The Complainant is Kabushiki Kaisha Fast Retailing, dba Fast Retailing Co., Ltd. of Yamaguchi, Japan, represented by Seiter Legal Studio, United States of America.
The Respondent is Guilin WebApps Technology Co., Ltd. of Guilin, Guangxi, 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 July 10, 2014. On July 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 15, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 4, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2014.
The Center appointed Brigitte Joppich, Luca Barbero and Yong Li as panelists in this matter on August 21, 2014. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. 4. Factual Background
The Complainant owns and operates Uniqlo Co., Ltd., the world’s fourth largest fashion apparel retailer, which is listed on First Section of the Tokyo Stock Exchange. The first Uniqlo retail clothing store opened in Japan in 1984. At present, Uniqlo accounts for approximately 6.2% of the Japanese apparel market. By the end of 2013, in addition to 853 stores within Japan, Uniqlo’s international sales outside Japan constituted approximately 27% of total Uniqlo sales, with 446 brick-and-mortar stores outside Japan, including 280 stores in greater China and 17 stores in the United States, including its global flagship store on New York’s Fifth Avenue and its megastore on 34th Street in New York City. In its 2013 fiscal year, the Complainant’s Uniqlo brand achieved net sales within Japan of 683 billion Japanese Yen, and net sales internationally outside Japan of 251 billion Japanese Yen. The Complainant expended 52.5 billion Japanese Yen in advertising and promotion of its brands, chiefly dedicated to the Uniqlo brand.
The Complainant is the owner of hundreds of trademark registrations and applications for the trademark UNIQLO worldwide, including some 483 trademark registrations for the mark UNIQLO, inter alia, United States trademark registration no. 3854002 UNIQLO, registered on September 28, 2010; Community trademark registration no. 001663749 UNIQLO, registered on December 4, 2001; and Chinese trademark registration no. 801809 UNIQLO, registered on December 21, 1995 (hereinafter referred to as the “UNIQLO Marks”). The UNIQLO Marks cover a broad variety of goods and services. Furthermore, the Complainant owns some 126 domain names incorporating its UNIQLO Marks, inter alia, and .
The disputed domain name was registered on June 10, 2014 and is used in connection with a standard parking website of the Registrar. 5. 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 UNIQLO Marks as it differs only in that the generic Top-Level Domain (gTLD) “.company” is added to the disputed domain name.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name, as it has never been commonly known by the disputed domain name, as it has not been authorized to use the UNIQLO Marks, and has no connection or affiliation whatsoever to the Complainant, as it does not conduct any business or personal activity using Uniqlo or any similar name, and as there has been no individual or organization other than the Complainant which conducts business or private activities using Uniqlo or any similar name.
(3) The disputed domain name was registered and is being used in bad faith. The Complainant argues that the Respondent obviously registered the disputed domain name opportunistically in bad faith for commercial gain to traffic in the disputed domain name because the trademark UNIQLO is a fanciful coined term, used exclusively and heavily promoted by the Complainant for over 30 years.
Furthermore, the Complainant contends that it registered the UNIQLO Marks with the Trademark Clearinghouse and that the Respondent would have been notified of the Complainant’s UNIQLO Marks under the Clearinghouse’s Trademark Claims Service at the time the Respondent sought to register the disputed domain name. With regard to bad faith use, the Complainant states that the Respondent is responsible for the website available at the disputed domain name which contains advertising for third parties’ products. Furthermore, the Complainant argues that there is no trace of the disputed domain name being used for any legitimate business or personal activity, and that there is no reasonable possibility whatsoever that the Respondent could use or plan to use the disputed domain name in good faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. 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 a trademark or service mark in which the Complainant has rights; 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 disputed domain name fully incorporates the Complainant’s UNIQLO Marks and is identical to such marks. It is well established that the specific TLD is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374). The Panel finds that the present case does not give reason to digress from this principle, as the TLD “.company” is comprised of a generic term, which might well be used by the respective trademark owner itself and therefore is not sufficient to hinder a finding of identity. In this regard, the Panel wishes to point out that it is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words. The Panel believes that the combination of a trademark as second level of a domain name together with a generic term on the first level fits in this system and should not be handled differently.
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among UDRP panels that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. In particular, the Respondent’s use is no bona fide use under paragraph 4(c)(i) of the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 respondent’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 its 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 its website or location.
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant’s UNIQLO Marks as these have been actively used for decades in many countries worldwide, including China, where the Respondent is located.
As to bad faith use, by fully incorporating the UNIQLO Marks into the disputed domain name and by using such domain name in connection with a landing page providing pay-per-click links which promote third parties’ products and services, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy. It is well established that a respondent (as the registered owner of the domain name) is in general ultimately responsible for the information available at the website and for all content posted there, regardless of how and by whom such content was generated and regardless of who profits directly from the commercial use (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition “WIPO Overview 2.0” at paragraph 3.8 with further references; Baccarat SA v. Hiro,WIPO Case No. D2010-1315; Hanover Company Store, LLC v. Domains by Proxy, Inc. / Martha Osborne,WIPO Case No. D2010-1182; Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation,WIPO Case No. D2009-0776; Sanofi-aventis v. Transure Enterprise Ltd, Host Master,WIPO Case No. D2008-1636; State of Florida, Florida Department of Management Services v. Bent Pettersen,WIPO Case No. D2008-0039; Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912; Owens Corning v. NA,WIPO Case No. D2007-1143; Grisoft, s.r.o.v. Original Web Ventures Inc.,WIPO Case No. D2006-1381; Sanofi-Aventis, Aventis Pharma SA and Aventis Pharma Deutschland GmbH v. 1N4 Web Services,WIPO Case No. D2005-0938). The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) 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.
Brigitte Joppich
Presiding Panelist
Luca Barbero
Panelist
Yong Li
Panelist
Date: August 27, 2014
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