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 Yan Cai of Changde, Hebei, China. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2012. On December 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 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 December 5, 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 proceedings. 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 December 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2013.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on January 16, 2013. 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 footwear and accessories all over the world under the trademark CLARKS, and has done so for decades. The Complainant is the registered owner of word and figurative trademarks consisting of the word “clarks” in a number of jurisdictions, including China (word mark no. 3963432 acquired in 2009), and in Europe (Community Trade Mark no. 167940, acquired in 1998). The Complainant also operates a product sales website linked to .
The Respondent is based in China. The disputed domain name was registered on May 24, 2012. 5. Parties’ Contentions A. Complainant
The Complainant requests the proceedings be in English because (1) the disputed domain name includes the English words “shoe” and “sales”,(2) the website linked to the disputed domain name is entirely in English and is designed to conduct business using English, and (3) it would be costly and prejudicial to conduct the proceedings in Chinese.
The Complainant claims the disputed domain name is confusingly similar to the Complainant’s CLARKS trademark because the disputed domain name contains the trademark in its entirety and because the insertion of the generic terms “shoe” and “sales” and the country code “uk”(which is also a TLD) does not distinguish the disputed domain name from the CLARKS trademark. Instead, the inclusion of the generic words and the country code increases the likelihood of confusion because the term falsely indicates the website linked to the disputed domain name sells Clarks goods.
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 “clarksshoesalesuk”, (2) the Complainant’s CLARKS trademark is well-known throughout the world, (3) the Complainant has not authorized the Respondent to use the CLARKS mark in any way, including for registering the disputed domain name or offering Clarks products for sale, (4) the Respondent’s use of the disputed domain name (for ecommerce sales) 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 CLARKS 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 Clarks 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 proceedings. The Respondent has not commented regarding the language of the proceedings. 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 English language words added to the Complainant’s CLARKS 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 CLARKS recognized in China and elsewhere (Complaint Annex C) prior to the registration of the disputed domain name in 2012. 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 CLARKS trademark with the generic terms “shoe” and “sales” and the country code “uk”. The Panel views the “clarks” portion of the disputed domain name as identical to the Complainant’s CLARKS 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.” Advanced Magazine Publishers Inc. v. Computer Dazhong,WIPO Case No. D2003-0668. The Panel finds that the Complainant has established its rights in the CLARKS trademark.
The mere addition of a generic term to the Complainant’s CLARKS 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 terms and country code do not reduce the prominence of the Complainant’s trademark therein. Rather, the additional terms increase the likelihood of confusion because they suggest that the Complainant’s goods are being offered for sale by the Respondent, and so the terms relate directly to the Complainant’s business and goods associated with the CLARKS trademark. Chanel, Inc. v. Cologne Zone,WIPO Case No. D2000-1809. Furthermore, the Panel does not believe that the inclusion of the generic terms to the Complainant’s CLARKS 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 CLARKS 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 “clarksshoesalesuk”. 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 CLARKS 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 “clarks” and “shoes”, “sales”, or “uk” 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 true at the time the disputed domain name was registered. The Panel finds that the Respondent was likely aware or should have known of the Complainant rights when registering the disputed domain name. This is particularly true in light of the fact that the Complainant is actively operating a sales website linked to .
The record also shows that the website linked to the disputed domain name features the CLARKS trademark, as well as associated style names and stylized marks, and advertises similar-looking goods as those offered by the Complainant under the CLARKS 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 CLARKS 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 CLARKS 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 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 or good faith 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
Date: January 21, 2013
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