The Complainant is J. Choo Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by A. A. Thornton & Co., UK.
The Respondent is Kuwahara Kana of Saitama, Japan. 2. The Domain Name and Registrar
The disputed domain name (“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 September 23, 2014. On September 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 24, 2014, 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 October 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2014.
The Center appointed Haig Oghigian as the sole panelist in this matter on November 11, 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
The Complainant is a company incorporated in the UK which owns and uses the mark JIMMY CHOO for various types of goods, including luxury footwear for women and men, handbags, small leather goods, scarves, belts, and wedding and bridal shoes and accessories.
The Complainant is the owner of the following trademarks (collectively, the “JIMMY CHOO Marks”):
1. Community Trade Mark Registration No. 1662543 JIMMY CHOO in class 25, registered on September 16, 2002;
2. Community Trade Mark Registration No. 2587830 JIMMY CHOO in classes 3, 9, 14, 18, and 35, registered on April 1, 2003;
3. Japanese Trade Mark Registration No. 4442564 JIMMY CHOO in class 25, registered on December 22, 2000;
4. Japanese Trade Mark Registration No. 4712674 JIMMY CHOO in class 18, registered on September 26, 2003; and
5. Japanese Trade Mark Registration No. 5441937 JIMMY CHOO in classes 6 and 18, registered on September 30, 2011.
The Complainant is also the owner of the following domain names: , , , , , , , , , , , , and .
The disputed domain name was registered on May 27, 2014. 5. Parties’ Contentions A. Complainant
The Complainant requests that the registration of the Domain Name be transferred from the Respondent to the Complainant.
The Complainant argues that the Domain Name is confusingly similar to the JIMMY CHOO Marks. The Domain Name incorporates the Complainant’s trade mark JIMMY CHOO and only adds a common and descriptive word “shop”. The Complainant asserts that if a domain name incorporates a distinctive trademark, such as the Complainant’s trademark, in its entirety, it is confusingly similar to that mark despite the addition of other words. The Complainant further argues that the addition of generic words to a trademark was found to increase the likelihood of confusion on the part of consumers.
The Complainant also asserts that there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name without the intent for commercial gain to misleadingly divert consumers or to tarnish the JIMMY CHOO Marks. Further, there is no evidence that the Respondent is making a bona fide offering of goods and services through the Domain Name. Instead, the Complainant has evidence that the Respondent is selling counterfeit goods bearing the mark JIMMY CHOO and refers to a specific incident where the Japan Customs seized products bearing the name of JIMMY CHOO ordered from the Respondent’s website and was of the view that the products did not meet the specifications of genuine JIMMY CHOO goods. The Complainant also referred to the Respondent’s website which specifically stated that “of course all products are genuine” and the use of the Domain Name containing the JIMMY CHOO Marks is clearly misleading and not a legitimate noncommercial or fair use of the Domain Name.
The Complainant further argues that the Domain Name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy). The Complainant asserts that the use of the Domain Name by the Respondent is in bad faith as it clearly aimed at disrupting the Complainant’s business by diverting Internet users away from the Complainant’s genuine websites. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the complainant must prove that the domain name is identical or confusingly similar to the trademark.
Previous UDRP panels have found that a respondent may not avoid confusion by appropriating another’s entire mark in a domain name (Research In Motion Limited v. One Star Global LLC,WIPO Case No. D2008-1752). Non-distinctive term additions will not be a defense against a finding of confusing similarity (Research In Motion Limited v. Louis Espinoza,WIPO Case No. D2008-0759; Research In Motion Limited v. J,WIPO Case No. D2008-0758; Research Quitxtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253).
It is clear on the given evidence that the Domain Name is a combination of the JIMMY CHOO Marks and the non-distinctive and generic word “shop”. Furthermore, given the business operated by the Complainant and its global reputation as a luxury and high fashion brand which sells a variety of fashion goods through its various boutiques and domain names, confusion is enhanced by the addition of the term “shop”, and the Domain Name mistakenly suggests that it resolves to a website operated by, or otherwise affiliated with, the Complainant.
In accordance with UDRP precedent and for the above reasons, the Panel finds that the Domain Name is confusingly similar to the JIMMY CHOO Marks. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the complainant must prove that the respondent has no rights or legitimate interests in respect of the domain name. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the respondent in order to demonstrate its rights or legitimate interests in a domain name. Such circumstances include:
- (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute (Paragraph 4(c)(i));
- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights (Paragraph 4(c)(ii)); or
- legitimate, noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark (Paragraph 4(c)(iii)).
In this case, the Complainant presented a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. It is clear on the given evidence that the Domain Name was registered long after the Complainant started to use the JIMMY CHOO Marks. Thus, the burden of production is on the Respondent to establish its rights or legitimate interests in the Domain Name (see PepsiCo, Inc. v. Amilicar Perez Lista d/b/a Cyberson,WIPO Case No. D2003-0174). However, there has been no evidence produced by the Respondent in this regard.
There is no evidence that suggests that the Respondent has been or is commonly known by the Domain Name. In addition, there is no evidence that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name or any trademark confusingly similar thereto, as a domain name or for any other purposes.
Further, there is evidence that the Respondent is diverting customers by selling goods bearing the mark JIMMY CHOO (which appear to be counterfeit goods) through the Domain Name and stating on the Respondent’s website that “of course all products are genuine,” which clearly suggests that the use of the Domain Name containing the JIMMY CHOO Marks is misleading and not a legitimate noncommercial or fair use of the Domain Name.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name, and the Complainant has therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the complainant must prove that the domain name has been registered and is being used in bad faith. In addition, paragraph 4(b) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the complainant in order to demonstrate bad faith use and registration of the domain name. Such circumstances include, among others:
- circumstances indicating that you have registered domain name primarily for the purpose of selling the domain name registration to the complainant who is the owner of the trademark (Paragraph 4(b)(i)); and
- registration of the domain name in order to prevent the owner of the domain trademark from reflecting the mark in a corresponding domain name, provided that the complainant have engaged in a pattern of such conduct (Paragraph 4(b)(ii)); and
- by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location (Paragraph 4(b)(iv).
In the Panel’s assessment, the Respondent must have had knowledge of the Complainant’s rights in the JIMMY CHOO Marks when it registered the Domain Name, since the Complainant’s JIMMY CHOO Marks are unique and well known. The Respondent’s awareness of the Complainant’s trademark rights in the JIMMY CHOO Marks at the time of registration suggests opportunistic bad faith registration (see BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007). Also, the fact that the Domain Name is linked to a website which is not associated with the Complainant and selling purportedly counterfeit products, and at a minimum, are competing with the Complainant’s goods, would amount to bad faith (see Prada S.A. v. Domains for Life,WIPO Case No. D2004-1019).
The evidence also establishes that the Respondent is linking the Domain Name to a website which offers JIMMY CHOO products without being authorized or approved by the Complainant, despite having likely known of the Complainant’s trademark rights in the JIMMY CHOO Marks. Further, there is strong evidence that the products sold on the website are allegedly counterfeit JIMMY CHOO products as, according to the available record, the Japan Customs have noted that there are “points on which their specifications differ from the genuine goods” and it was clear to the Complainant that the goods sold to a customer were counterfeit. Finally, it is likely that the Respondent is intentionally profiting of the goodwill associated with the JIMMY CHOO Marks by selling JIMMY CHOO products to Internet users who are likely confused of the source, affiliation, or endorsement of such products. Therefore, the Panel is satisfied that the Complainant has established bad faith registration and use as required by 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.
Haig Oghigian
Sole Panelist
Date: November 25, 2014
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