The Complainant is Selfridges Retail Limited of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Lane IP Limited, UK.
The Respondent is JiaSheng Li of Yichun, Heilongjiang, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Zhengzhou Zitian Network Technology Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 2, 2015. On October 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 12, 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 October 12, 2015, the Center transmitted an email to the parties in English and Chinese regarding the language of proceeding. On October 13, 2015, the Complainant submitted its request that English be the language of proceeding by email to the Center. The Respondent did not submit any comments regarding the language of 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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on October 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 10, 2015.
The Center appointed Matthew Kennedy as the sole panelist in this matter on November 18, 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 is a retailer operating globally online and through physical stores in the UK. It was incorporated in the UK in 1908 and has continuously used the SELFRIDGES trademark and the SELFRIDGES & CO logo and mark since that date.
The Complainant is the owner of many trademark registrations consisting of SELFRIDGES in multiple jurisdictions around the world. Its registrations specify multiple classes of goods and services including international class 25 for footwear and international class 35 for retail services. Its registrations include UK trademark no. 1428361, registered from April 10, 1992 in respect of all goods included in class 25 inter alia, and UK trademark no. 2002025, registered from September 21, 2001 in respect of various retail services in class 35. Its trademark registrations also include eleven registrations of SELFRIDGES in China, among them registration no. 865767, registered from August 21, 1996 in respect of goods in class 25. The Complainant also owns many trademarks that include SELFRIDGES or depict the word in a stylized script or consist of a phonetic translation of that word in Chinese.
According to the Registrar's WhoIs database, the disputed domain name was registered on August 8, 2015. The Registrar confirmed that the name of the registrant is Jiasheng Li. 5. Parties' Contentions A. Complainant
The Complainant owns multiple trademark registrations of SELFRIDGES and the SELFRIDGES & CO logo and mark. The Complainant has run the domain name since 1997 which is a highly popular and truly global website. The Complainant is one of the largest department stores and retailers in the world and its trademarks are extremely well-known as a result of its extensive use of them. The disputed domain name wholly includes the Complainant's trademark SELFRIDGES and the addition of the word "shoes" is entirely descriptive as the disputed domain name resolves to a website that sells shoes.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant is not affiliated with, nor does it endorse nor sponsor the Respondent's use of the disputed domain name. The Respondent has no trademarks consisting of SELFRIDGES or any related mark and the Complainant has not been able to uncover any evidence that the Respondent is commonly known, as or referred to, by that name. The disputed domain name is being used to infringe the Complainant's trademark. The Complainant believes that the goods offered for sale on the Respondent's website are not genuine which is detrimental to the reputation of the SELFRIDGES brand. The Respondent is clearly fully aware of the Complainant's trademark and using it for commercial gain to attract traffic to his website.
The disputed domain name has been registered and is being used in bad faith. The disputed domain name is identical to the Complainant's trademark. The Respondent's use of the trademark for identical services in the fashion market will confuse Internet users as to the source of the website. The Respondent's website is similar to the Complainant's website which will confuse Internet users into thinking it is an official extension of the Complainant's website. The Respondent is operating a nearly identical website at another site and using another famous brand, probably without authorization. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of this Proceeding
Paragraph 11(a) of the Rules provides that "unless 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". The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its arguments are that the Complainant is in an English-speaking country; it would be highly inequitable for the Complainant to bear the cost of translation of all the evidence; the disputed domain name is made up of "English" letters and characters; and the disputed domain name resolves to a website that displays content in English.
The Panel notes that all the Center's email communications with the parties have been in both Chinese and English. The Respondent was given an opportunity to object to the Complainant's request that English be the language of the proceeding but the Respondent did not in fact object nor did he express any wish to respond to the Complaint.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. (See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293).
The Panel observes that in this proceeding the Complaint was filed in English. The screenshots of the Respondent's website provided in evidence are also in English and it is therefore reasonable to believe that the Respondent is familiar with that language. The Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Analysis and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(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
Based on the evidence submitted, the Panel finds that the Complainant has rights in registered trademarks consisting of the word SELFRIDGES.
The disputed domain name incorporates the Complainant's trademark in its entirety. The Complainant's trademark is the dominant element of the disputed domain name. An additional element, combined with the final letter of the trademark which precedes it, spells 'shoes' which is merely a generic word. A generic word is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant's trademark. (See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110). The overlap between the final letter of the trademark and the additional generic word is so minor that it does not dispel the confusing similarity either. The addition of a generic Top-Level Domain ("gTLD") suffix such as ".com" generally has no capacity to distinguish a domain name from a trademark. (See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei，WIPO Case No. D2014-0080). Consequently, the only distinctive element of the disputed domain name for the purposes of this comparison is the Complainant's SELFRIDGES trademark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the 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) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As regards the first circumstance, the evidence shows that before receiving notice of this dispute the Respondent was using the disputed domain name in connection with the offering of shoes for sale. The issue is whether that offering was bona fide. The only distinctive element of the disputed domain name is identical to the Complainant's trademark yet, according to the Complaint, the Respondent has no connection to the Complainant. There is nothing on the Respondent's website that would indicate any reason for choosing that domain name in connection with the offering of shoes other than to misleadingly divert Internet users to the site with intent for commercial gain. Accordingly, the Respondent's use of the disputed domain name in connection with the offering of goods or services was not bona fide. Accordingly, the Panel does not find that the Respondent's use falls within the first circumstance of paragraph 4(c) of the Policy.
As regards the second circumstance, the Respondent's name is Jiasheng Li. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
As regards the third circumstance, the disputed domain name resolves to a website that offers footwear for commercial sale. This is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has prima facie discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The burden now shifts to the Respondent to show that he does have some rights or legitimate interests, but the Respondent did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
"(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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 [the respondent's] web site or location or of a product or service on [the respondent's] web site or location."
The Respondent registered the disputed domain name in 2015, many years after the Complainant obtained its trademark registrations, including in China where the Respondent is located. The dominant element of the disputed domain name is identical to the Complainant's trademark. The disputed domain name combines the Complainant's trademark with the generic word "shoes", although the two elements overlap in one letter. Shoes are one of the products in connection with which the Complainant has registered its trademark in many countries, including China, and in connection with which it uses its trademark online and in the UK. The combination of these two elements in the disputed domain name as registered indicates an awareness by the Respondent of the Complainant's trademark and its goods and retail services. This conclusion is confirmed by the top results in a search of the term "Selfridges"' on the Chinese search engine Baidu, which include the Complainant's official website.
The Respondent uses the disputed domain name, including the Complainant's trademark, with a website to offer shoes for sale. The Respondent's website does not display the Complainant's trademark in its content but that does not prevent the disputed domain name from attracting Internet users to the site. It can also be observed that the layout on the Respondent's website is similar to the layout of a page offering similar goods on the Complainant's official website. The Respondent has no connection with the Complainant. Given these facts, the Panel considers that the Respondent's use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of the products on that website.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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.
Matthew Kennedy
Sole Panelist
Date: November 25, 2015
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