes. Respondents are intentionally misleading consumers for commercial gain by suggesting that their websites are in some way connected to Complainant. For example, each of the websites is branded MONSOON, and contains photographs from Complainant’s website. (See Annexes 22 and 23)
(c) The disputed domain names were registered and are being used in bad faith.
When Respondents registered the disputed domain names they knew of Complainant and were aware of its reputation for selling women’s clothing.
Some of these disputed domain names resolve to websites which were active within (at most) a few week of registration and are clearly all designed to give the impression to consumers that they are connected to Complainant.
Respondents are not connected to Complainant and their offer to supply Complainant’s range of clothing to consumers at substantially reduced prices has been clearly designed to elicit money from consumers who are deceived into believing that they are able to purchase Complainant’s products from the websites.
The websites are also diverting sales away from Complainant and causing damage to its business. Complainant’s reputation is also being damaged by Respondents’ fraudulent activities. B. Respondents
Respondents did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the registration agreements for the disputed domain names is Chinese. Pursuant to the 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 on the record, no agreement appears to have been entered into between Complainant and Respondents to the effect that the language of the proceedings should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceedings for the following reasons:
(a) Respondents clearly understand English. The websites to which the disputed domain names resolve are in English and all communications received from the operators of the websites after placing an order are in English.
(b) Conversely, neither Complainant nor its advisors have any knowledge of the Chinese language or alphabet;
(c) The distinctive element of the disputed domain names is MONSOON which is one of the UK’s most well-known brand names for women’s fashion.
(d) The websites to which the disputed domain names resolve are (as with Complainant’s website) clearly aimed at English speaking visitors.
(e) Respondents are engaged in fraudulent activities through the websites to which disputed domain names resolve. The targets of their fraudulent activities are English-speaking Internet users located principally in the UK who are familiar with the well-known UK MONSOON brand, as they give the impression to consumers that the websites operated by them are connected to, or operated by, Complainant.
(f) Complainant is the subject of a sustained campaign by parties, acting in concert, who intend to damage Complainant and defraud its customers. Complainant has already incurred substantial legal costs attempting to stop Respondents’ fraudulent activities. It would now be inherently unfair and unjust if Complainant had to incur further costs and delay arranging for the translation of the Complaint into Chinese, prolonging the damage being caused to both Complainant and Internet users who are the victims of the registrants’ fraudulent activities.
Respondents did not make any submissions with respect to the language of the proceedings and did not object to the use of English as the language of the proceedings.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings 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 proceedings. 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. (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 language finally decided by the Panel for the proceedings should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 4.3 further states:
“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company from the UK, and Complainant will be spared the burden of working in Chinese as the language of the proceedings. The Panel has also taken into consideration the facts that the websites at the disputed domain names include English words “monsoon”, “dresses”, “uk”, “buy”, “online” and “shop”. (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).
On the record, Respondents appear to be Chinese individuals and are thus presumably not native English speakers, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondents have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain names are registered in Latin characters and particularly in English language, rather than Chinese script; (b) the websites resolved by the disputed domain names are English-based websites and Respondents are apparently doing business in English through these websites (Annexes 5-8 and 23 to the Complaint); (c) the websites appear to have been directed to users worldwide (particularly English speakers) rather than Chinese speakers; (d) the Center has notified Respondents of the proceedings in both Chinese and English, and Respondents have indicated no objection to Complainant’s request that English be the language of the proceedings; (e) the Center informed Respondents that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds 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. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Multiple Respondents and Consolidation
The Panel is further satisfied that, in the circumstances of the present dispute, the case is one that is suitable for consolidation and resolution in a single UDRP proceeding. See further the discussion of applicable principles and jurisprudence in paragraph 4.16 of the WIPO Overview 2.0.
Accordingly, the Panel accepts Complainant’s contentions that the first, second and third Respondents are the same individual or that the first and third Respondents are closely associated with the second Respondent. The disputed domain names are subject to common control and the consolidation would be fair and equitable to all parties. Consequently, the Panel will address the three Respondents as “Respondents” for purposes of the discussion below. 6.3. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) the disputed domain names registered by Respondents are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
On the basis of the evidence introduced by 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 Panel finds that Complainant has rights in the MONSOON Marks acquired through registration. The MONSOON Marks have been registered worldwide, particularly in the UK and European countries, and Complainant has a widespread reputation as one of the UK’s most well-known ladies’ fashion retailers.
The disputed domain names , , and comprise the MONSOON Mark in their entirety. The disputed domain names only differ from Complainant’s trademark by the addition (in all cases) of the words “dresses” and; in the other case, “uk”, “buy”, “online” and “shop” to the mark MONSOON. This does not seem to eliminate the identity or at least the similarity between Complainant’s registered trademark and the disputed domain names.
Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, 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).
Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).
The mere addition of the descriptive terms of “dresses” (in all cases) and “uk”, “buy”, “online” and “shop” (in the other case) as prefixes and/or suffixes to Complainant’s mark fails to distinguish to this Panel the disputed domain names from Complainant’s trademark. By contrast, it may increase the likelihood of confusion. These are general words and the word “dresses” describes the most well-known range of garments sold in shops by Complainant in the UK and overseas. Internet users who visit disputed domain names are likely to be confused and may falsely believe that they are online shops operated by Complainant for selling MONSOON-branded products, particularly dresses. Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain names and the MONSOON Marks.
The Panel therefore holds that the Complaint fulfils 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 circumstances any of which is sufficient to demonstrate that Respondents have rights or legitimate interests in the disputed domain names:
(i) use of, or preparations to use, the disputed domain names in connection with a bona fide offering of goods or services;
(ii) the fact that Respondents have commonly been known by the disputed domain names; or
(iii) legitimate noncommercial or fair use of the disputed domain names.
The overall burden of proof on this element rests with 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 in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the MONSOON Marks globally, including registration in the UK since 1980 and CTM registration since 2006 (see Annex 20 to the Complaint) which long precedes Respondents’ registrations of the disputed domain names in 2012.
According to Complainant, Complainant is one of the UK’s most well-known ladies’ fashion retailers. Complainant first started to use the name MONSOON in London in 1973. It has now opened over 400 stores in the UK and over 600 stores internationally. In the last financial year, Complainant’s turnover in respect of its Monsoon ladies’ clothing business alone was GBP 288 million and the group’s turnover was well in excess of GBP 600 million.
Moreover, Respondents are not authorized dealers of MONSOON branded products. Complainant has therefore established a prima facie case that Respondents have no rights or legitimate interests in the disputed domain names and thereby shifted the burden to Respondents to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; 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).
Based on the following reasons the Panel finds that Respondents have no rights or legitimate interests in the disputed domain names:
(a) There has been no evidence adduced to show that Respondents are using the disputed domain names in connection with a bona fide offering of goods or services. Respondents have not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the word “MONSOON” in their business operation or the use of the MONSOON Marks and design on their websites (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondents to use the MONSOON Marks or to apply for or use any domain names incorporating the MONSOON Marks;
(b) There has been no evidence adduced to show that Respondents have been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondents have any registered trademark rights with respect to the disputed domain names. Respondents registered the disputed domain names in 2012 long after the MONSOON Marks became internationally famous. The disputed domain names are identical or confusingly similar to Complainant’s MONSOON Marks.
(c) There has been no evidence adduced to show that Respondents are making a legitimate noncommercial or fair use of the disputed domain names. By contrast, according to the information provided by Complainant, Respondents were in actuality advertising, offering and selling purported MONSOON products via the disputed domain names (Annexes 5-8 to the Complaint).
The Panel finds that Respondents have failed to produce any evidence to establish their rights or legitimate interests in the disputed domain names. The Panel therefore holds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy. 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 disputed domain names in bad faith, namely:
(i) circumstances indicating that Respondents have registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondents’ documented out-of-pocket costs directly related to the disputed domain names; or
(ii) Respondents have registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondents have engaged in a pattern of such conduct; or
(iii) Respondents have registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, Respondents have intentionally attempted to attract, for commercial gain, Internet users to Respondents’ websites or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ websites or location or of a product or service on Respondents’ websites or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondents have registered and used the disputed domain names in bad faith.
a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the MONSOON Mark with regard to its products. Complainant has registered its MONSOON Marks internationally, including registration in the UK (since 1980) and CTM registration (since 2006). Moreover, the websites resolved by the disputed domain names advertise for sale various purported MONSOON products. Respondents would likely not have advertised products purporting to be MONSOON products on the websites if they were unaware of Complainant‘s reputation. In the other words, it is not conceivable to the Panel that Respondents would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain names. The Panel therefore finds that the MONSOON Mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondents have chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain names were registered in bad faith with the intent to create an impression of an association with Complainant’s MONSOON branded products.
b) Used in Bad Faith
Complainant has adduced evidence to prove that by using confusingly similar disputed domain names, Respondents have “intentionally attempted to attract, for commercial gain, Internet users to Respondents’ websites” offering purportedly Complainant’s MONSOON branded products and services without authorization. Complainant claimed that Respondents are intentionally misleading consumers for “commercial gain” by suggesting that their websites are in some way connected to Complainant. For example, each of the websites is branded MONSOON, and contains photographs from Complainant’s website. (See Annexes 22 and 23 to the Complaint)
To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HK0800008).
Given the widespread reputation of the MONSOON Marks (as well as the content on the websites mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain names have a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the websites to which the disputed domain names resolved (see Annexes 5-8, 15-18 and 19 to the Complaint). In other words, Respondents have through the use of confusingly similar domain names and webpage contents created a likelihood of confusion with the MONSOON Marks. Noting also that apparently no clarification as to Respondents’ relationship to Complainant is made on the homepages of the disputed domain names, potential Internet users are led to believe that the websites resolved by the disputed domain names are either Complainant’s sites or the sites of official authorized agents of Complainant, which it is not. Moreover, Respondents have not responded formally to the Complaint. The Panel therefore concludes that the disputed domain names were used by Respondents in bad faith.
In summary, Respondents, by choosing to register and use the disputed domain names which are confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondents, the choice of the disputed domain names and the conducts of Respondents as far as the websites to which the disputed domain names resolve are indicative of registration and use of the disputed domain names in bad faith.
The Panel therefore holds that the Complaint fulfills the third condition of paragraph 4(a) of the Policy. 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 names , , and be transferred to Complainant.
Yijun Tian
Sole Panelist
Date: December 12, 2012
Full & Egal Universal Law Academy