Complainant is C & J Clark International Limited of Street, Somerset, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Squire Patton Boggs (UK) LLP, United Kingdom.
Respondent is Ludwig Rhys of Parkville, Aomori, Japan. 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 February 10, 2017. On February 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 13, 2017.
The Center appointed Richard Hill as the sole panelist in this matter on March 27, 2017. 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
Complainant, a shoe manufacturer and retailer, owns rights in the mark CLARKS dating back to 1929. The mark is registered in several countries around the world, including Japan, where the word mark CLARKS was registered on January 21, 2005.
The disputed domain name was registered on March 8, 2016.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain name to resolve to a web site that displays Complainant’s mark and trade dress, that has a heading “Welcome to Clarks outlet store!”, and that offers for sale a range of shoes that purport to be Complainant’s products. 5. Parties’ Contentions A. Complainant
Complainant states that it is a well-known UK-based international shoe manufacturer and retailer who has built an excellent reputation worldwide especially for the high quality and design of its products. Complainant’s trademarks enjoy a significant reputation worldwide, particularly in the United Kingdom, Europe and the United States of America. Complainant is the owner of various trademark registrations and applications for the mark CLARKS in, inter alia, the United Kingdom, European Union, United States of America, and Japan.
According to Complainant, the disputed domain name is confusingly similar to its widely used CLARKS trademark. The disputed domain name incorporates Complainant’s mark in its entirety and adds “shoes”, which relates to the type of goods sold, and “online sale”, which relates to the retail sector in which Complainant operates. Therefore, the overall impression is that Complainant’s trademarks are the dominant part of the disputed domain name and the addition of “shoes online sale” is furthermore misleading as it authenticates the use of Complainant’s trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name as he is not affiliated with Complainant or licensed to use Complainant’s trademark. Respondent is not commonly known by the disputed domain name nor has he acquired any trademark rights in the name through a bona fide offering of goods or services. Instead, the use of Complainant’s trademarks for the disputed domain name appears to be aimed at users seeking discount goods provided from Complainant’s outlet store and should be considered as unfair use resulting in misleading diversion, particularly as Complainant’s main operations are in retail.
Further, says Complainant, Respondent registered and is using the disputed domain name in bad faith under paragraphs 4(b)(ii) and (iv) of the Policy. In respect of paragraph 4(b)(ii) of the Policy, Respondent has 339 domain names listed under his email address. Apart from the disputed domain name, there are numerous other domain names of famous Western brands that are equally exploited, and Complainant has provided a list of such domain names. It is clear that Respondent engages in a pattern of behavior that prevents well-known Western brands from exercising their legitimate trademark rights by registering domain names that include their brands in conjunction with a descriptive term facilitating the retail of the branded products.
The disputed domain name was furthermore registered and is used in bad faith as it uses Complainant’s trademark to attract Internet users to Respondent’s website based on a likelihood of confusion with its trademark. This is in violation of paragraph 4(b)(iv) of the Policy.
Considering Respondent’s substantial use of the trademark, he appears to have both actual and constructive notice of Complainant’s marks, which shows the disputed domain name was intentionally registered to profit unfairly from the goodwill of Complainant’s trademark. This is furthermore suggested by the inclusion of “online sale” in the domain name. It is likely that “online sale” was included in order to create further confusion relating to the marks as a consequence of Complainant’s customers associating the mark with the main industry in which Complainant operates and has successfully established a reputation.
In summary, Respondent’s use of the disputed domain name is a deliberate confusion created by the similarity of the disputed domain name to Complainant’s trademarks. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. Asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by Complainant. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009; see also Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109. A. Identical or Confusingly Similar
It is clear that the disputed domain name is confusingly similar (in the sense of the Policy) to Complainant’s mark, because it contains the mark and merely adds the common words “shoes”, “online”, and “sale” to form the domain name. See HUGO BOSS Trade Mark Management GmbH & Co. KG and Hugo Boss AG v. Ludwig Rhys,WIPO Case No. D2015-0280; see also PACCAR, Inc. v. Enyart Associates and T, LLC,WIPO Case No. D2000-0289; see also Quixtar Investments Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253.
The first element of the Policy has been established. B. Rights or Legitimate Interests
Respondent does not have any license or other authorization to use Complainant’s mark or to sell its products or services. Respondent is not commonly known by the disputed domain names.
Respondent is using the disputed domain name to resolve to a web page that creates an impression of being an official site endorsed by Complainant, in particular by displaying Complainant’s trademark without accurately and prominently disclosing the lack of Respondent’s relationship with Complainant. Thus Respondent’s use of Complainant’s mark in the disputed domain name appears to be an attempt to trade off of Complainant’s reputation and goodwill by taking advantage of the confusing similarity between the disputed domain name and Complainant’s trademark.
Legitimate rights or bona fide use do not exist when the domain name is used in bad faith to divert users through confusion, see the discussion below and see HUGO BOSS Trade Mark Management GmbH & Co. KG and Hugo Boss AG v. Ludwig Rhys,WIPO Case No. D2015-0280; see also The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan,WIPO Case No. D2002-0701; see also AltaVista Company v. Saeid Yomtobian,WIPO Case No. D2000-0937.
The second element of the Policy has been established. C. Registered and Used in Bad Faith
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
The WhoIs information for Respondent indicates Respondent’s physical address to be in “Parkville, Aomori […], Japan”. While Aomori is a prefecture in Japan, there does not appear to be any city or town called “Parkville” in Japan. Further, the street address indicated to be on “N Yosemite St” does not appear to be a Japanese street address. In light of Respondent’s failure to respond, the Panel concludes that the WhoIs information is likely incorrect or false. Providing false WhoIs information is indicative of bad faith registration and use, see Mrs. Eva Padberg v. Eurobox Ltd.,WIPO Case No. D2007-1886; see also Forte Communications, Inc. v. Service for Life,WIPO Case No. D2004-0613; see also Salomon Smith Barney Inc. v. Salomon Internet Services,WIPO Case No. D2000-0668; see also Yahoo!, Inc. v. Eitan Zviely, et al.,WIPO Case No. D2000-0273; see also Telstra Corporation v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Respondent is using the disputed domain name to resolve to a web site that displays Complainant’s mark and trade dress, that has a heading “Welcome to Clarks Outlet Store”, and that offers for sale a range of shoes that purport to be Complainant’s products. An Internet user is likely to believe that the web site in question is one of Complainant’s authorized web sites.
According to paragraph 4(b)(iv) of the Policy, the following constitutes evidence of bad faith registration and use of a domain name: “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.”
By using Complainant’s mark and trade dress on his web site, together with the heading “Welcome to Clarks outlet store!”, Respondent has created a likelihood of confusion with Complainant’s mark as to the source and affiliation of his web site. Further, since he is offering products for sale, he has intentionally attracted, for commercial gain, Internet users to his web site. Thus the conditions of paragraph 4(b)(iv) of the Policy are satisfied and the Panel finds that Respondent has registered and is using the disputed domain name in bad faith in the sense of the Policy. See HUGO BOSS Trade Mark Management GmbH & Co. KG and Hugo Boss AG v. Ludwig Rhys,WIPO Case No. D2015-0280; see also Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946; see also AB Electrolux v. Pablo Rodriguez Guirao,WIPO Case No. D2011-0729.
The third element of the Policy has been established. 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 Complainant.
Richard Hill
Sole Panelist
Date: March 30, 2017
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