The Complainant is LK Bennett Fashion Limited, United Kingdom (“UK”), represented by SILKA AB, Sweden.
The Respondent is 张平平 (zhang ping ping), China.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2021. On October 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 1, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (being redacted for privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 3, 2021, 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 in English on November 3, 2021.
On November 3, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On November 3, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on November 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified of the Respondent’s default on November 30, 2021.
The Center appointed Joseph Simone as the sole panelist in this matter on December 27, 2021. The Panel finds that it was properly constituted. The Panel 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 BackgroundThe Complainant, LK Bennett Fashion Limited, is a British fashion brand founded in 1990.
The Complainant has an extensive global portfolio of trade marks incorporating the term “LK BENNETT”, including the following:
- China Trade Mark Registration No. 11468927 in Class 25, registered on August 14, 2014; and
- China Trade Mark Registration No. 49561255 in Class 25, registered on May 28, 2021.
The Complainant currently operates a website promoting its business linked to the domain name
The disputed domain names were registered between July 8, 2021 and July 9, 2021. According to screenshots provided by the Complainant, at the time of filing the Complaint, the disputed domain names resolved to websites offering presumably LK Bennett counterfeits.
5. Parties’ Contentions A. ComplainantThe Complainant asserts that it has prior rights in the LK BENNETT trade marks and that it is a leading player in its field of business.
The Complainant further notes that the disputed domain names registered by the Respondent are identical or confusingly similar to the Complainant’s LK BENNETT trade marks, and the addition of the generic Top-Level Domain (“gTLD”) “.com” does not affect the analysis as to whether the disputed domain names are identical or confusingly similar to the Complainant’s trade marks.
The Complainant asserts that it has not authorized the Respondent to use the LK BENNETT mark, and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services.
The Complainant also asserts that there is no evidence suggesting that the Respondent has any connection to the LK BENNETT mark in any way, and that there is no plausible good faith reason for the Respondent to have registered the disputed domain names, especially after considering the relevant circumstances. The Complainant therefore asserts that the registrations and any use of the disputed domain names whatsoever must be in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Consolidation of Multiple RespondentsSection 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) establishes that “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.
All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have all the disputed domain names dealt with at the same procedure, given that the disputed domain names were registered under a same set of registrant information, sharing the same naming, Registrar, privacy server, and some of them also shared the same name servers, and were used in connection with identical webpages.
This Panel is satisfied, in view of the evidence submitted and on balance that the disputed domain names are indeed subject to a common control and that consolidation would be fair and equitable to all Parties.
B. Language of the ProceedingIn accordance with paragraph 11(a) of the Rules:
“[…] 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.”
In this case, the language of the Registration Agreement for the disputed domain names is Chinese.
The Complainant filed the Complaint in English, and requested that English be the language of the proceeding, asserting inter alia that the Complainant is of UK nationality, and that:
- the content on the websites resolving from the disputed domain names are in English;
- the Respondent has chosen domain names consisting of the LK BENNETT trade mark plus English words such as “skirts”, “shopping”, “coats”, “bags”, etc.; and
- it will put the Complainant through unnecessary trouble and delay if Chinese were made the language of the proceeding.
The Respondent was notified in both Chinese and English of the language of the proceeding and the Complaint and did not comment on the language of the proceeding or submit any response on the merits of these proceedings.
The Panel has also considered the fact that the disputed domain names are in English and written in Latin letters and not in Chinese characters, and the fact that adopting Chinese as the language of these proceedings could lead to unwarranted delays and costs for the Complainant.
Considering the circumstances in this case, the Panel has determined that the language of the proceeding shall be English, and the Panel has issued this decision in English. The Panel further finds that such determination would not cause any prejudice to either Party and would ensure that the proceeding takes place with due expedition.
C. Identical or Confusingly SimilarThe Panel acknowledges that the Complainant has established rights in the LK BENNETT trade marks in many jurisdictions around the world.
Disregarding the gTLDs “.com”, the disputed domain names incorporate LK BENNETT – the Complainant’s trade mark in its entirety.
The Panel further notes that the addition of the terms “bag”, “clothing”, “coats”, “discount”, “fashion”, “fullrange”, “jacket”, “series”, “shoes”, “shopping”, “skirts”, “specials” and “store”, does not prevent a finding of confusing similarity.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the LK BENNETT trade marks and in demonstrating that the disputed domain names are identical or confusingly similar to its marks.
D. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain names. Once such a prima facie case is made, the respondent carries the burden of producing evidence in support of its rights or legitimate interests in the disputed domain names. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
The Complainant asserts that it has not authorized the Respondent to use its trade mark and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services; to the contrary the Complainant alleges, and the Respondent does not contest, that the items sold are likely counterfeit.
Thus, the Complainant has established its prima facie case with satisfactory evidence.
The Respondent did not file a response and has therefore failed to assert factors or put forth evidence to establish that it enjoys rights or legitimate interests in the disputed domain names. As such, the Panel concludes that the Respondent has failed to rebut the Complainant’s prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain names, and that none of the circumstances of paragraph 4(c) of the Policy is applicable in this case.
The disputed domain names incorporate the Complainant’s distinctive LK BENNETT trade mark. This creates an obvious risk of implied affiliation. Also, such use cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names pursuant to paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad FaithParagraph 4(b) of the Policy states that any of the following circumstances in particular but without limitation shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trade mark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances in which bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trade mark of another party. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel believes that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(b)(iii) and (iv) of the Policy.
When the Respondent registered the disputed domain names in 2021, the LK BENNETT trademark was already widely known and directly associated with the Complainant’s activities.
Given the extensive prior use and fame of these marks and the similarity between the disputed domain names and these marks, in the Panel’s view, the Respondent should have been aware of the Complainant’s marks when registering the disputed domain names.
The Respondent has provided no evidence to justify his registration of the disputed domain names. Given the foregoing, it would be unreasonable to conclude that the Respondent – at the time of the registration of the disputed domain names – was unaware of the Complainant’s trade marks, or that the incorporation of dominant features of the Complainant’s LK BENNETT trade mark, was a mere coincidence.
The Panel is therefore of the view that the Respondent registered the disputed domain names with full knowledge of the Complainant’s trade mark rights, a finding which is reinforced considering the addition of the terms “bag”, “clothing”, “coats”, “discount”, “fashion”, “fullrange”, “jacket”, “series”, “shoes”, “shopping”, “skirts”, “specials”, and “store” that illustrates the intention of the Respondent to improperly target the Complainant.
Furthermore, the Respondent has used the disputed domain names to resolve to a website passing itself off as being the Complainant or related to the Complainant (and the Complainant alleges, and the Respondent does not contest, that the items sold are likely counterfeit), which is not the case, and such use thus supports a finding of bad faith under paragraphs 4(b)(iii) and (iv) of the Policy.
Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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 below be transferred to the Complainant:
Joseph Simone
Sole Panelist
Date: January 10, 2022