The Complainant is C & J Clark International Limited of Somerset, United Kingdom of Great Britain and Northern Ireland (the “U.K.”), represented by Stevens Hewlett & Perkins, the U.K.
The Respondents are Lin Lin and Lin Chang of Putian, Fujian, China. 2. The Domain Names and Registrars
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. The disputed domain name is registered with Jiangsu Bangning Science & technology Co. Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2014. On February 12, 2014, the Center transmitted by email to HiChina Zhicheng Technology Ltd. and Jiangsu Bangning Science & technology Co. Ltd. (the “Registrars”) a request for registrar verification in connection with the disputed domain names. On February 14, 2014 and February 19, 2014, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrant and providing the contact details.
On February 20, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On February 25, 2014, the Complainant requested that English be the language of the proceeding.
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 Respondents of the Complaint in both Chinese and English, and the proceeding commenced on February 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 19, 2014. The Respondents did not submit any Response. Accordingly, the Center notified the Respondents’ default on March 20, 2014.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on March 31, 2014. 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 A. Complainant
The Complainant is a company incorporated in the U.K. and the owner of registrations for the trade mark CLARKS (the “Trade Mark”) in numerous jurisdictions worldwide. B. Respondents
The Respondents are individuals, apparently with an address in China. C. The Disputed Domain Names
The disputed domain names were registered on the following dates:
June 5, 2013
July 9, 2013 D. The Websites at the Disputed Domain Names
The websites at the disputed domain names (the “Websites”) offer for sale footwear branded with the Complainant’s Trade Mark. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant requested consolidation of the Respondents, on grounds the Respondents are either the same individual or are otherwise connected.
The Complainant traces its origins and the use of the Trade Mark back to 1825, when the first sheepskin slippers were devised by James and Cyrus Clark in Somerset, U.K. The Complainant has used the Trade Mark continuously since that time in respect of footwear manufactured and sold by the Complainant worldwide.
The disputed domain names are confusingly similar to the Trade Mark. They contain the Trade Mark in its entirety, together with the non-distinctive, generic word “china”.
The Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents are not affiliated with or authorised by the Complainant in any way and are not commonly known by the disputed domain names. The Respondents are using the disputed domain names in respect of the Websites in order to intentionally attract Internet users, for commercial gain. The Websites feature the Trade Mark, including the Complainant’s “signature” version of the Trade Mark. They have been designed to deliberately convey the impression that each is an official website that originates from the Complainant. Much of the content of the Websites has been taken from the Complainant’s website.
For all of these reasons, the disputed domain names have been registered and used in bad faith. B. Respondents
The Respondents did not respond to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain names is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondents to the effect that the language of the proceeding should be English.
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. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (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 Complainant has requested that English be the language of the proceeding, for the following reasons:
1. The Complainant is an English company;
2. Requiring the Complainant to translate the Complaint into Chinese would cause the Complainant to incur further expense;
3. Much of the content of the Websites has been taken from the Complainant’s website, which demonstrates that the Respondents are familiar with the English language;
4. In previous UDRP proceedings involving similar domain names and websites to those in this proceeding, panels have determined that English should be the language of the proceedings.
The Respondents did not file a Response and did not make any submissions regarding the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
The content of the Websites is both in Chinese and in English. The Websites contain numerous English language pages and links, including English language descriptions of the footwear featured on the Websites. The Panel therefore finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondents are conversant in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondents would be unduly prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2 Consolidation of Respondents
Past UDRP decisions suggest that consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve (Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281).
The arguments relied upon by the Complainant in support of its consolidation request include:
1. The registrant email address is identical for each of the disputed domain names;
2. The disputed domain names correspond closely with one another; both incorporate the Trade Mark, in addition to the word China. The disputed domain names are distinguished from one another only on account of the transposition of these two words; and
c. The content of the Websites is similar.
The Respondents did not file a Response.
The Panel notes further that the contact addresses for the disputed domain names are almost identical, and the contact telephone and facsimile numbers are similar; and the disputed domain names were registered within one month of each other.
In all the circumstances, the Panel concludes sufficient evidence has been adduced to enable the conclusion to be drawn that common control is being exercised over the disputed domain names.
In all the circumstances, the Panel determines, under paragraph 10(e) of the Rules, that consolidation of the Respondents is procedurally efficient and equitable to all the parties, is consistent with the Policy and Rules, and comports with prior relevant UDRP decisions in respect of this issue1. 6.3 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain names by well over 150 years.
UDRP panels have consistently held that domain names are 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” (see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
The disputed domain names comprise the Trade Mark in its entirety together with the non-distinctive, generic word “china” which does not, in the Panel’s view, serve to distinguish the disputed domain names from the Trade Mark in any significant way.
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark and 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 non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in disputed domain names:
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain names or names corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) The respondent (as an individual, business, or other organization) has been commonly known by the disputed domain names even if the respondent has acquired no trade mark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain names by well over 150 years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (see Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the evidence suggests the disputed domain names have been used in respect of the Websites, which make unauthorised use of the Trade Mark, including the signature logo of the Complainant, which contain content apparently copied from the Complainant’s official website, and which offer for sale footwear under the Trade Mark without authorisation from the Complainant, and without any disclaimer.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of a respondent:
By using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line 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.
The Respondent has been using the disputed domain names in respect of the Websites, which have not been authorised by the Complainant, and which feature prominently the Trade Mark and signature logo of the Complainant, contain content apparently taken from the Complainant’s website, and offer for sale footwear under the Trade Mark, all without any disclaimer of any relationship with the Complainant. This is clear evidence of bad faith. The Panel therefore finds, in all the circumstances, the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfiled. 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 names and be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Date: April 14, 2014
1 The Panel shall refer to the Respondents in the singular for the remainder of this Decision.
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