The Complainant is Dillard's Inc. of Little Rock, Arkansas, United States of America, represented internally.
The Respondent is Xue Dongpang of Huangzhou Ou, Chongging, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on February 25, 2013. On February 26, 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 the Respondent was listed as the registrant and providing the contact details for the disputed domain name. The Complainant filed an amendment to the Complaint on February 27, 2013.
The Center verified that the Complaint together with 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 March 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2013.
The Center appointed Alistair Payne as the sole panelist in this matter on April 2, 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 is a department store with more than 300 branches in the United States. It owns a number of trade mark registrations incorporating the mark DILLARD’S dating from as early as 1979, in particular but without limitation, word mark registrations in the United States dating from a filing date in 2002 for DILLARD’S under registration number 2868511, and for DILLARDS.COM under registration number 76477304, from which domain name it also operates a website for its on-line store. It also owns a trade mark registration in China for the word mark DILLARD’S under registration number 8369976. The Complainant is an authorized retailer of UGG Australia1 and sells those products both from its retail and on-line stores.
The Respondent registered the disputed domain name on November 5, 2012. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns registered trade mark rights in the marks DILLARD’S and DILLARDS.COM and that the disputed domain name is confusingly similar to either of these marks.
The Complainant says that the Respondent owns no registered trade mark rights in “Dillards” or “DillardsU” and does not appear to use these terms as trade marks on the website to which the disputed domain name resolves. It says further that there is no evidence that the Respondent has used the disputed domain name in relation to a bona fide offering of goods or services, is commonly known by these names or marks or is making a legitimate or noncommercial fair use of the disputed domain name.
As far as bad faith is concerned, the Complainant submits that the Respondent is not an authorized dealer of UGG Australia products (whereas the Complainant is so authorized) and yet the Respondent is using the disputed domain name to resolve to a website at which it is offering for sale, to people in various countries in the world, including the United States, UGG Australia products at deeply discounted prices. The Complainant says that the Respondent is using its trade marks to intentionally divert potential customers to this website, at the disputed domain name, in order to sell products that it represents as UGG Australia products but which the Complainant suggests may well be counterfeit or unauthorized products, on the basis that the Respondent is not an authorized UGG Australia dealer. The Complainant says further that the unauthorized use of the UGG mark on the Respondent’s website is further evidence of its bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered trade mark rights in both the United States and in China in the DILLARD’S word mark. Based on the material before the Panel and the very substantial network of retail stores that the Complainant operates across the United States, it appears that the Complainant’s mark has enjoyed a significant degree of renown there for many years and is very well established.
The disputed domain name incorporates the Complainant’s DILLARD’S mark (albeit without an apostrophe, which is not surprising as it would not be possible to include one in a domain name) as the first element and secondly incorporates the term “uggs”, which is obviously a reference to the footwear products sold under the UGG mark by UGG Australia.
The Panel finds that the DILLARD’S mark is the dominant element of the disputed domain name as it comes first and qualifies the term “uggs”. People seeing the disputed domain name would, in the Panel’s view, be likely to associate it with the Complainant in some manner. Most probably they would assume that the disputed domain name was owned by, or was affiliated with, the Complainant and was being used by it to market UGG products. Although the assessment of confusing similarity in cases such as this involving two trademarks combined in a domain name will inevitably turn on their particular facts, this approach is consistent with the panel’s approach in this regard in Abertis Infraestructuras, S.A. v. Syed Hussain (PDAPB) WIPO Case No. D2006-1007.
Therefore the Panel finds that the disputed domain name is confusingly similar to the Complainant’s DILLARD’S mark and as a result the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests
There is no evidence before the Panel to suggest that the Respondent has any rights to, is known by, or has made a bona fide use of the disputed domain name or of the DILLARD’S mark in relation to its own goods and services such that it has acquired rights or interests in the that mark or in the disputed domain name. For the reasons set out under Part C below the Panel in fact considers that the Respondent has not made a legitimate or bona fide use of the disputed domain name containing the Complainant’s mark and therefore that the Respondent has no rights or legitimate interests in the disputed domain name. As a consequence the Panel finds that the Complaint succeeds under the second element of the Policy. C. Registered and Used in Bad Faith
It is clear that the Complainant has for many years made a very substantial use of the DILLARD’S mark at least in the United States and also as a result of its on-line sales. The Panel accepts that the Complainant is an authorized UGG Australia dealer, as listed on that company’s website, but that the Respondent not being listed there is not so authorized. The Panel also notes the Complainant’s Chinese trade mark registration for the DILLARD’s mark that dates from 1992, and which suggests that the Complainant and its mark are known at least to some people in China.
In these circumstances, and considering the use that the Respondent has made of the disputed domain name to resolve to a website at which it represents itself as if it is the Complainant, for example, by using the strap line “Discount dillards UGGS on-line, high quality UGG boots at dillards, just join us” there is an irresistible inference that the Respondent, even though apparently based in China, registered the disputed domain name in November 2012, in full knowledge of the Complainant’s interest and rights in the DILLARD’s mark and with the intention of diverting Internet users to the Respondent’s website at the disputed domain name by confusing them as to whether they were at one of the Complainant’s official sites, or at the least at a website that had some affiliation with the Complainant and which was authorized by the Complainant.
Once at the Respondent’s website, at the disputed domain name, the diverted on-line consumers would be able to purchase heavily discounted products which were represented as genuine UGG Australia products being sold by “Dillard’s”. While the Panel cannot determine whether they are in fact genuine UGG Australia products or not, it is not unreasonable to surmise, considering that the Respondent is not listed as an official dealer in UGG Australia products on UGG Australia’s website, and also failed to rebut the Complainant’s assertions in these proceedings, that the Respondent’s products are quite possibly not authorized by UGG Australia and might therefore be grey market or counterfeit products. However the main point remains that the Respondent has used the disputed domain name which incorporates the Complainant’s mark to divert on-line consumers to its website on the premise that this website is the Complainant’s website or is authorized by the Complainant and for the purpose of commercial gain. Under paragraph 4(b)(iv) of the Policy this amounts to evidence of registration and use in bad faith by the Respondent.
As a result the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complaint succeeds under the third element 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.
Alistair Payne
Sole Panelist
Date: April 8, 2013
1 UGG Australia is not a party to this UDRP dispute.
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