The Complainant is J. Choo Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by A. A. Thornton & Co., United Kingdom.
The Respondents are Lin Zhiqiang of Putian, Fujian Province, China; Linzhiqiang of Shanghai, China; Zhiqiang Lin/Lin Zhi Qiang of Xiamen, Fujian Province, China; logworm of Shanghai, China.
The above-mentioned Respondents shall be referred to collectively as the “the Respondent” hereinafter. 2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with B, Inc.
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with Chengdu West Dimension Digital Technology Co., Ltd.
The disputed domain name is registered with Shanghai Yovole Networks, Inc.
The disputed domain name is registered with Hang Zhou E-Business Services Co., Ltd.
The disputed domain names and are registered with Jiangsu Bangning Science & technology Co. Ltd.
The disputed domain names , and
are registered with HooYoo Information Technology Co. Ltd.
The disputed domain names and are registered with Beijing Innovative Linkage Technology Ltd. dba .
The above-mentioned domain names shall be referred to collectively as the “Disputed Domain Names” hereinafter. The above-mentioned registrars shall be referred to collectively as the “Registrars” hereinafter. 3. Procedural History
The Complaint was filed against 64 disputed domain names with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2012. On December 12, 2012, the Center transmitted by email to the Registrars (except for Beijing Innovative Linkage Technology Ltd. dba ) a request for registrar verification in connection with the 64 disputed domain names. On December 13, 2012 and December 14, 2012, the Registrars (except for Beijing Innovative Linkage Technology Ltd. dba ) transmitted respectively by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
On December 18, 2012, the Center sent an email communication to the parties in both Chinese and English regarding language of the proceeding. On the same day, the Center sent a separate email to the Complainant informing the Complainant that the Complaint was administratively deficient. On December 21, 2012, the Complainant confirmed its request that English be the language of the proceeding, and filed an amended Complaint. In the same email, the Complainant requested to include additional 10 dispute domain names into the current proceedings. On December 21, 2012, the Center transmitted by email to B, Inc, Chengdu West Dimension Digital Technology Co., Ltd. and Beijing Innovative Linkage Technology Ltd. dba a request for registrar verification in connection with the newly added disputed domain names. On December 24, 2012, the aforementioned three Registrars transmitted respectively by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. The Respondent did not comment on the language of the proceeding in relation to the Center’s email of December 18, 2012 by the specified due date.
On January 3, 2013, the Center sent an email communication to the parties in both Chinese and English regarding language of the proceeding for newly added disputed domain names. On the same day, 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.
On January 8, 2013, the Center informed the parties that the Center noted the disputed domain name at that time redirected to the website “” which indicated that this disputed domain name may be involved in an ongoing court proceeding. Accordingly, the parties were requested to inform the Center of any ongoing or concluded court proceedings of which they were aware concerning any of the domains subject to these proceedings. On January 14, 2013, the Complainant requested to remove the disputed domain name from the current proceedings by filing an amendment to the Complaint.
The Center verified that the Complaint together with the amended Complaint and the amendment to 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 January 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2013.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on February 19, 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 factual findings pertinent to the decision in this case are that:
The Complainant’s products marketed under the JIMMY CHOO trademark include luxury footwear, handbags, small leather goods, scarves and belts. The Complainant’s products are available through retailers and online at the website “”.
The Complainant is the owner of numerous registered trademarks for JIMMY CHOO, inter alia, Community Trade Mark Registration No. 2587830 JIMMY CHOO in classes 3, 9, 14, 18, 25 and 35 and Chinese Trade Mark Registration No. 3189592 JIMMY CHOO in class 18.
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , and resolve to websites which offer for sale footwear by reference to the trademarks JIMMY CHOO and/or LOUBOUTIN.
The disputed domain name redirects to , under which the website sells many different brands of shoes.
The disputed domain name resolves to a website which offers for sale many brands of designer sunglasses.
The disputed domain name resolves to a website which offers for sale many brands of sport footwear.
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are inactive. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions could be summarized as follows:
(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Disputed Domain Names incorporate the Complainant’s registered JIMMY CHOO trademark in its entirety. The Respondent registered the Disputed Domain Names combining the Complainant’s registered trademark with various combinations of generic words or numbers comprised of ‘2’, ‘4’, ‘2013’, ‘australia’, ‘au’, ‘big’, ‘boots’, ‘bridal’, ‘cheap’, ‘online’, ‘outlet’, ‘sale’, ‘shoe’, ‘shoes’, ‘shop’, ‘store’, ‘uk’, ‘usa’, ‘web’ and ‘wedding’. The incorporation of generic terms, terms referring to locations and numbers that had a relationship to the Complainant’s business actually increases the likelihood of confusion for consumers.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
The Respondent is not authorized by the Complainant to register the domain names or offer the Complainant’s products for sale. Several websites of the Disputed Domain Names sell footwear by reference to the trademark JIMMY CHOO and LOUBOUTIN, which is a competitor of the Complainant. The Respondent also uses Complainant’s genuine style names to refer to shoes shown for sale on the websites at the Disputed Domain Names.
For those inactive Disputed Domain Names, a Reverse WhoIs report indicates that at least 208 domains are subject to the Respondent’s control. All the domain names in the report incorporate well-known trademarks of various brands, in conjunction with generic words. It is highly unlikely that the Respondent has a legitimate interest in the Disputed Domain Names that are currently inactive.
(iii) The Disputed Domain names were registered and are being used in bad faith.
The Respondent appears to have gone through a process of systematic mass registration of domain names incorporating many combinations of words that have a relevance to the Complainant’s business in conjunction with the Complainant’s registered trademark JIMMY CHOO. The registration of over 200 domain names containing trademarks of different brands also represents a pattern of bad faith conduct.
The Respondent displays the Complainant’s genuine advertising images and uses the Complainant’s style names to create an impression that the Respondent’s websites are connected to, affiliated with, or endorsed by the Complainant and will divert Internet users searching for the Complainant’s products away from the Complainant’s genuine website. The goods of competitors of the Complainant are also purportedly sold on the Respondent’s websites. It is disruptive to the Complainant’s business.
Given the misleading manner of use of the websites and the fact that the Respondent owns at least 208 domain names incorporating well-known trademarks, the passive holding of the currently inactive Disputed Domain Names is ‘use’ in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Preliminary Procedural Issues A. Consolidation of Multiple Domain Names and Respondents
Paragraph 3(c) of the Rules provides that “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” Paragraph 10(e) of the Policy provides that “a Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.”
The Complainant requests the Panel to consolidate 73 Disputed Domain Names and 5 Respondents into one administrative proceeding.
In order for the Panel to decide in favor of the Complainant’s request for consolidation, the Complainant must show that the Disputed Domain Names or the websites to which they resolve are subject to common control, and that consolidation would be fair and equitable. (See paragraph 4.16 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”); Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281).
The Panel notes that the names of the Respondent are Lin Zhiqiang, Linzhiqiang, Zhiqiang Lin and Lin Zhi Qiang, which are likely variations of spelling of the same Chinese name. The Respondent logworm registered but the billing contact person for which is still zhiqiang lin. All of the Disputed Domain Names are registered to the same email address, namely […]@. The fax numbers of Lin Zhi Qiang, Lin Zhiqiang and Zhiqiang Lin are identical; the fax numbers of Linzhiqiang and logworm are the same. The websites to which the active Dispute Domain Names resolve are highly similar, even selling the same products or using the same pictures, images and sharing a highly common style of website design.
The Respondent has also failed to respond to the Complaint against the 73 Disputed Domain Names.
Based on the evidence before it, the Panel finds that the Disputed Domain Names are subject to common control and it is fair and equitable to consolidate 73 Disputed Domain Names and 5 Respondents into one administrative proceeding. B. Language of Proceeding
Paragraph 11(a) of the Rules provides that “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”.
The Rules allow 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. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceeding 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 2.0 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”. (See paragraph 4.3 of WIPO Overview 2.0).
The Complainant requested that the language of the proceeding be English. The Complainant raised the following arguments to support its request: (i) The Respondent has registered 73 domain names incorporating a registered trademark in English in conjunction with various combinations of generic English words; (ii) the Disputed Domain Names that resolve to active websites contain content that is in English.
Despite of the fact that the language of the Registration Agreements for the Disputed Domain Names are all in Chinese, the Panel notes the following facts:
(i) The Respondent has chosen generic English words in conjunction with the Complainant’s trademark JIMMY CHOO in different variations to form the Disputed Domain Names.
(ii) The websites under active Disputed Domain Names are all in English and use extensive English.
(iii) The Center has sent an email communication to the parties, in both Chinese and English, regarding the language of the proceeding of the Disputed Domain Names.
(iv) The Respondent did not respond to the foregoing bilingual email communication.
Given to the foregoing facts, the Panel is satisfied that the Respondent has sufficient familiarity with English that the Respondent should be able to understand the language of the Complaint and has chosen not to respond. 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. 7. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established that it is the owner of a number of JIMMY CHOO trademarks in China and internationally. Further, the filed evidence establishes that the Complainant’s products have been sold on a substantial and world-wide basis under this trademark, including China.
The threshold test for confusing similarity under paragraph 4(a)(i) of the Policy involves a comparison between the trademark and the domain name itself to determine the likelihood of confusion by Internet users. The trademark at issue generally needs to be recognizable as such within the domain name, and the addition of common, dictionary, descriptive or negative terms are typically not regarded as sufficient to prevent threshold confusion by Internet users (see paragraph 1.2 of WIPO Overview 2.0).
The Disputed Domain Names all contain the “jimmychoo” element, which is identical to Complainant’s JIMMY CHOO trademark, in conjunction with other generic terms, such as “2”, “4”, “2013”, “australia”, “au”, “big”, “boots”, “bridal”, “cheap”, “online”, “outlet”, “sale”, ‘shoe”, “shoes”, “shop”, “store”, “uk”, “usa”, “web” and “wedding”, in different variations.
Terms such as “big”, “boots”, “bridal”, “cheap”, “online”, “outlet”, “sale”, “shoe”, “shoes”, “shop”, “store”, “web” and “wedding” are all descriptive and generic. Terms such as “australia”, “au”, “uk”, “usa” are only indications of locations. “2013” indicates a time; “2” and “4” are read as “to” and “for”. The JIMMY CHOO element is still immediately recognizable as the Complainant’s trademark. In the Panel’s view, the addition of other generic terms does not mitigate the likelihood of confusion between the Disputed Domain Names and Complainant’s JIMMY CHOO trademark. (J. Choo Limited v. Weng Huangteng,WIPO Case No. D2010-0126; J. Choo Limited v. Hui Wang aka Wang Hui,WIPO Case No. D2010-0534).
As for the applicable top-level suffix such as “.com“, “.org” or “.net” in the Disputed Domain Names, it is a consensus view that it could usually be disregarded under the confusing similarity test (MADRID 2012, S.A. v. Scott Martin-MadridMan Websites,WIPO Case No. D2003-0598; also see paragraph 1.2 of the WIPO Overview 2.0).
Accordingly, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, whereby: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant […]”.
In the present case, the Complainant has established that it is the owner of the JIMMY CHOO trademarks in China, and it has extensively used the JIMMY CHOO trademark on the Internet through its website “”, which attracts large volumes of traffic from countries all over the world.
Furthermore, the Complainant has stated that it has no connection or affiliation with the Respondent. The Respondent has not received any authorization from the Complainant to use the JIMMY CHOO trademarks in the Disputed Domain Names or in any other manner.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Names.
The Respondent failed to respond to the Complaint or produce any evidence or allegations demonstrating rights or legitimate interests in the Disputed Domain Names. Thus, there is no evidence that the Respondent has rights in a personal name, company name or other right related to the “jimmychoo” element used in the Disputed Domain Names.
The Panel further notes that the websites under the active Disputed Domain Names (except for the disputed domain names and ) all show images of shoes with the JIMMY CHOO trademark. The Complainant contends that these goods are counterfeit and even if they are genuine, the Respondent still cannot claim a legitimate interest in these Disputed Domain Names as the use is misleading.
The consensus view of UDRP panels on the rights or legitimate interests of a reseller or distributor under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.3 of the WIPO Overview 2.0, whereby: “normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant’s relationship with the trademark holder. […].” (See also, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; National Association of Realtors v. John Fothergill,WIPO Case No. D2010-1284).
The websites selling footwear with JIMMY CHOO trademark under the active Disputed Domain Names do not actually and prominently disclose the Respondent’s relationship with the Complainant. Websites to which , and resolve claim that they are powered by “jimmy choo 2013”, “” and “Jimmy Choo Australia”. The Panel need not decide whether the goods sold on the website are genuine, since the Respondent cannot claim rights or legitimate interests to the Disputed Domain Names when it fails to accurately and prominently disclose the relationship between the parties and even confuse Internet users. (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy explicitly states, in relevant part, that if the Panel finds the following circumstances, it shall be evidence of the registration and use of a domain name in bad faith:
“(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.”
In the present case, the Panel notes that the Respondent registered 73 Disputed Domain Names incorporating the Complainant’s JIMMY CHOO trademark as the prominent and distinctive part. The Respondent is using the Disputed Domain Names that resolve to active websites to sell footwear with the Complaint’s trademark and knows or should have known the fame of the trademark. Such mass registration demonstrates that the Disputed Domain Names were registered in bad faith.
Further, the websites at the Disputed Domain Names (captured on January 15, 2013) indicate that the Respondent uses the active Disputed Domain Names to “attract, for commercial gain, Internet users to the holder’s websites” where it purportedly sells goods with JIMMY CHOO trademarks and trademarks of the Complainant’s competitors.
Regarding those Disputed Domain Names that are currently inactive, the fact that the Respondent passively holds the inactive Disputed Domain Names does not prevent the Panel from a finding of use in bad faith. The Panel must still examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. (Paragraph 3.2 of WIPO Overview 2.0).
The Panel looks into the present case in its entirety and finds that the Respondent has engaged in a large scale registration of domain names that incorporate the JIMMY CHOO trademark as the distinctive part. Many of the Disputed Domain Names are currently being used in bad faith as described above. The Complainant has also provided a Reverse WhoIs report demonstrating that the Respondent has registered or exerts control over more than 200 domain names containing different well-known trademarks (Annex L of the Complaint). It is highly possible that the Respondent passively holds the inactive Disputed Domain Names for some future active use in a way that would be competitive with or otherwise detrimental to the Complainant. (Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574).
According to the foregoing cumulative facts, the Panel finds that the Respondent’s passive holding of the Disputed Domain Names that are currently inactive constitutes use in bad faith.
Having considered the above, the Panel finds that the Respondent has registered and is using all of the Disputed Domain Names in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy. 8. 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.
Peter J. Dernbach
Sole Panelist
Date: March 5, 2013
Full & Egal Universal Law Academy