Complainant is J. Choo Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by A. A. Thornton & Co., United Kingdom of Great Britain and Northern Ireland.
Respondent is Youchao Wang of Putian, Fujian, 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 April 2, 2013. On April 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 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 April 4, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, Complainant confirmed its request that English be the language of proceeding. 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 Respondent of the Complaint, and the proceedings commenced on April 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 3, 2013.
The Center appointed Yijun Tian as the sole panelist in this matter on May 14, 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, J. Choo Limited, is a company incorporated in London, United Kingdom of Great Britain and Northern Ireland (UK). Complainant has exclusive rights in several registered JIMMY CHOO trade marks (hereafter “JIMMY CHOO Marks”) globally (Annex C to the Complaint), including China since 2004 (Annex C to the Complaint). JIMMY CHOO Marks are recognised as a luxury and high fashion brand around the world and have a significant reputation for luxury footwear for women and men, as well as handbags, small leather goods, scarves and belts. Complainant as of June 2011 has over 120 Jimmy Choo branded stores across the world. (Annex G to the Complaint).
Complainant also owns the domain names , , , , , , , , , and . These domain names all direct user traffic to Complainant’s website at the domain name (Annex D, and Annexes I and J to the Complaint).
Respondent is Youchao Wang of Putian, Fujian, China. The disputed domain name was registered on May 31, 2012, long after the JIMMY CHOO Marks became internationally famous (Annex C to the Complaint). 5. Parties’ Contentions A. Complainant
(a) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;
The disputed domain name contains the trade mark JIMMY CHOO in which Complainant has rights in its entirety.
Complainant spends a considerable amount of time and money protecting its intellectual property rights as evidenced by its numerous trade mark registrations around the world. (Annex C to the Complaint).
Complainant owns many domain names incorporating its trade mark, either in its own name, and these domain names all direct user traffic to Complainant’s website at . (Annex D, and Annexes I and J to the Complaint).
Complainant’s website at “www.” attracts significantly large volumes of traffic from countries all over the world, including the UK, other countries in the European Union (EU), the United States (US) and China, where Respondent is domiciled. (Annex E to the Compliant).
The brand’s status as a “luxury” label and reputation for production of high quality, fashionable shoes and accessories is often referred to in the media. (H to the Complaint).
JIMMY CHOO is also referenced as a fashionable, desirable and luxury brand in popular movies and television programs, such as The Devil Wears Prada (2006) and Sex and the City.
The official Jimmy Choo Facebook page has attracted over 1.3 million “likes”, and fans of the JIMMY CHOO brand from all around the world regularly post comments on the page endorsing the brand. (Annex J the Complaint).
The disputed domain name incorporates Complainant’s trade mark JIMMY CHOO in its entirety.
The addition of the common generic words “on sale” to Complainant’s mark does not prevent the disputed domain name from being confusingly similar to the mark JIMMY CHOO. The addition of the words “on sale” simply indicates to consumers that the website is offering goods bearing the mark JIMMY CHOO or, that the goods are being offered for sale prices.
Respondent’s use of the mark JIMMY CHOO which is identical to Complainant’s various registered trade marks is clearly an attempt to catch Internet users searching for Complainant’s goods using Complainant’s registered trade marks.
(b) Respondent has no legitimate interests or rights in the disputed domain name.
There is no evidence 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 marks at issue so as to create an impression of association with Complainant.
Respondent is using the website for commercial gain as it is offering items for sale and it is possible to make payment for goods through the website. (Annex K to the Compliant).
Use of a registered trade mark as part of a domain name to offer purportedly genuine Jimmy Choo goods, take payment for purchases but never provide the goods purchased is not a legitimate or bona fide offering of goods.
Even though Respondent is not authorized by Complainant to register the disputed domain name or distribute genuine Jimmy Choo goods, it does not attempt in any way to make clear that the disputed domain name is not associated with, authorized by or linked to Complainant.
Complainant is aware of two instances of consumers having found the disputed domain name and believed it possible to purchase genuine Jimmy Choo products from the disputed domain name. (Annex L to the Complaint).
Some of the images on Respondent’s website are images of genuine Jimmy Choo goods. Respondent is using Complainant’s stylized trade mark, for which Complainant has trade mark registrations, on the home page of the disputed domain name.
Respondent also uses Complainant’s product style names to advertise the goods on the website. Evidence of use of Complainant’s style names by Respondent under the disputed domain name was provided in Annex M to the Complaint.
Such use is misleading for consumers who are searching for Complainant’s genuine goods as it creates an impression that Respondent is authorized by or linked Complainant, particularly in the absence of a statement on the website to the contrary.
The disputed domain name is not used in connection with an actual offering of goods, Respondent is using the disputed domain name to link through to a website purportedly selling goods bearing third party trade marks and does not accurately disclose its relationship, or lack thereof, with Complainant.
(c) The disputed domain name was registered and is being used in bad faith.
Respondent has registered the disputed domain name which incorporates Complainant’s mark JIMMY CHOO in its entirety.
The registration of the disputed domain name identical to the registered trade mark of Complainant is clearly aimed to disrupt Complainant’s business by diverting Internet users who are searching for Complainant’s products and leading them away from Complainant’s genuine websites and is aimed to prevent Complainant from registering the domain name.
Respondent would have been aware of Complainant at the time of registering the disputed domain name in 2012 (Annexes B-J to the Complaint).
The use of Complainant’s style names to advertise products on the disputed domain name shows that Respondent is aware of Complainant and Complainant’s business.
Registration and use of the disputed domain name incorporating Complainant’s registered trade mark in conjunction with an offering of goods which is not legitimate or bona fide is disruptive to Complainant’s business and is in bad faith.
The manner of use of the disputed domain name, and complete absence of a statement on the website making clear that the disputed domain name is not linked to Complainant to consumers, is misleading and this is supported by the instances of two consumers of genuine Jimmy Choo goods who found the disputed domain name.
Allowing customers to purchase goods from a website and take payment for those goods but not deliver the goods, not provide customers with a way to track their order and not respond to emails regarding the missing order is also in bad faith and disruptive to Complainant’s business.
Even if the website under the disputed domain name at times actually delivers goods purchased by consumers, the use of the disputed domain name has been shown to be misleading and does not satisfy the principles of former UDRP decisions. 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) The disputed domain name incorporates Complainant’s registered mark in English in conjunction with two English words “on” and “sale”.
(b) These English words were clearly chosen on the basis of their meaning in the English language.
(c) All the text and the product descriptions on the website under the disputed domain name are exclusively in English. (Annex B of the Complaint).
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) of the Rules 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 proceeding should not be prejudicial to either one of the parties in its 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 fact that Complainant is a company from the UK, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the website at the disputed domain name is in English and the disputed domain name includes the Latin characters “jimmy choo” and the English words “on” and “sale” (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 that 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 B to the Complaint); (c) the Website appears to have been directed to users around the world (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 trade mark 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 JIMMY CHOO Marks acquired through registration. The JIMMY CHOO Marks have been registered worldwide including in China, and Complainant has a widespread reputation in producing luxury footwear for women and men, as well as handbags, small leather goods, scarves and belts, and has over 120 Jimmy Choo branded stores across the world. (Annex G to the Complaint).
The disputed domain name comprises the JIMMY CHOO Marks in its entirety. The disputed domain name only differs from Complainant’s trade mark by the addition of the terms “on” and “sale” to the mark JIMMY CHOO. This does not seem to eliminate the identity or at least the similarity between Complainant’s registered trade mark and the disputed domain name.
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trade mark 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).
Mere addition of the descriptive terms “on” and “sale” as suffixes to Complainant’s mark fails to distinguish. By contrast, it may increase the likelihood of confusion. Consumers who visit are likely to be confused and may falsely believe that the website at the disputed domain name is operated by Complainant for selling Jimmy Choo branded products online.
Thus, the Panel finds that the additional suffixes are not sufficient to negate the confusing similarity between the disputed domain name and the JIMMY CHOO 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 JIMMY CHOO Marks globally, including registrations in China since 2004 – (Annex C to the Complaint) which long precedes Respondent’s registration of the disputed domain name (May 31, 2012).
Respondent is not an authorized dealer of Jimmy Choo 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 “Jimmy Choo” in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the JIMMY CHOO Marks or to apply for or use any domain name incorporating the JIMMY CHOO Mark and Respondent has, through the use of a confusingly similar domain name and webpage contents, created a likelihood of confusion with the JIMMY CHOO 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 partners and end users are led to believe that the website of the disputed domain name is either Complainant’s site or a site of an official authorized partner of Complainant, which it is not.
(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 trade mark rights with respect to the disputed domain name. Respondent registered the disputed domain name on May 31, 2012. The disputed domain name is identical or confusingly similar to Complainant’s JIMMY CHOO 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 Jimmy Choo products at (Annex B 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 trade mark 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 trade mark 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.
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 is using the disputed domain name in bad faith. a). Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the JIMMY CHOO Marks with regard to its products. Complainant has registered its JIMMY CHOO Marks internationally, including registrations in China (since 2004). Moreover, according the information provided by Complainant, Respondent is “using Complainant’s stylized trade mark, for which Complainant has trade mark registrations… on the home page of the contested domain name”. Respondent also uses Complainant’s product style names to advertise the goods on the website. (Annexes C and M to the Complaint).
Respondent would not have advertised products purporting to be Jimmy Choo products on the website at the disputed domain name if it was unaware of Complainant’s reputation. In the other words, it is not conceivable that Respondent would not have had actual notice of Complainant’s trade mark right at the time of the registration of the disputed domain name. The Panel therefore finds that the JIMMY CHOO Marks are not ones 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 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 Jimmy Choo branded products. b). Use in Bad Faith
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 Complainant’s Jimmy Choo branded products and services without authorization. Complainant claimed that “there is no evidence Respondent is making a legitimate non-commercial or fair use of the disputed domain names without ‘intent for commercial gain’ to misleadingly divert consumers or to tarnish the marks at issue so as to create an impression of association with Complainant”.
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 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 JIMMY CHOO Marks (as well as the contents on Respondent webpages - 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 fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Website at the disputed domain name (Annexes B 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 JIMMY CHOO 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 partners and end users are led to believe that the website at the disputed domain name is either Complainant’s site or a site of an official authorized partner of Complainant, which it is not. By contrast, Respondent uses Complainant’s product style names to advertise the good on the website for sale. Moreover, Respondent has not responded 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 the disputed domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trade mark 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: June 14, 2013
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