The Complainant is DKH Retail Limited, United Kingdom, represented internally.
The Respondent is Domain Admin, Whoisprotection.cc / Client Care, Web Commerce Communications Limited, Malaysia.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2021. On December 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names.
On December 10, 2021 and January 20, 2022, 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 and contact information in the Complaint.
The Center sent an email communication to the Complainant on December 10, 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 amended Complaint on December 15, 2021.
The Center verified that the Complaint together with the amended 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 January 25, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2022.
The Center appointed Nicholas Weston as the sole panelist in this matter on February 24, 2022. 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 BackgroundThe Complainant is a wholly owned subsidiary of London Stock Exchange listed Superdry PLC which operates a fashion retail business with more than 768 branded locations in 65 countries, and revenue in FY 2018 exceeding GBP1.6 billion. The Complainant holds a portfolio of registrations for the trademark SUPERDRY, and variations of it, in numerous geographies including Malaysia where the Respondent is located. Malaysian Trademark Registration No. 2012054633, for example, was registered on June 25, 2012.
The Complainant owns a number of domain names that incorporate its trademark including
The Disputed Domain Names were registered on the following dates:
-
-
-
-
-
-
-
-
-
-
-
At the time of writing this decision the Disputed Domain Names resolve as follows:
The Complainant requests to consolidate the respondents in this proceeding as the Disputed Domain Names and the websites they resolve to are more likely than not under common control and that it would be fair and equitable to the parties to do so.
The Complainant says the Disputed Domain Names may, for convenience, be divided into two groups. The first group relates to eight domain names that actively resolve to websites resembling the Complainant’s own retail online clothing stores, the second group comprises three domain names that are not in active use.
The Complainant cites its United Kingdom trademark registration No. UK00903528403 registered on June 22, 2005 and numerous other registrations around the world, for the mark SUPERDRY as prima facie evidence of ownership.
The Complainant submits that the mark SUPERDRY is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Names
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because eight of the Disputed Domain Names
Finally, the Complainant alleges that the registration and use of the Disputed Domain Names were, and currently are, in bad faith, contrary to the Policy and Rules. In reference to eight of the Disputed Domain Names, the Complainant submits that “The domains have been set up to mimic a genuine Superdry website which uses the registered trademarks and logos in exactly the same form as content on www.superdry.com”. In reference to the Disputed Domain Names
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1.1 Preliminary Matters – no ResponseThe Panel considers that the Center has satisfactorily discharged the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice” of this proceeding. Accordingly, while the Respondent’s default or failure to respond to the Complainant’s contentions will not automatically result in the complaint succeeding, the Panel is prepared to draw certain inferences where an explanation by the Respondent would have been appropriate, or where no other plausible conclusion is apparent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3)).
6.1.2 Preliminary Matters – Consolidation and common controlThe Complainant requests to consolidate multiple Respondents in this proceeding as the Disputed Domain Names and the websites they resolve to are more likely than not under common control. The Complainant contends that there are a number of factors to suggest that the Disputed Domain Names are under common control, including the following:
“a. The eleven domain registrants are based in the same city and country – Kuala Lumpur, Malaysia (“MY”) according to the information provided by WIPO;
b. The eleven domain holders have the same registrar details;
c. All of the domain names have ‘Superdry’ in them.”
The Panel finds (i) the Disputed Domain Names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties; (iii) it is procedurally efficient to proceed in a single Complaint (see: WIPO Overview 3.0, section 4.11.2).
6.2 Substantive MattersUnder paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that each Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) that the Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark SUPERDRY in numerous countries including Malaysia, the United Kingdom, and the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Overview 3.0, section 1.2.1).
Turning to whether the Disputed Domain Names are identical or confusingly similar to the SUPERDRY trademark, the Panel observes that the Disputed Domain Names each comprises: (a) an exact reproduction of the Complainant’s trademark SUPERDRY (b) followed by (respectively) the geographical name Budapest; the Turkish word “fiyat”, meaning in English “price”; the Italian words “in offerta” meaning in English “on offer”; the words “nzstore” presumably referencing a store located in New Zealand; the phrase “outletmx” presumably referencing an outlet located in Mexico; the generic and geographical words “outlet Romania”; the letters “sa”, presumably a reference to South Africa; the phrase “sgstore”, presumably a reference to a store located in Singapore; the generic words “shop sale”; the generic words “store outlet”, and the phrase “storesg”, presumably another reference to a store located in Singapore; (c) followed by the gTLD “.com”.
It is well established that the gTLD used as technical part of a domain name may be disregarded unless the gTLD takes on special significance where it has relevance to the analysis (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286; Alstom v. WhoisGuard Protected, WhoisGuard, Inc. / Richard Lopez, Marines Supply Inc,WIPO Case No. D2021-0859). The gTLDs chosen appear to have no special significance in this proceeding. The relevant comparison to be made is with the second-level portion of each Disputed Domain Name, specifically: “Budapest”, “fiyat”, “inofferta”, “nzstore”, “outletmx”, “outletromania”, “sa”, “sgstore”, “shopsale”, “storeoutlet”, “storesg”.
As the relevant mark is incorporated in its entirety and as such is recognizable in each of the Disputed Domain Names, in line with previous UDRP decisions, this Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s SUPERDRY trademark for purposes of UDRP standing.
Accordingly, the Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Names. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Names. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see WIPO Overview 3.0, section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because (i) eight of the Disputed Domain Names resolve to unauthorized websites that strongly resemble the Complainant’s own websites and use similar content; (ii) three of the Disputed Domain Names are inactive and; (iii) Respondent has not acquired or owned any trademark or service mark rights in the name “superdry”, and has not been commonly known by the name “superdry”; and (iv) Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s Marks.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating the Complainant’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. Nor, alternatively, is the Respondent commonly known by any of the Disputed Domain Names.
Further, where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see: WIPO Overview 3.0, section 2.5.1).
The Panel is satisfied that the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests. This Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because it is engaging in an illegitimate commercial use of the Disputed Domain Names by pretending to be associated with the Complainant for the purpose of misleading consumers based on users seeking out the Complainant’s mark SUPERDRY. It could therefore be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to attract Internet users to its websites or with the intention to divert Internet traffic to its web pages. In the absence of a response, this Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad FaithThe third element of the Policy requires that the complainant must also demonstrate is that the disputed domain names have been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Names in bad faith.
On the issue of registration, this Panel infers from the content of eight of the eleven websites that the Respondent was well aware that its registration of the Disputed Domain Names would be identical or confusingly similar to the Complainant’s trademark (see DKH Retail Limited v. Domain Administrator, PrivacyGuardian.org / Eric Eichmann,WIPO Case No. D2018-2299 (“the circumstance that the disputed domain name has been pointed to a website featuring the Complainant’s SUPERDRY trademarks, images and other content taken from the Complainant’s website demonstrates that the Respondent was indeed well aware of the Complainant, its trademark and activity”); DKH Retail Limited v. Brian Young,WIPO Case No. D2019-2210 (“The Respondent’s website that reproduces the Complainant’s SUPERDRY Mark, as well as several products from the Complainant further shows that it is attempting to mislead Internet users into believing that the disputed domain name is associated with the Complainant, when it is not”).
In addition, a gap of several years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Names (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Complainant’s rights in its trademark predate any rights that could possibly flow from the Respondent’s registration by at least 15 years.
On the issue of use, the Complainant’s evidence is that eight of the eleven Disputed Domain Names resolve to unauthorized webpages that are unconnected with any bona fide supply of goods or services by the Respondent. The use of a domain name for per se illegitimate activity such as the sale of counterfeit or unauthorized goods can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith. (see WIPO Overview 3.0, sections 2.13.1 and 3.1.4). This Panel finds that the use of the Disputed Domain Names
Further, the Complainant’s evidence is that the other three Disputed Domain Names do not currently resolve to an active website. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the ‘passive holding’ doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” (See WIPO Overview 3.0, section 3.3). This Panel notes that the evidence is that all four of these four factors are present in this proceeding in respect to the domain names
In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark SUPERDRY and incorporated it into the Disputed Domain Names without the Complainant’s consent or authorization, for the purpose of illegitimately capitalizing on the reputation of the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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,
Nicholas Weston
Sole Panelist
Date: March 10, 2022