Complainant is Strellson AG, Switzerland, represented by SKW Schwarz Rechtsanwälte, Germany.
Respondent is Contact Privacy Inc. Customer 0158067984, Canada / puckpong pungvicha, joopshoppingonline, Thailand. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2020. On August 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 4, 2020, the Registrar transmitted by email to the Center its verification response disclosing 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 Complainant on August 7, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 7, 2020. 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 Respondent of the Complaint, and the proceedings commenced on August 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 3, 2020. The Center appointed Roberto Bianchi as the sole panelist in this matter on October 12, 2020. 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 owns European Union word mark 007543119 for JOOP! ONLINESHOP, registered on July 23, 2009, covering goods and services of classes 18 and 25, and European word mark 013083852 for JOOP, registered on February 3, 2014, covering goods and services of classes 4, 8, 9, 11, 14, 16, 18, 20, 21, 24, 25, 27, 34, 35 and 42. Complainant also owns the disputed domain name The disputed domain name was registered on May 25, 2020. At the time of rendering the Decision, the website at the disputed domain name displayed an initial page entitled “Joop”, and offering sport shoes from Nike, as well as sneakers and other footwear. Apparently, no Joop products are being offered on this website. Nowhere on the website is the identity of the owner of the website provided. In the section entitled “Terms of Service”, there is a clause stating that such terms are governed by the laws of Thailand. 5. Parties’ Contentions A. Complainant Complainant contends as follows: The disputed domain name is confusingly similar to the JOOP! ONLINESHOP and JOOP trademarks, in which Complainant has rights. This similarity causes confusion, especially with regard to the term “joop”. Internet visitors will be under the impression that Respondent’s web shop at the disputed domain name is connected to Complainant, based on the usage of the very well-known trademark “JOOP”. Visitors will especially confuse Respondent’s web shop with Complainant’s own web shop at “https://joop.com/”. Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is operating in the area of fashion and shoes. Respondent is not selling shoes from Complainant, but shoes from other well-known brands. It is noteworthy that Complainant does not sell products of brands of third parties. Respondent is not licensed by Complainant to use its JOOP trademark. Respondent is employing the disputed domain name to use a sign identical to the trademarks of Complainant as an indication of the characteristics or properties of goods or services, in particular their nature, quality, intended purpose, value, geographical origin or time of production or of rendering, and as an indication of the intended purpose of a good, in particular as an accessory. Respondent’s use of Complainant’s trademarks contravenes accepted principles of morality. The web shop operated by Respondent at the disputed domain name is a fake web shop. The legal texts on this web shop contain place holders. The identity of the web shop is not transparent. There is only an address indicated with regard to “31 Soi Jarunsanitwong 72, Jarunsanitwong Rd., Bangphalt, Bangkok, 10700 Thailand”, without providing any name. The disputed domain name was registered and is being used in bad faith. Complainant’s mark JOOP is used without any proper authorization to drive traffic to the disputed domain name and to promote Respondent’s web shop. Respondent is using the disputed domain name with the intention to attract, for commercial gain, Internet users to the above mentioned website, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent’s web shop does not in any manner reflect the values connected to Complainant’s trademark. Respondent is free-riding on Complainant’s trademark, and damaging the reputation of Complainant by providing a cheap look-a-like (fake) web shop. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar With printouts taken from the EUIPO Trademark database, Complainant has shown to the satisfaction of the Panel that it owns registrations for - and therefore rights in - the JOOP! ONLINESHOP and JOOP trademarks. See section 4 above. The Panel notes that the disputed domain name is made of the addition of the terms “Joop” and “shoppingonline” (exclamation marks are unavailable when registering domain names). In the latter term, the dictionary terms “shopping” and “online” simply invert the order of the terms “online” and “shop” in Complainant’s JOOP! ONLINESHOP mark. Since the expressions “onlineshop” and “shoppingonline” have nearly the same meaning, the inversion of terms is insufficient to distinguish the disputed domain name from Complainant’s mark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s JOOP! ONLINESHOP mark. Since “online shopping” is simply a combination of two dictionary terms, its addition to Complainant’s JOOP trademark would not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”) Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks. B. Rights or Legitimate Interests Complainant says that Respondent is not licensed by Complainant to use its JOOP trademark, and the Panel does not see any evidence or any license or authorization for Respondent to use Complainant’s marks in any manner. The Panel also notes that Respondent is selling shoes from Nike, as well as other footwear. None of these products appear to be from Complainant, who denies selling any products from third parties. Thus, it is more likely than not that Respondent is employing the disputed domain name to induce Internet users to believe they are connected to Complainant’s website. Obviously, Respondent’s deceptive conduct is neither a bona fide use pursuant to Policy paragraph 4(c)(i), nor a fair or legitimate noncommercial use without intent for commercial gain to misleadingly divert consumers under Policy paragraph 4(c)(iii) The Panel agrees with Complainant that the identity of the owner of the website at the disputed domain name is not transparent. This website only provides an address in Bangkok, Thailand, but no name of the owner. In any case, according to the WhoIs data afforded by the Registrar, the registrant of the disputed domain name, i.e., Respondent, is “puckpong pungvicha, joopshoppingonline”. Nothing indicates that this registrant is being known – commonly or otherwise – by the disputed domain name. Therefore, Policy paragraph 4 (c)(ii) does not apply. Complainant has thus succeeded in raising a prima facie case that Respondent lacks any rights or legitimate interests in the disputed domain name. For its part, Respondent failed to come forward with any explanation or reasons for having registered and using the disputed domain name as shown. Therefore, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The Panel notes that the registration of Complainant’s mark JOOP! ONLINESHOP predates the registration of the disputed domain name by almost 11 years, while the registration of Complainant’s At the time of rendering the Decision, the website at the disputed domain name showed an initial page entitled “Joop”, on which Nike Air sport shoes from Nike, as well as sneakers and other footwear from unidentified sources were being offered. Apparently, no Joop products are being offered on this website. For its part, Respondent failed to present any explanation for its use of Complainant’s mark on the website at the disputed domain name. Therefore the Panel finds that Respondent is using the disputed domain name intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of its website or of products or services on its website. According to Policy paragraph 4(b)(iv), this is a circumstance of registration and use of the disputed domain name in bad faith. The Panel concludes 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, Roberto Bianchi
Sole Panelist
Date: October 26, 2020
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