The Complainant is J. Choo Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by A. A. Thornton & Co., United Kingdom.
The Respondent is Kailong Wen of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2012. On September 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On September 4, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On September 5, 2012, 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 September 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2012.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on October 10, 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 offers luxury footwear and a number of luxury accessories all over the world under the trademark JIMMY CHOO, and has done so since 2001. The Complainant is the registered owner of trademarks consisting of the words “jimmy choo” in a number of jurisdictions, including China (marks acquired in 2009-2010), and the Complainant has owned a European Community trademark in JIMMY CHOO since at least 2002. The Complainant also operates a website linked to domain names having the words “jimmy choo” as the entirety of the second level domain, including ).
The Respondent is based in China. The disputed domain name was registered on December 26, 2011. 5. Parties’ Contentions A. Complainant
The Complainant requests the proceedings be in English because the disputed domain name includes the English word “stock” and because the website linked to the disputed domain name consists entirely of English descriptions of the Complainant’s goods and the Complainant’s English style names.
The Complainant claims the disputed domain name is confusingly similar to the Complainant’s JIMMY CHOO trademark because the disputed domain name contains the trademark in its entirety and because the insertion of the generic term “stock” does not distinguish the disputed domain name from the JIMMY CHOO trademark. Instead, the inclusion of the word “stock” increases the likelihood of confusion because the term falsely indicates the website linked to the disputed domain name stocks JIMMY CHOO products for sale.
The Complainant claims the Respondent has no rights or legitimate interests in the disputed domain name because (1) there is no evidence that the Respondent has previously been known under the disputed domain name or under the phrase “jimmy choo”, (2) the Complainant’s JIMMY CHOO trademark is very well-known throughout the world, (3) the Complainant has not authorized the Respondent to use the JIMMY CHOO mark in any way, including for registering the disputed domain name or offering JIMMY CHOO products for sale, (4) the Respondent does not use the disputed domain name in connection with the bona fide offering of goods or services because the items offered for sale on the website linked to the disputed domain name appear counterfeit, (5) even if the products offered for sale by the Respondent are not counterfeit, the Respondent’s use of the disputed domain name intentionally misleads consumers and diverts them away from the Complainant’s authorized businesses, and (6) the Respondent’s use of the disputed domain name is not a legitimate noncommercial or fair use.
The Complainant claims the Respondent has registered and is using the disputed domain name in bad faith because (1) the Complainant’s JIMMY CHOO trademark is very well-known, and the Respondent would have been aware of the Complainant when registering the disputed domain name, (2) the unauthorized offer of JIMMY CHOO products coupled with the featuring of the Complainant’s style names and stylized mark on the website linked to the disputed domain name indicates that the Respondent has intentionally attempted to attract consumers by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website linked to the disputed domain name, and (3) the Respondent’s registration of the disputed domain name is primarily aimed at disrupting the Complainant’s business by diverting consumers away from the Complainant’s legitimate websites. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. The Complainant has requested that English be recognized as the language of the proceeding. The Respondent has not commented regarding the language of the proceeding. The Center has communicated notice of the Complaint in both the English and Chinese languages and has invited the Respondent to answer the Complaint in either language.
The content featured on the website linked to the disputed domain name is displayed in English, and this demonstrates to the Panel that the Respondent has a working knowledge of the English language. Furthermore, the disputed domain name features an English language word added to the Complainant’s JIMMY CHOO trademark. Taking the foregoing points into account along with the Respondent’s default and lack of any communication in this proceeding, the Panel concludes that English should be the language of the proceedings. Translation of the Complaint and other materials would cause unnecessary cost and delay. B. Identical or Confusingly Similar
The record shows the Complainant owns trademark rights in JIMMY CHOO recognized in the European Union and China prior to the registration of the disputed domain name in 2011. The record also shows that the Respondent is attempting to use the disputed domain name in connection with the sale of goods.
The disputed domain name combines the literal element consisting of the Complainant’s JIMMY CHOO trademark with the generic term “stock”. The Panel views the “jimmy choo” portion of the disputed domain name as identical to the Complainant’s JIMMY CHOO trademark, and so the disputed domain name features the Complainant’s trademark in its entirety.
“The Policy requires that the disputed domain name must be identical or confusingly similar to a mark in which the Complainant has rights. This requirement can be satisfied by proof that the Complainant is the owner or licensee of a registered mark anywhere in the world – not just in the country of Respondent’s residence.” See, e.g., Advanced Magazine Publishers Inc. v. Computer Dazhong,WIPO Case No. D2003-0668. The Panel finds that the Complainant has established its rights in the JIMMY CHOO trademark.
The mere addition of a generic term to the Complainant’s JIMMY CHOO trademark is not normally sufficient to overcome a finding of confusing similarity. “In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to the mark.” Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227. “The issue is not whether confusion is likely in the trademark sense (that is, confusion as to source based on the domain name and its use in connection with a website), but rather, whether the domain name, standing alone, is sufficiently similar to the trademark to justify moving on to other elements of a claim for cybersquatting.” F. Hoffmann-La Roche AG v. P Martin,WIPO Case No. D2009-0323. “Each case must be judged on its own facts, and the assessment will always depend on the specific mark and the specific domain name.” Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227.
Here, the disputed domain name incorporates the entirety of the Complainant’s trademark, and the additional generic term does not reduce the prominence of the Complainant’s trademark therein. Rather, the additional generic term increases the likelihood of confusion because it suggests the Complainant’s products are stocked for sale by the Respondent, and so the term relates directly to the Complainant’s business and goods associated with the JIMMY CHOO trademark. Chanel, Inc. v. Cologne Zone,WIPO Case No. D2000-1809. Furthermore, the Panel does not believe that the inclusion of the generic term to the Complainant’s JIMMY CHOO trademark creates a new or different mark or literal element which is materially different from the Complainant’s trademark. It is therefore likely that consumers would be confused by the use of the trademark in the disputed domain name.
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s JIMMY CHOO trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. C. Rights or Legitimate Interests
The Panel finds there is no evidence in the record to indicate that the Respondent is associated or affiliated with the Complainant or that the Respondent has any other rights or legitimate interests in the phrase “jimmy choo”. As such, the Complainant has successfully presented a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent has not rebutted. Discussed more fully below, the Panel also finds the Respondent is not engaged in a bona fide offering of goods and services. Finally, there is no evidence in the record to indicate that the Respondent’s use of the disputed domain name is a legitimate noncommercial or fair use, or that the Respondent is commonly known by the disputed domain name.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. D. Registered and Used in Bad Faith
The record shows the Complainant owns trademark rights in JIMMY CHOO that precede creation of the disputed domain name. The disputed domain name is predominantly composed of the trademark and incorporates the trademark in its entirety. A simple Internet search for “jimmy choo” results in links predominantly related to the Complainant and its websites, and it is likely, given the notoriety of the Complainant’s business, that this was also true at the time the disputed domain name was registered. The Panel finds that the Respondent was likely aware of the Complainant or should have known of the Complainant when registering the disputed domain name.
The record also shows that the website linked to the disputed domain name features the JIMMY CHOO trademark, as well as associated style names and stylized marks, and advertises similar-looking goods as those offered by the Complainant under the JIMMY CHOO mark. The Panel finds that the Respondent’s advertisement of goods constitutes commercial competition with the Complainant and the Complainant’s products that trades on the goodwill invested by the Complainant in the JIMMY CHOO trademark.
The use of a domain name featuring a trademark to advertise goods or services which compete with those provided under that trademark supports a finding that the domain name registrant was aware of the other party’s mark at the time the domain name was registered. Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited,WIPO Case No. D2009-0728. Moreover, by registering a domain name using the Complainant’s JIMMY CHOO trademark and advertising goods in competition with the Complainant using the Complainant’s well-known marks and style names, the Respondent is intentionally diverting traffic from the Complainant’s business and websites.
Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use.
The record shows that the Respondent has used the disputed domain name to advertise possibly counterfeit goods in direct commercial competition with the Complainant and the Complainant’s products. Moreover, the incorporation of the Complainant’s trademark into the disputed domain name combined with the content featured on the linked website, all implemented without publishing an accurate disclosure of the Respondent’s relationship with the Complainant, illustrates an intent on the part of the Respondent to deceive consumers into believing that the disputed domain name and the goods offered for sale by the linked website are associated with, affiliated with, and/or endorsed by the Complainant. The record offers no evidence leading to a different explanation. The Panel finds that these actions cannot constitute a bona fide use.
The Panel concludes that the Respondent’s conduct falls within the scope of paragraph 4(b)(iv) of the Policy. 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.
Kimberley Chen Nobles
Sole Panelist
Dated: October 30, 2012
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