Complainant is C & J Clark International Limited of Street, Somerset, United Kingdom of Great Britain and Northern Ireland, represented by Stevens Hewlett & Perkins, United Kingdom of Great Britain and Northern Ireland.
Respondent is Carlos Cessna of “Quanzhou, Beijing”, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2014. On August 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 5, 2014, 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 September 8, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On September 9, 2014, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding 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 September 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 7, 2014.
The Center appointed Yijun Tian as the sole panelist in this matter on October 16, 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
Complainant, C & J Clark International Limited, is a company incorporated in Somerset, United Kingdom of Great Britain and Northern Ireland (the UK). It is a world leading producer of shoes. Complainant’s CLARKS trade mark can trace its origins back to the year 1825 in the Somerset village of Street in the UK when the first sheepskin slippers were devised by James and Cyrus Clark. It is estimated that Complainant sells 55 million pairs of shoes in 35 countries every year.
Complainant has exclusive rights in the CLARKS Marks. Complainant is the exclusive owner of famous and well-known registered trademarks globally, such as UK trademark registration no. 1116735 registered on May 5, 1989, China trademark registration no. 3963430 registered on August 21, 2007, Community Trade Mark No. 000167940 registered on July 16, 1998. B. Respondent
Respondent is Carlos Cessna of “Quanzhou, Beijing”, China. The disputed domain name was registered on July 19, 2014, long after the CLARKS Marks became internationally famous. 5. Parties’ Contentions A. Complainant (a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
The disputed domain name contains Complainant’s CLARKS Mark in its entirety and adds the generic Top-Level Domain (“gTLD”) “.com”.
The addition of a gTLD is irrelevant when establishing whether or not a mark is identical or confusingly similar because gTLDs are a required element of every different domain name. It is a well-established principle that gTLDs are irrelevant when conducting a Policy paragraph 4(a)(i) analysis.
The additional words “shoes outlet sale” in the disputed domain name does nothing to distinguish the disputed domain name from Complainant’s CLARKS Marks since this word merely emphasizes the fact that goods (in this case, shoes) bearing Complainant’s CLARKS Marks are being offered for sale from Respondent’s website based in China and that the goods are likely sourced from there or offered for sale there.
The words “shoes outlet sale” within the disputed domain name have been deliberately chosen to target consumer Internet traffic that may be keen to purchase goods branded with Complainant’s mark.
Since the additional descriptive words “shoes outlet sale” are the only differences between the disputed domain name and Complainant’s CLARKS Mark, the panel must conclude that they are confusingly similar pursuant to paragraph 4(a)(i) of the Policy. (b) Respondent has no rights or legitimate interests in respect of the disputed domain name;
Respondent is not commonly known by the disputed domain name. Respondent does not have any affiliation, association, or business relationship of any kind with Complainant and Respondent is not licensed or authorised to use the CLARKS Marks.
Respondent is using the disputed domain name in order to sell directly to the public goods bearing Complainant’s CLARKS Marks.
Respondent’s website is directly and commercially competing with the merchandise offered for sale at Complainant’s official website at .
Goods bearing Complainant’s mark are being offered for sale by Respondent under the disputed domain name and it is possible to purchase these goods via an ecommerce platform using credit card details. Complainant’s CLARKS “signature” mark is also displayed prominently as the site’s logo.
Respondent’s attempt to benefit commercially from the unauthorised use of Complainant’s CLARKS Marks does not constitute a bona fide offering of goods and services under paragraph 4(c)(i) of the Policy, or a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy.
A domain name is not used within the parameters of paragraph 4(c)(i) or (iii) of the Policy if respondent uses the domain name to take advantage of complainant’s marks by diverting Internet users to a competing commercial site.
The panel must find that paragraph 4(a)(ii) of the Policy has been satisfied. (c) The disputed domain name was registered and is being used in bad faith.
The mark CLARKS is properly associated with Complainant. Complainant has an extensive reputation for this mark in relation to footwear and related goods.
The very nature of Respondent’s business is to obtain a domain name to which it has no rights or legitimate interests purely with the aim of taking unfair advantage of rights that a third party has established.
Respondent by using the disputed domain name directly competes with Complainant’s goods and services. Respondent has diverted business from Complainant to a competitor’s website in violation of paragraph 4(b)(iii) of the Policy.
Respondent’s use of the disputed domain name is confusingly similar to Complainant’s CLARKS mark, will confuse customers as to the affiliation, sponsorship, or endorsement of the goods advertised on Respondent’s website.
Respondent is seeking to profit from this confusion by taking online payment from unsuspecting users in purchase of goods purporting to originate from Complainant.
Complainant’s business and reputation could suffer irreparable harm as a consequence of Respondent’s activities. Respondent is seeking to profit from its diversionary use of Complainant’s mark when the disputed domain name resolves to a commercial website and which is prima facie evidence that Respondent is using the disputed domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
Respondent is directing Internet users seeking Complainant’s site to its own website for commercial gain.
The extent of Complainant’s current activities can be seen on its website at , which resolves to a variety of local (regional) websites according to the user’s chosen location.
In the years 2011-2012 Complainant’s sales turnover figures were GBP 601 million in the UK, GBP 536 million in the USA, GBP 162 million in the European Union and GBP 99 million throughout the rest of the world. All of these sales accounted for products sold bearing the CLARKS Marks. Complainant’s business is long-established, global and very successful. It is estimated that Complainant sells 55 million pairs of shoes in 35 countries every year.
The motive behind Respondent’s actions in registering the disputed domain name is clearly to take unfair advantage of the reputation that Complainant has built up. The disputed domain name has been put to use in a manner which is for the sole purpose of generating income.
Within the last few years Complainant has successfully filed complaints against other domain names similar to the disputed domain name and under almost identical circumstances.
By selecting the disputed domain name for registration, and by using the disputed domain name for this purpose, Respondent does so in the full and conscious knowledge that:
(a) the registration and use of the disputed domain name is likely to cause confusion and to deceive customers into mistakenly believing that Respondent’s domain name and website is offered, authorised, or is sponsored by Complainant, or otherwise affiliated with Complainant;
(b) as a consequence of its actions in registering and using the dispute domain name, Complainant’s business will be unfairly disrupted by the redirection of Internet users which will deprive Complainant of Internet traffic rightly intended for its websites,
(c) by registering and using the disputed domain name it is misappropriating Complainant’s goodwill solely for its value derived from the well-known CLARKS Marks,
(d) it will be blocking Complainant from registering a domain name in which Complainant has rights, and
(e) by registering and using the disputed domain name in this manner, its actions are unfairly detrimental to Complainant’s rights in the CLARKS Marks.
In view of the above, the panel must find that paragraph 4(a)(iii) of the Policy has been satisfied. 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 proceedings should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceedings for the following reasons:
(a) Complainant is a company incorporated under the laws of England and Wales and Complainant’s place of residence is in England. The English national language is the natural language of both Complainant parties (Complainant and Complainant’s representative). The Chinese language is not spoken by English or UK citizens, neither is it taught during formal education in England or the UK.
(b) The approximate cost for a translation of this complaint from English to Chinese has been estimated at approximately GBP 600 (equivalent to approximately CHF 900). This further cost would be prejudicial to Complainant in relation to incurred expenses, which would be unrecoverable.
(c) The content language of the disputed website is entirely in the English language and it is fully intended by Respondent that financial transactions for purchase of goods bearing Complainant’s marks are conducted in the English language. The disputed domain name is evidently aimed at English-speaking consumers. Complainant’s CLARKS Mark is reproduced in its original format and it has not been transliterated into the Chinese language. Respondent is passing itself off as Complainant, which is a company domiciled in England and it is to be assumed that Respondent is familiar with the English language in order to construct an ecommerce website imitating Complainant’s business. The wording of the disputed domain name “Clarks Shoes Outlet Sale” is also in the English language and is clearly set up to target Internet keyword searches from English-speaking consumers typing identical or similar English words into the search engines.
(d) Complainant has within the last few years successfully filed complaints against several corresponding domain names incorporating the CLARKS Mark. The circumstances of these resolved complaints mirror the subject Complaint and, in these cases, UDRP panels accepted the Complainant’s similar arguments for conducting the proceedings in the English language.
Respondent did not make any submissions with respect to the language of the proceedings and did not object to the use of English as the language of the proceedings.
Paragraph 11(a) allows the Panel to determine the language of the proceedings 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 proceedings. 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 applicance 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 proceedings should not be prejudicial to either one of the parties in his or her 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 facts that Complainant is a company from the UK, and Complainant will be spared the burden of working in Chinese as the language of the proceedings. The Panel has also taken into consideration the facts that the websites at the disputed domain name includes Latin characters “clarks” and English words “shoes”, “outlet” and “sale” (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).
On the record, Respondent Carlos Cessna appears to be a western resident in China. “Carlos Cessna” appears to be an English name, and the Panel finds 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; (c) the website appears to have been directed to users worldwide (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 proceedings; (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 trademark 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 CLARKS Marks acquired through registration. The CLARKS Marks have been registered worldwide including in China, and Complainant has a widespread reputation as a world leading producer of shoes. According to the information provided by Complainant, Complainant’s CLARKS Marks can trace its origins back to the year 1825 and it is estimated that Complainant sells 55 million pairs of shoes in 35 countries every year.
The disputed domain name comprises the CLARKS Mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the addition of the words “shoes”, “outlet” and “sale” to the mark CLARKS. This does not seem to eliminate the identity or at least the similarity between Complainant’s registered trademark and the disputed domain name.
Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark 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).
The mere addition of the descriptive terms “shoes”, “outlet” and “sale” as suffixes to Complainant’s mark fails to distinguish to this Panel the disputed domain name from Complainant’s trademark. By contrast, it may increase the likelihood of confusion. “Shoes” are one of main products of Complainant. One of common meanings of the term “outlet” is a store that sells the goods of a particular manufacturer or wholesaler. Internet users who visit are likely to be confused and may falsely believe that is an online shop operated by Complainant for selling CLARKS-branded products, particularly shoes. Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the CLARKS 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) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) have been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) 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 trademark or service mark at issue.
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 the respondent to rebut the complainant’s contentions. If the 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).
As mentioned above, Complainant has rights in the CLARKS Marks globally, including registration in China since 2007 which long precedes Respondent’s registration of the disputed domain name (July 19, 2014).
According to Complainant, Complainant is the world’s leading producer of shoes. Complainant’s CLARKS Marks can trace its origins back to the year 1825 and it is estimated that Complainant sells 55 million pairs of shoes in 35 countries every year. In the years 2011-2012 Complainant’s sales turnover figures were GBP 601 million in the UK, GBP 536 million in the USA, GBP 162 million in the European Union and GBP 99 million throughout the rest of the world. All of these sales accounted for products sold bearing the CLARKS Mark.
Moreover, Respondent is not an authorized dealer of CLARKS 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 “clarks” in its business operation or the use of the CLARKS Marks and design on its website (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the CLARKS Marks or to apply for or use any domain name incorporating the CLARKS Marks;
(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 trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name on July 19, 2014. The disputed domain name is identical or confusingly similar to Complainant’s CLARKS 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 CLARKS products at .
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 trademark 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 trademark 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 or service on Respondent’s website or location.
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 used the disputed domain name in bad faith. a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the CLARKS Mark with regard to its products. Complainant has registered its CLARKS Marks internationally, including registration in China (since at least 2007). Moreover, the website to which the disputed domain name resolves advertises for sale various purported CLARKS products. Respondent would likely not have advertised products purporting to be CLARKS products on the website to which the disputed domain name resolves if it was unaware of Complainant’s reputation. In the other words, it is not conceivable to the Panel that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the CLARKS Mark is not one 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 the 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 CLARKS branded products. b) Used 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 purportedly Complainant’s CLARKS branded products and services without authorization. Complainant claimed that Respondent is directing Internet users seeking Complainant’s site to its own website for “commercial gain”.
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 intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Swarovski Aktiengesellschaft v. Yuenan, WIPO Case No. D2012-1477).
Given the widespread reputation of the CLARKS Marks (as well as the content on the website to which the disputed domain name resolves 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 the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. In other words, Respondent has through the use of a confusingly similar domain name and webpage contents created a likelihood of confusion with the CLARKS Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the webpage at the disputed domain name, potential Internet users are led to believe that the website at is either Complainant’s sites or the sites of official authorized agents of Complainant, which it is not. Moreover, Respondent has not responded formally 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 a domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark 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 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 at be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: November 6, 2014
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