The Complainant is Red Diamond Holdings Sàrl of Luxembourg, represented by Office Ernest T. Freylinger S.A., Luxembourg.
The Respondent is Arfhaan Mohammed of Bradford, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 2013, 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.
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 July 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2013. The Complainant sent an email communication to the Center on July 24, 2013 requesting the Panel to accept it as an additional submission. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2013.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on July 31, 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. Procedural Ruling - Complainant's Unsolicited Supplemental Submission
Under the Policy and the Rules, parties have no right to submit additional arguments or evidence.
In fact, paragraph 12 of the Rules allows a UDRP panel in its discretion to request supplemental filings from either party, whereas they do not provide expressly for unsolicited submissions.
Indeed, under Paragraph 10(a) the Panel enjoys a broad power to conduct the administrative proceeding in the manner it considers appropriate under the Policy and Rules, provided the parties are treated fairly and the proceeding is conducted expeditiously.
This Panel notes that the Complainant's unsolicited submission does not appear to establish any new principle of assistance in resolving the present case.
Furthermore, if the Complainant's unsolicited submission was admitted, this Panel would feel bound to afford the Respondent an opportunity to comment on it. This would delay the conclusion of the procedure without any apparent benefit. The Panel has therefore decided not to admit the Complainant's additional submission. 5. Factual Background
The Complainant is the owner of the LEE COOPER renowned trademark and brand (hereafter “LEE COOPER”), registered in several jurisdictions between 1982 and 2012. The Complainant has proved to own numerous trademark registrations for the LEE COOPER trademark as well as many domain names including the LEE COOPER trademark.
The Complainant’s trademark registrations for the trademark LEE COOPER long predate the disputed domain name registration. The Complainant’s domain name registered on October 19, 1995 also predates the disputed domain name registration.
The disputed domain name , which was registered on January 10, 2009, resolves to the website “www.” where a message welcomes the Internet users to: “Lee Cooper jeans online the Independent supplier and distributor of Lee Cooper Jeans Ireland providing Lee Cooper products including jeans, work jeans and Lee Cooper designer jeans […]”. 6. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is confusingly similar to the Complainant’s LEE COOPER trademarks because “lee cooper” is an extremely well-known trademark and forms the first, dominant, most significant and distinctive element of the disputed domain name. The Complainant further submits that the additional word “jeans” in the disputed domain name cannot avoid confusion between the disputed domain name and Complainant’s trademark, as it is completely descriptive and devoid of distinctive character.
(2) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent is not commonly known by the disputed domain name, that the Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use the Complainant’s trademarks, and that the Respondent is not an authorized distributor of the Complainant’s products.
(3) The Complainant further submits that Respondent cannot vest any legitimate interest or right in the disputed domain name nor can the use of the domain name be considered as use for the bona fide offering of goods and/or services.
(4) The Complainant claims that the disputed domain name was registered and is being used in bad faith to intentionally attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
(5) The Complainant claims that the Respondent uses the disputed domain name for the sale of goods, which do not originate from the Complainant’s undertaking. In addition, some of these goods (jeans) are counterfeited goods.
(6) The Complainant finally submits that the Respondent offered the disputed domain name for sale to the Complainant for EUR 50,000. An amount which clearly exceeds its out-of pocket costs for registering and keeping alive the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 7. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and
(ii) the 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. A. Identical or Confusingly Similar
The Complainant has established that it has rights in the LEE COOPER trademark and has stated that the disputed domain name is confusingly similar to it.
In order to substantiate this claim, the Complainant has argued that LEE COOPER is an extremely well-known trademark and forms the first, dominant, most significant and distinctive element of the disputed domain name. The Complainant further submits that the additional word “jeans” in the disputed domain name is not dominant, being merely generic and descriptive.
This Panel agrees with the Complainant’s contention that “lee cooper” is the only distinctive part within the disputed domain name and that the addition of the generic term “jeans” does not avoid the confusing similarity between the disputed domain name and the Complainant’s trademark. Moreover, it is now well established by many previous UDRP decisions that the addition of a generic term (i.e. “jeans”) to a trademark is generally not sufficient to avoid confusing similarity.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. A respondent in a UDRP proceeding does not assume the burden of proof, but may establish rights or legitimate interests in a domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
i) that before any notice to the respondent of the dispute, the respondent used or made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
ii) that the respondent is commonly known by the domain name, even if the respondent has not acquired any trademark rights; or
iii) that the respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
This Panel finds that here, the Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to be commonly known by the name “Lee Cooper” or by a similar name, and has not alleged any facts to justify any rights or legitimate interests in the disputed domain name. The Respondent does not appear to make any legitimate use of the disputed domain name for non-commercial activities.
Finally, the Respondent did not reply to the Complaint, proving or at least alleging in any other way any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
ii) the respondent has registered the 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 the respondent has engaged in a pattern of such conduct; or
iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the respondent 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 respondent’s website or location or of a product or service on the respondent’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Considering that the Complainant is well-known internationally and has been carrying on business activities under the LEE COOPER trademarks for many decades; the high distinctiveness of the LEE COOPER trademarks in connection with jeans and the fact that the Respondent presents itself as “the Independent supplier and distributor of Lee Cooper Jeans Ireland providing Lee Cooper products including jeans, work jeans and Lee Cooper designer jeans”, it is inconceivable that the Respondent registered the disputed domain name, which consists of the Complainant’s LEE COOPER trademark and the word “jeans”, without knowledge of the Complainant’s rights in the LEE COOPER trademark.
The Panel is therefore of the opinion that the Respondent registered the disputed domain name aware of the Complainant’s trademark registrations and rights to the name “lee cooper”.
In addition, the Respondent used the disputed domain name for a website offering alleged “Lee Cooper products including jeans, work jeans and Lee Cooper designer jeans” (even after being informed by the Complainant’s representative of the Complainant’s rights), in all likelihood trying to divert traffic intended for the official websites of the Complainant and/or of the Complainant’s authorized resellers. This Panel agrees with the Complainant that this use amounts to use in bad faith of the disputed domain name.
In the absence of contrary evidence, the Panel finds that:
1) the Respondent knew of the Complainant’s goods and trademarks and intentionally intended to create an association with the Complainant and its business;
2) that the Respondent, as shown by the contents displayed on its website, must have had actual knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name;
3) that the above described use of the disputed domain name, i.e., to divert Internet traffic to the Respondent’s website supports an inference of bad faith registration and use of the disputed domain name.
4) finally, the fact that the Respondent tried to sell the disputed domain name to the Complainant for the amount of EUR 50,000 is further suggests Respondent’s bad faith.
Accordingly, the Panel finds on the basis of the evidence presented, that the Respondent has registered and is using the disputed domain name in bad faith.
Therefore, the Complainant has satisfied 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 name be transferred to the Complainant.
Fabrizio Bedarida
Sole Panelist
Date: August 6, 2013
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