The Complainant is Yumi International Limited, United Kingdom, represented by Briffa Legal Limited, United Kingdom.
The Respondent is Helen Stewart, United Kingdom. 2. The Disputed Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2019. On December 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 18, 2019, the Registrar transmitted by email to the Center its verification response, with registrant and contact information for the Disputed Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 19, 2019, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 23, 2019. The Center verified that the Complaint together with the amendment to 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 and the proceedings commenced on December 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2020. The Center appointed Michael D. Cover as the sole panelist in this matter on January 23, 2020. The Panel finds that it was properly constituted. The Panel has submitted its 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 fashion house and has a women’s clothing division, which was founded in 2008 as “Mela Loves London” and was renamed in 2014 as “Mela London”. The Complainant’s turnover for financial year 2018 was approximately GBP 23 million and the Complainant’s MELA LONDON brand has approximately 48,000 customers around the world. The principal domain name used by the Complainant is The Disputed Domain Name resolves to a website which allegedly offers counterfeit MELA LONDON goods. The website also features the Complainant’s trademarks and images of the Complainant’s products, offering them at discounted prices. The Disputed Domain Name was registered on April 15, 2019. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar to a trademark in which the Complainant has rights: The Complainant submits that, as a result of the extensive use of MELA LOVES LONDON in relation to clothing, footwear and headgear for a period of over 10 years and, more recently, of the MELA LONDON trademark, the Complainant’s trademark is a well-known mark distinguishing the Complainant’s goods throughout the world. The Complainant goes on to submit that the Disputed Domain Name is confusingly similar to the Complainant’s mark. The Complainant states that the Disputed Domain Name is identical to the Complainant’s trademark, with the addition of the descriptive or generic term “fashion”. Further, the Complainant continues, the term “fashion” is associated with the Complainant’s MELA LONDON trademark, because the Complainant offers for sale “fashion” items under this trademark. The Complainant continues that it is well-established that, where a domain name has been invented by a respondent by adding a descriptive or generic word to a distinctive mark in which the complainant has rights, then such a domain is to be considered confusingly-similar to the complainant’s mark. The Complainant sites in support Intel Corporation v the Pentium Group,WIPO Case No. D2009-0273). The Complainant also submits that the generic Top-Level Domain (“gTLD”) “.com”, which is an integral and technical part of the Disputed Domain Name, may be disregarded in the determination of confusing similarity under the UDRP. The Complainant cites in support Intel Corporation v. The Pentium Group.,WIPO Case No. D2009-0273. Rights or Legitimate Interests: The Complainant submits that, to the best of the Complainant’s knowledge and belief, the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and has never been authorised by the Complainant to use the mark MELA LONDON. The Complainant goes on to submit that, before any notice to the Respondent of the dispute, the Respondent has not used or made demonstrable preparation to use the Disputed Domain Name in connection with a bone fide offering of goods or services. The Complainant submits that the website associated with the Disputed Domain Name is being used by the Respondent to market goods which are counterfeit MELA LONDON goods. There can be no legitimate interest, continues the Complainant, in the sale of counterfeits. The Complainant notes that the website in question also features the Complainant’s trademarks and images of the Complainant’s products, all without the authorisation or approval of the Complainant. The Complainant continues that, to the best of the Complainant’s knowledge and belief, the Respondent has not been commonly known by the Disputed Domain Name. The Complainant also submits that, whilst the overall burden of proof rests with the Complainant, that it has made out a prima facie case and that the burden therefore shifts to the Respondent. The Complainant submits that, as the Respondent is using the Disputed Domain Name to facilitate the sale of counterfeit goods, the Complainant has satisfied paragraph 4(a)(ii) of the Policy and the burden, having shifted, has not been discharged by the Respondent. Registered and Used in Bad Faith: The Complainant submits that the Respondent has registered the Disputed Domain Name in order to prevent the Complainant from reflecting its well-known trademark in a corresponding domain name. The use of the Disputed Domain Name, says the Complainant, as an outlet to sell counterfeit goods is evidence of the Respondent’s intention to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and goods. Further, the Disputed Domain Name incorporates a well-known trademark with no explanation for having done so and it is not possible to imagine any future use by the Respondent of the Disputed Domain Name, which would not be in bad faith, continues the Complainant. The Complainant refers to the screenshots of the website associated with the Disputed Domain Name, which are included at Annex 6 to the Complaint, and the Complainant submits that these show that the Disputed Domain Name is currently being used for the sale of counterfeit goods. The Complainant continues that its trademark MELA LONDON is distinctive and well-known internationally and that the reputation of the MELA LONDON trademark is such that the Respondent knew or should have known of the existence of the Complainant’s trademarks at the time when the Disputed Domain Name was registered. The Complainant concludes that the incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Complainant must demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel accepts that the Complainant has established registered rights in its MELA LONDON and MELA LOVES LONDON trademarks. The MELA LOVES LONDON trademark has been registered since 2009 and the MELA LONDON trademark since 2015. Extensive use has been made of the MELA LOVES LONDON trademark from 2008 to 2014 and the MELA LONDON trademark since 2014. The Panel accepts the submission of the Complainant that, as a result, the MELA LONDON trademark has become a well-known trademark. The Panel also accepts that the Disputed Domain Name is confusingly similar to the Complainant’s trademark, in which the Complainant has rights. The Disputed Domain Name incorporates the Complainant’s well-known trademark MELA LONDON in full, with the addition of the non-distinctive element “fashion”. It is well-established that that the addition of the gTLD “.com” does not avoid a finding that a disputed domain name is confusingly similar to a complainant’s trademark. It is also well-established that the addition of non-distinctive terms, such as “fashion”, as here, does not avoid a finding of confusing similarity. The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark, in which the Complainant has rights, and that the provisions of paragraph 4(a)(i) of the Policy have been met. B. Rights or Legitimate Interests The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. There is no evidence before the Panel to indicate that the Complainant has licensed or authorized the Respondent to use the MELA LONDON or MELA LOVES LONDON trademarks. The Panel accepts that the burden then passes to the Respondent, the Complainant having made out a prima facie case. The Respondent has failed to satisfy the burden, which has passed to the Respondent. The Respondent has not demonstrated use or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services, that it has been commonly-known by the Disputed Domain Name nor that it has been making legitimate noncommercial use of the Disputed Domain Name, without intent for commercial gain or to misleadingly divert consumers or to tarnish the MELA LONDON or MELA LOVES LONDON trademarks of the Complainant. The evidence put forward by the Complainant shows that such use as has taken place of the Disputed Domain Name has been in relation to a website which displays goods which are allegedly counterfeits of the goods of the Complainant, which appeared to be offered at significantly discounted prices. The Panel therefore accordingly finds that the provisions paragraph 4(a)(ii) of the Policy have been met. C. Registered and Used in Bad Faith The Panel accepts that the Disputed Domain Name has been registered and is being used in bad faith. The non-exhaustive list of evidence of registration and use in bad faith in paragraph 4(b) of the Policy includes: registration of the domain name in order primarily for the purpose of disrupting the business of a competitor and by using the domain name the registrant has intentionally attempted to attract, for commercial gain, Internet users to its website or other on line online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location. The Panel finds that both the above circumstances have been established here by the Complainant. This is evidenced by the fact that the Disputed Domain Name resolved to a website which allegedly offered counterfeit goods, which would otherwise have appeared to have originated from the Complainant. The Panel therefore finds that the Disputed Domain Name has been registered and is being used in bad faith and that the provisions of paragraph 4(a)(iii) have been met. 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 Michael D. Cover
Sole Panelist
Date: January 24, 2020
Full & Egal Universal Law Academy