The Complainant is J. Choo Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by A. A. Thornton & Co., United Kingdom.
The Respondent is Guan Mingliang of Huainan, Anhui, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Century Oriental International Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2015. On July 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 21, 2015, 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.
On July 22, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On July 23, 2015, the Complainant confirmed its request that English be the language of the proceeding. The 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 the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on July 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on August 28, 2015. 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 states that it owns numerous registrations around the world for the trade mark JIMMY CHOO including Community Trade Mark Registration Nos. 1662543 and 2587830, Chinese Trade Mark Registration Nos. 3189589, 6015566, 3189590, 3189591, 3189592, 4605177 and 1637164. The JIMMY CHOO brand is a luxury and high fashion brand known around the world for luxury footwear for women and men, as well as handbags, small leather goods, scarves and belts.
The Complainant has been trading under the JIMMY CHOO brand since 2001 and spends considerable amounts of time and money promoting the brand. New Jimmy Choo products and collections are frequently featured in fashion magazines such as Tatler, Harper’s Bazaar and Vogue. The JIMMY CHOO brand’s status as a luxury label with a reputation for the production of high quality fashionable shoes and accessories is often referred to in the media. The Complainant’s Jimmy Choo products are often worn by celebrities and are a popular choice to wear at red carpet events such as the Academy and Golden Globe Awards.
As of April 2013, the Complainant has over 120 JIMMY CHOO-branded stores across the world.
Domain name registrations the Complainant owns include , , , , , and . The Complainant’s website at “www.” attracts a very high volume of Internet traffic from all around the world including from China where the Respondent is domiciled.
The disputed domain name was registered on November 6, 2013. 5. Parties’ Contentions A. Complainant
(1) The Complainant asserts that the disputed domain name is confusingly similar to the JIMMY CHOO trade mark in which it has rights. The disputed domain name incorporates the trade mark in its entirety. The addition of the terms “online” and “uk” does not prevent the disputed domain name from being confusingly similar to the JIMMY CHOO trade mark. In fact, the addition of these terms are relevant to the Complainant’s business and their use adds to consumer confusion by implying that the disputed domain name links to a website promoting the Complainant’s online business in the UK.
(2) The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that the 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 marks at issue so as to create an impression of association with the Complainant.
The Respondent is using the disputed domain name to purportedly offer for sale authentic JIMMY CHOO-branded products. The Complainant believes that these goods are counterfeit. The Respondent is not authorized by the Complainant to sell the Complainant’s goods or to register the disputed domain name. It is highly unlikely that the Respondent is offering genuine Jimmy Choo products. Even if they are genuine, the Respondent cannot claim a legitimate interest in the disputed domain name as the use is misleading.
The website to which the disputed domain name resolves includes at the bottom “Powered by Jimmy Choo Online” and a number of hyperlinks to the words “Jimmy Choo UK”, “Jimmy Choo shoes” and “Jimmy Choo boots”. The use of the disputed domain name by the Respondent is misleading and creates the impression that the website is connected to, affiliated with or endorsed by the Complainant.
(3) The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Respondent’s aim is clearly to disrupt the Complainant’s business by diverting Internet users searching for the Complainant’s products and leading them away from the Complainant’s websites. The JIMMY CHOO mark is well known. The Respondent must have known of the trade mark when he registered the disputed domain name. Given the reputation of the JIMMY CHOO trade mark, it would be hard to conceive any reason why the Respondent would have chosen to incorporate the words “Jimmy Choo” in the disputed domain name other than to benefit from the goodwill attached to the trade mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
The language of the Registration Agreement in this case was Chinese whereas the Complaint was filed in English. The Complainant requested that English be adopted as the language of the proceeding for the reason that the Respondent appears to have a clear understanding of the English language and is targeting English-speaking consumers. The Respondent’s website at “www.” is in English. The Complainant submitted evidence that the Respondent is also the owner of the domain name which resolves to a website in English. This shows that the Respondent has a clear understanding of the English language and is targeting English-speaking consumers.
The Respondent did not respond on the issue of the language of the proceeding.
Paragraph 11(a) of the Rules stipulates that: “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Paragraph 10(c) of the Rules stipulates that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition.”
The Panel determines from its assessment of the circumstances of this case that it would be appropriate for English to be the language of the proceeding. The words making up the disputed domain name are in English, as are those of the other domain name () owned by the Respondent. The latter comprises the words “new”, “era”, “australia” and “sale”. The content of both websites is entirely in English. There is therefore no reason to doubt that the Respondent is familiar with English and, if not, he could have raised his objection in response to the Center’s notification of July 22, 2015. B. Identical or Confusingly Similar
The Complainant has established it has rights in the trade mark JIMMY CHOO by virtue of its trademark registrations and also by virtue of its extensive use. The JIMMY CHOO trade mark has been incorporated into the disputed domain name, combined with the descriptive terms “uk” and “online”.
Previous UDRP panels have ruled that the addition of non-distinctive elements or generic terms to a trade mark in a domain name would not serve to remove the confusing similarity with the complainant’s trade mark. (See Yahoo! Inc. v. Blue Q Ltd., Romain Barissat,WIPO Case No. D2011-0702 and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2 (“the WIPO Overview 2.0”)). In this case, “online” is a commonly-used term in the field of online sales of goods and the element “uk” suggests that the “intended audience” are Internet users from the UK and/or that the Respondent’s website pertains to the Complainant’s online business in the UK.
The Panel therefore finds that the Complainant has shown that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
The Complainant has not licensed or permitted the Respondent to use the JIMMY CHOO trade mark. It is clear from the use of the disputed domain name by the Respondent to offer for sale JIMMY CHOO-branded products without any disclaimer on the website, that his intention is to create a false impression of association with the Complainant or that his website is endorsed or permitted by the Complainant. The Panel finds that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent’s name is not “Jimmy Choo” but appears from the WhoIs records to be “Guan MingLiang”.
The burden of production of evidence accordingly shifts to the Respondent to show with evidence his rights or legitimate interests in the disputed domain name (see paragraph 2.1 of the WIPO Overview 2.0). The Respondent did not submit any response to rebut the Complainant’s case.
The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Panel is of the view that the JIMMY CHOO trade mark is well known. That being the case, and bearing in mind the content of the Respondent’s website as described above (which reflects the Respondent’s familiarity with and knowledge of the JIMMY CHOO brand and product line), the Panel cannot but find that the registration and use of the disputed domain name have been in bad faith.
The Complainant alluded that the goods sold from the Respondent’s website at “www.” are counterfeit in nature but no direct evidence has been submitted. The Panel therefore does not make any specific finding on that front.
Be that as it may, the Panel finds that the registration and use of the disputed domain name have been in bad faith, with reference to paragraph 4(b)(iv) of the Policy which states:
“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”.
Many of the Complainant’s trade mark applications were filed more than 10 years before the disputed domain name was registered. The Complainant started trading under the Jimmy Choo name since 2001. The disputed domain name was only registered in November 2013, by which time the JIMMY CHOO mark had become a well-known luxury brand. The Respondent has not responded in the proceeding nor even on the issue of the language of the proceeding. The Respondent has not explained the basis for his choice of the disputed domain name which incorporates a well-known trade mark in the fashion industry. The Respondent’s contact information also appears to have been false. The Panel draws a negative inference from these circumstances.
The Panel accordingly finds that the Complainant has satisfied its burden of establishing that the disputed domain name was registered and is being used in bad faith. 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.
Francine Tan
Sole Panelist
Date: August 31, 2015
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