Complainant is Coast Fashions Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Heatons LLP, United Kingdom.
Respondent is quan donglai of Xiamen, Fujian Province, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Beijing Innovative Linkage Technology Ltd. dba (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2013. On February 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On February 27, 2013, the Center transmitted an email communication to the parties in Chinese and English regarding the language of the proceeding. On the same day, the Center requested Complainant to amend the relevant parts of the Complaint regarding the information of the Respondent and the Registrar.
On March 5, 2013, Complainant requested a short extension to file an amended Complaint. On March 6, 2013, the Center confirmed the due date of filing any amended Complaint was extended to March 8, 2013. On March 8, 2013, Complainant submitted an amended Complaint including the language request. Respondent 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 Respondent of the Complaint, and the proceedings commenced on March 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 12, 2013.
The Center appointed Yijun Tian as the sole panelist in this matter on April 18, 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
Complainant, Coast Fashions Limited, is a company incorporated in London, United Kingdom. Complainant is a leading retailer of ladies fashion industry. It was found in English in 1981, and currently trades from over 344 Coast stores in 24 countries worldwide.
Complainant has exclusive rights in the COAST marks. Complainant is the exclusive owner of famous and well-known registered trademarks globally, particularly in the United Kingdom (since 1998) and the Europe Community (see Annex C to the Complaint). It also owns the domain name registration
(from which it sells and delivers clothing).
Respondent is quan donglai of Xiamen, Fujian Province, China. The disputed domain name was registered on September 26, 2012, long after the COAST Marks became internationally famous. 5. Parties’ Contentions A. Complainant
(a) The disputed domain name is identical and confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant is the registered proprietor of an international portfolio of registered trademarks for the mark COAST, particularly registrations in the United Kingdom (since 1998) and the Europe Community. (Annex 3 to the Complaint).
Complainant has been using the name COAST in connection with the retail sale of clothing since 1981, and has now become a global business at the forefront of ladies fashion. It currently trades from over 344 Coast stores in 24 countries from Europe to the United States of America, the Russian Federation, Australia, Asia and the Middle East.
The international retail value of products solder under the COAST brand is UK pounds 130,000,000 for the year ended January 31 2013.
The disputed domain name is virtually identical to the trademarks owned by Complainant. The distinctive element of the disputed domain name is “coast” and Complainant is the lawful owner of the mark COAST.
(b) Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has no rights or legitimate interests in respect of the disputed domain name that is the subject of the Complaint.
Respondent is in no way connected with Complainant and is not licensed by Complainant to use the disputed domain name and yet Respondent has been offered Coast branded product for sale via the website to which the disputed domain name resolves.
This clothing has been verified as being counterfeit and these sales have been causing considerable damage to Complainant’s business. (Annex 4 to the Complaint).
(c) The disputed domain name was registered and is being used in bad faith.
The disputed domain name has been registered solely for the purposes of offering for sale and selling counterfeit Coast branded products at aggressively low prices via the website to which the disputed domain name points.
Members of the public have been consumed into thinking that the website to which the disputed domain name points is owned and operated by Complainant.
And upon receipt of poor quality garments purchased from this website, complaints have been made to Complainant’s customer service representatives and the clothing has been verified as counterfeit. B. Respondent
Respondent did not reply to 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. 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 Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) Complainant is not aware if the registration agreement specifies a language in which the Complaint should be filed.
(b) Complainant should not be put to the expense of obtaining a translation of the registration agreement (Annex 2 to the Complaint), as this may be an unnecessary and unrecoverable expense.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
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. (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”) 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 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, paragraph 4.3; 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 United Kingdom, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the website at the disputed domain name includes English words “coast”, “dress” and “store” (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name is registered in Latin characters and particularly in English language, rather than Chinese script; (b) the website at the disputed domain name is an English-based website and Respondent is apparently doing business in English through this website (Annex 4 to the Complaint); (c) the website appears to have been directed to users worldwide (particularly English speakers) rather than Chinese speakers; (d) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; (e) the Center informed Respondent 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. 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 name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is 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 COAST marks acquired through registration. The COAST marks have been registered globally, and Complainant has a widespread reputation as a leading retailer of ladies fashion industry.
The disputed domain name comprises the COAST mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the addition of the words “dress” and “store” to the mark COAST. This does not seem to eliminate the identity or at least the similarity between Complainant’s registered trademark and the disputed domain name.
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 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).
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 “dress” and “store” as suffixes to Complainant’s mark fails to distinguish to this Panel the disputed domain name from Complainant’s trademark. By contrast, it may increase the likelihood of confusion. “Dress” are one of major products of Complainant. One of common meanings of the term “store” is a shop that sells the goods of a particular manufacturer or wholesaler. Internet users who visit are likely to be confused and may falsely believe that is an online shop operated by Complainant for selling Coast-branded products, particularly dress. Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the COAST 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 Respondent has rights or legitimate interests in the disputed domain name:
(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has commonly been known by the disputed domain name; or
(iii) legitimate noncommercial or fair use of the disputed domain name.
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 respondent to rebut complainant’s contentions. If 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 COAST marks globally, including registration in the United Kingdom since 1981 (see Annex 3 to the Complaint) which long precedes Respondent’s registration of the disputed domain name (on September 26, 2012).
According to Complainant, Complainant is the world’s leading retailer in ladies fashion industry. It was found in English in 1981, and currently trades from over 344 Coast stores in 24 countries worldwide. The international retail value of products solder under the COAST brand is UK pounds 130,000,000 for the year ended January 31, 2013.
Moreover, Respondent is not an authorized dealer of Coast branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent 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 Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “coast” in its business operation or the use of the COAST marks and design on its website (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the COAST marks or to apply for or use any domain name incorporating the COAST marks;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name on September 26, 2012, long after the COAST marks became internationally famous. The disputed domain name is identical or confusingly similar to Complainant’s COAST marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported Coast products at the website of the disputed domain name (Annex 4 to the Complaint).
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils 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 name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name 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 Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s website 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 Respondent has registered and used the disputed domain name in bad faith.
a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the COAST marks with regard to its products. Complainant has registered its COAST marks internationally, including registration in the United Kingdom (since 1981). Moreover, the website advertises for sale various purported Coast products, particularly dress. Respondent would likely not have advertised products purporting to be Coast products on the website if it was unaware of Complainant‘s reputation. In the other words, it is not conceivable to the Panel that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the COAST 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, Respondent has 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 name was registered in bad faith with the intent to create an impression of an association with Complainant’s Coast branded products.
b) Used in Bad Faith
Complainant claimed that the disputed domain name has been registered solely for the purposes of offering for sale and selling counterfeit Coast branded products at aggressively low prices via the website to which the disputed domain name points. Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” offering purportedly Complainant’s Coast branded products and services without authorization.
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. HKcc-0800008).
Given the widespread reputation of the COAST marks (as well as the content on the website mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved (see Annex 4 to the Complaint). In other words, Respondent has through the use of a confusingly similar disputed domain name and webpage contents created a likelihood of confusion with the COAST marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential Internet users are led to believe that the website at the disputed domain name is either Complainant’s sites or the sites of official authorized agents of Complainant, which it is not. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use a domain name which is 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 Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website on to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils 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 name be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: May 13, 2013
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