The Complainant is C & J Clark International Limited, United Kingdom, represented by SafeNames Ltd, United Kingdom.
The Respondents are Gueijuan Xu, China/Mike Ligon, Sabine Peloquin, Sandra Batista, Name Redacted1 , United States of America (“United States”). 2. The Domain Names and Registrars
The disputed domain names , , , and are registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2019. On July 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 26, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants 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 the Respondents of the Complaint, and the proceeding commenced, on July 31, 2019. On August 5, 2019, a person named as one of the Respondents sent email communications to the Center, stating that she has received a letter/complaint filed against her and would like to know what this was in regards to.
In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2019. The Respondents did not file any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on August 23, 2019.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on August 30, 2019. 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
The Complainant is a company incorporated in the United Kingdom and is an international shoe manufacturer and retailer, founded in 1825.
The Complainant is the owner of numerous registrations worldwide for its trade mark CLARKS (the “Trade Mark”), including European Union Trade Mark registration No. 000167940 with a registration date of July 16, 1998.
It has been held by panelists in previous UDRP decisions that the Complainant enjoys a widespread and valuable reputation in the Trade Mark in many countries throughout the world. B. Respondents
The Respondents are individuals, apparently with an address in the United States, except for an individual with an address in China, with whom all the Respondents share commonalities. C. The Disputed Domain Names
The disputed domain names were registered on September 19, 2018; September 20, 2018; June 15, 2018; and September 25, 2018, respectively. D. The Websites at the Disputed Domain Names
The disputed domain name has previously been resolved to a website that mimicked the look and feel of the Complainant’s official website and apparently offered for sale footwear (the “Website”). The rest of the disputed domain names do not resolve to active websites. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Mark, the Respondents have no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names were registered and are being used in bad faith. B. Respondents
The Respondents did not respond to the Complainant’s contentions. 6. Discussion and Findings 6.1 Consolidation of Respondents
Previous UDRP decisions suggest that consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the disputed domain names resolve, where consolidation would be fair and equitable to all parties, and where procedural efficiency supports consolidation (see section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present proceeding, the Complainant contends as follows:
(i) The Admin Contact in the WhoIs searches for each of the disputed domain names lists the same name (“Gueijuan Xu”) and the same email address;
(ii) Gueijuan Xu has been the respondent in 16 previous UDRP proceedings where he/she was found by the panelists to have used multiple aliases.
The Respondents did not file a response and did not file any submissions with respect to this issue.
In all the circumstances, the Panel concludes that the evidence relied upon by the Complainant supports the conclusion that common control is being exercised over the disputed domain names. In addition to the factors relied upon by the Complainant listed above, the Panel notes that the disputed domain names (1) have each been registered using the same Registrar; (2) were all registered between June and September 2018; (3) are very similar (each comprising the Trade Mark in its entirety followed by the word “shoes” and the commonly used abbreviation for the United States, “us”); and (4) there were email communications attaching the written notice of this proceeding by a person named as one of the Respondents but from an email address different to the one identified by the Registrar for that registrant.
In all the circumstances, the Panel determines, under paragraph 10(e) of the Rules, that consolidation of the Respondents is procedurally efficient and equitable to all the Parties, is consistent with the Policy and Rules, and comports with prior relevant UDRP decisions in respect of this issue. The Respondents are referred to hereinafter as the “Respondent”. 6.2 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain names incorporate the entirety of the Trade Mark (see WIPO Overview 3.0, section 1.7) together with the words “shoes”; the abbreviation “us”; and the words “shop”, “online”, “outlets” and “outlet shop”, respectively.
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in disputed domain names:
i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain names or names corresponding to the disputed domain names 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 names even if the respondent has acquired no trade mark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that he or she has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the Respondent has previously used the disputed domain name in order to pass off the Website as a website of the Complainant, or otherwise a website sponsored, authorised or approved by the Complainant.
The remaining three disputed domain names have not been used; and as at the date of this decision, the Website (and the disputed domain name ) are no longer in use.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Given the notoriety of the Complainant and of its Trade Mark (including in China, where the Respondent is based; and in the United States); the lack of any substantiated credible explanation from the Respondent; the passive use of the disputed domain names; and the Respondent’s previous use of the Website in the manner described in Section 6.2.B. above, the Panel finds, in all the circumstances, that the requisite element of bad faith has been made out. The Panel considers it is inconceivable the Respondent was not aware of the Complainant’s Trade Mark at the time it registered the disputed domain names.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are 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 names , , , and be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Date: September 13, 2019
1 The Respondent appears to have used the name and contact details of a third-party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted,WIPO Case No. D2017-1520; Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
Full & Egal Universal Law Academy