The Complainants (collectively, the “Complainant”) are Arcadia Group Brands Limited trading as Topshop and Top Shop/Top Man Limited trading as Topshop of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Griffith Hack, Australia.
The Respondent is Topshop Holdings Pty Ltd of Carindale, Queensland, Australia, represented by King & Wood Mallesons, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Netregistry Pty Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2015. On July 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on July 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2015. The Response was filed on August 4, 2015.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on August 11, 2015. 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.
On August 24, 2015, the Complainant’s representatives sent an email to the Center, copied to the Respondent’s representatives, requesting suspension of the proceeding pending settlement negotiations between the parties. Accordingly, on August 25, 2015 the Panel issued a Panel Order suspending the proceeding until September 4, 2015.
On September 8, 2015, the Center sent an email to the parties advising the period of suspension had expired. On the same date, the Respondent’s representatives sent an email in reply to the Center advising that the parties had not reached agreement and that no further suspension was required.
On September 25, 2015, the Center notified the parties that the decision due date had been extended to September 28, 2015. 4. Factual Background A. Complainant
The Complainant is a company incorporated in the United Kingdom and is a leading international retailer of women’s clothing, shoes, accessories and related products under the trade mark TOPSHOP (the “Trade Mark”). The Complainant is the owner of registrations for the Trade Mark in numerous jurisdictions worldwide, including registration No. 1438141 registered in Australia since September 30, 2010 in Classes 3, 14, 18, 25 and 35. The Complainant is also the owner of registration No. 738191 for the trade mark TOP SHOP in Australia (with a space between “TOP” and “SHOP”), registered since July 2, 1997 in Class 25. B. Respondent
The Respondent is a company incorporated in Australia. C. The Disputed Domain Name
The disputed domain name was first registered on March 17, 2000 by an entity related to the Respondent and was transferred to the current Respondent on or about March 17, 2010. D. The Website at the Disputed Domain Name
The disputed domain name resolves to a website offering for sale a wide range of third party branded women’s clothing, shoes, accessories and related products; men’s clothing, shoes, accessories and related products; children’s clothing, shoes, accessories and related products; bed and bath products; luggage and travel products; offices supplies; and sports and outdoors products (the “Respondent’s Website”). 5. Parties’ Contentions A. Complainant
The Complainant contended as follows.
The disputed domain name is identical to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered or subsequently used in bad faith.
The Complainant’s predecessors began using the Trade Mark in London in 1964 and, by 1970, had opened the first standalone Topshop store in London. In 1994, the Complainant’s predecessors opened the flagship Topshop store in Oxford Circus, London, which has become one of the most iconic stores in London, inhabiting a 90,000 square ft. space.
The Complainant contends that the disputed domain name was registered on March 17, 2000, and was registered by the Respondent on or about March 13, 2010. (The Complainant has not adduced any evidence in relation to the former contention. In relation to the latter, the Complainant relies on a Domain Tools search report in respect of the disputed domain name with records dating from 2006.)
Today, there are over 450 Topshop stores across over 35 countries, including stores in Australia, in Sydney, Melbourne, Brisbane and Perth.
In 2006, the Complainant launched its website at “” (the “Complainant’s Website”). The Complainant sells substantial and increasing quantities of products via the Complainant’s Website to over 100 countries around the world. The Complainant first sold products under the Trade Mark to Australia via the Complainant’s Website in 2006 and continues to do so today.
Prior to opening a Topshop store in Australia, the Complainant was selling products under the Trade Mark through its key wholesale partner Incu Pty Ltd (“Incu”). Incu launched its first store in Paddington (Australia) in October 2009. Incu then launched a further store in Melbourne in July 2010. In 2009 and 2010, the approximate value of goods branded under the Trade Mark sold by the Complainant to Incu was around GBP 150,000 (AUD 311,000).
The Complainant opened Topshop stores in Australia in Melbourne in 2011, in Sydney in 2012, in Brisbane in 2013 and in Perth in 2014.
The Trade Mark was famous in Australia since at least the 1990s and well in advance of the launch of the Complainant’s Website in 2006 and the opening of the Complainant’s Topshop stores in Australia in 2011. When the Complainant’s first store opened in Melbourne in 2011, shoppers queued all night for the store opening.
This fame is due to the following non-exhaustive list of factors:
(a) The fame of the Trade Mark in the United Kingdom and internationally and the spillover reputation to Australia, including the amount of publications featuring the Trade Mark that have been distributed in Australia, and the amount of films and television programmes featuring the Trade Mark that have been televised/available in Australia;
(b) The Complainant’s partnerships with high-profile celebrities from the fashion industry, such as supermodel, Kate Moss, the Hollywood actress, Kate Bosworth and fashion designers, Mary Katrantzou, JW Anderson and Christoper Kane;
(c) The amount of Australians who have shopped at TOPSHOP stores in London and elsewhere whilst holidaying overseas, including the flagship store in Oxford Circus, London which attracts huge numbers of visitors from all around the world, including Australia, each day; and
(d) Sales through the Complainant’s Website and the Complainant’s wholesale partner in Australia, Incu.
The Complainant first became aware of the disputed domain name in late 2014. In November, 2014, in response to an enquiry about the disputed domain name, the Respondent’s director, Andrew Cooper, made the following statement about the disputed domain name:
“T is a significant asset for us and is not actively for sale. However, if you believe you can make an offer that represents the value of the internationally recognised domain name then please feel free to do so and I will respond accordingly.”
The Respondent lacks bona fide rights or legitimate interests in the disputed domain name, and the disputed domain name has been registered and used in bad faith, for the following reasons:
(a) At the time of registration of the disputed domain name, the Respondent knew, or ought reasonably to have known, due to the overwhelming fame of the Trade Mark internationally, and in Australia, since at least the 1990s, and the registration of the Trade Mark in class 25 in Australia since 1997, of the risk of consumers looking for Topshop products in Australia being mistakenly diverted to the Respondent’s Website;
(b) The Respondent’s Website is currently infringing the Trade Mark, and the defence of prior use is not available to the Respondent as it has not continuously sold clothing, in particular women’s clothing, since a date prior to the date of registration of the Complainant’s Trade Mark in Australia in Class 35;
(c) The Respondent’s Website also copies the look and feel of the Complainant’s Websites and uses almost identical font, colours and layout, which amounts to misleading and deceptive conduct under section 18 of the Australian Consumer Law (Schedule 2 of the Competition and Consumer Act 2010 (Cth)) and passing off;
(d) Although the Respondent’s Website contains a disclaimer, the disclaimer does not cure bad faith, but rather suggests that the Respondent is well aware of the risk of consumer confusion as a result of its use of the disputed domain name and the Respondent’s Website;
(e) The Respondent is holding the disputed domain name and is inviting offers that “represent the value of the internationally recognised domain name”. The disputed domain name is not an internationally recognised domain name. The Trade Mark is an internationally recognised mark belonging to the Complainant, and is an internationally recognised domain name. The Respondent is therefore inviting offers which represent the value in the TOPSHOP name and mark in Australia and around the world. B. Respondent
The Respondent contended as follows.
From 1996 until 2003, the director of the Respondent, Mr Andrew Cooper, owned and operated a video store through his company, McDonald Cooper Properties Pty Ltd, under the trading name Top Video Birkdale.
The disputed domain name was first registered some time in 1999 by Mr Andrew Cooper and his brother Tim Cooper and was used to set up an online store for the purpose of selling VHS tapes and DVDs stocked by the Top Video Birkdale store (the “Respondent’s Website”). Mr Cooper has submitted a statutory declaration declaring (1) that he chose the disputed domain name because he wanted a name which showed an association with the physical video store business, Top Video; (2) at the time of registering the disputed domain name, he had no knowledge of the Complainant or its Trade Mark; and (3), as far as he is aware, the Complainant was not carrying on business in Australia at the time he established the Respondent’s Website.
The Respondent is unable to produce direct evidence to confirm the date of registration of the disputed domain name, but relies on evidence of sales from the Respondent’s Website dating from October 1999.
Prior to its ownership by the Respondent in 2010, the disputed domain name was owned by several entities associated with Mr. Cooper.
The Respondent’s Website was regarded in the early 2000s as one of Australia’s leading “e-tailers”, and was one of the first websites to sell DVDs online in Australia.
On December 21, 1999, Mr. Cooper established T Ltd, a company of which he was the director, to own and operate the Respondent’s Website. The Respondent has submitted a screenshot of the Respondent’s Website from November 17, 2000 obtained from Internet Archive WayBack Machine which shows that the mission statement of T Ltd was “to be recognised as Australasia’s leading e-commerce company”. In early 2001, T Ltd changed its name to Hotshed Ltd.
On March 31, 2000, Mr Cooper established the Respondent as an intellectual property holding company, and T Ltd remained the trading entity.
On April 30, 2000, the Respondent, the Coopers, T Ltd and two other investors entered into a “Topshop Original Venturers Agreement”.
By 2004, the Respondent’s Website had ceased selling VHS tapes, and in addition to DVDs and games, was selling music and jewellery. The Respondent claims that, as one would expect, the range of products sold via the Respondent’s Website has changed over the years to match consumer tastes.
On November 26, 2006, Hotshed Ltd was deregistered and its assets, including the disputed domain name, were transferred to Hotshed Retail Pty Ltd. In 2010, the disputed domain name was transferred to the Respondent.
Mr Cooper is (or was) a director and major shareholder (directly or indirectly) of all of the above entities, which were treated as a single entity by their directors and shareholders. The Respondent’s rely upon an agenda for a general meeting dated June 27, 2003 which shows that general meetings for the companies were held together.
Due to common ownership and control of these entities, the actions of each of these predecessors to the Respondent, as well as the actions of Mr Cooper, should be considered the actions of the Respondent for the purposes of this proceeding. The Respondent also asserts that the date of registration of the disputed domain name should be 1999 and not 2010, when the registration of the disputed domain name was assigned to the Respondent.
The Respondent acknowledges the rights held by the Complainant in the Trade Mark in Australia, but contends that its 2010 registration for the Trade Mark is vulnerable to partial cancellation in Class 35 due to the Respondent’s prior use of its trade mark in relation to general retail services.
The Respondent also contends the Complainant’s registration for the TOP SHOP mark (with a space between “TOP” and “SHOP”) is vulnerable to cancellation for non-use, as the Complainant has never operated in Australia under this trade mark.
The Respondent relies on both paragraph 4(c)(i) and paragraph 4(c)(ii) to claim rights or legitimate interests in the disputed domain name.
The Respondent claims that it had no knowledge of the Complainant or of the Trade Mark at the time of registration of the disputed domain name.
The Respondent contends that it has no intention of selling the disputed domain name to the Complainant or anybody else, and that the invitation referred to in the Complaint was made in response to an unsolicited offer from an agent who did not identify himself as representing the Complainant or anybody else.
The Respondent asserts that it has been using the disputed domain name in connection with a legitimate online business since 1999 and denies that its conduct amounts to infringement of the Trade Mark.
The Respondent requests the Panel to make a finding of reverse domain name hijacking against the Complainant. 6. Discussion and Findings
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 only relevant consideration for the purposes of the first limb of the Policy is whether the disputed domain name is confusingly similar or identical to a trade mark in respect of which the Complainant has rights. The date of registration or first use of the Trade Mark is immaterial (although of course it is highly pertinent to determination of the third limb of the Policy).
The Respondent’s contentions regarding the potential for partial revocation or cancellation for non-use of certain of the Complainant’s registrations for the Trade Mark in Australia are not relevant for the purposes of this first element .
The disputed domain name is identical to the Trade Mark. It follows that the Complainant has satisfied the first limb under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Respondent has submitted clear evidence of an unbroken chain of underlying ownership of the disputed domain name from 1999 to date. Mr. Andrew Cooper is or was a director and shareholder of the Respondent and of each of the predecessor owners of the disputed domain name, and it is pertinent to note that he is listed as the “Registrant Contact Name” in all of the historical WhoIs searches for the disputed domain name submitted by both parties. There is no suggestion that the changes in ownership have been made to conceal an underlying owner’s identity or for the purpose of frustrating assessment of liability in relation to registration of use of the disputed domain name.
In the circumstances, the Panel determines that the date of registration of the disputed domain name for the purposes of this proceeding is March 17, 2000. Although the Respondent has submitted transaction reports showing sales via the website “TopShop” from 1 October 1999, there is no evidence to demonstrate conclusively that these sales were made from the Respondent’s Website at “www.”.
Although the Complainant commenced use of the Trade Mark in the United Kingdom several years before the date of registration of the disputed domain name, the Complainant’s first sales of products under the Trade Mark in Australia did not take place until 2006, via the Complainant’s Website. The Panel agrees with the Respondent’s submissions that, by itself, the limited number of sales in Australia at that time do not support the conclusion that the Trade Mark had achieved significant fame or recognition in the Australian market in 2006.
The Panel accepts, however, that the repute of the Trade Mark in Australia has increased substantially in Australia in recent years, in particular following the opening of the Complainant’s first stores in Australia in 2011.
The Respondent has submitted evidence of its use of the Respondent’s Website and of the names “TopShop”, “TopShop Australia” and “T” from 1999 to the present date, including screen shots, packing slips and customer email correspondence. The Respondent has also submitted evidence of third party press and industry recognition of its use of these names from 2000.
The Panel concludes that the evidence demonstrates that the Respondent and its predecessors have been continuously operating a legitimate business under the disputed domain name since at least 2000 to possibly as late as March 2014.
The Complainant contends that the Respondent is not making bona fide use of the disputed domain name, because the use constitutes registered trade mark infringement, misleading and deceptive conduct and passing off.
Paragraph 15(a) of the Rules provides as follows:
“(a) A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
The Respondent has submitted screenshots of the Respondent’s Website using the Internet Archive WayBack Machine. This evidence demonstrates that:
1. On June 6, 2000, the Respondent’s Website was used in respect of the retailing of games, DVDs and videos;
2. On March 20, 2004, the Respondent’s Website was used in respect of the retailing of jewellery, DVDs, music and games;
3. On July 4, 2007, the Respondent’s Website was used in respect of the retailing of jewellery, DVDs, music and games;
4. On March 28, 2010, the Respondent’s Website was used in respect of the retailing of DVDs, Blu-Ray, music and games;
5. On June 4, 2012, the Respondent’s Website was used in respect of the retailing of DVDs, Blu-Ray and games;
6. On March 4, 2014, the Respondent’s Website was used in respect of the retailing of women’s clothing and footwear, men’s clothing and footwear, kids’ clothing and footwear, movies and games, toys, gifts, home and living, technology and clearance.
The Complainant’s registration for the Trade Mark has a priority (registration) date of September 30, 2010, and covers the following services in Class 35:
“Retail services in the fields of cosmetics, food and drink, chocolates, sweets, candies, soft drinks, non-alcoholic beverages, alcoholic beverages, clothing, footwear, hosiery, hair accessories, fashion accessories, bags, millinery, jewellery, imitation jewellery, writing instruments, stationery, books, watches and eyewear, the bringing together in a retail outlet, for the benefit of others, of cosmetics, food and drink, chocolates, sweets, candies, soft drinks, non-alcoholic beverages, alcoholic beverages, clothing, footwear, hosiery, hair accessories, fashion accessories, bags, millinery, jewellery, imitation jewellery, writing instruments, stationery, books, watches and eyewear, thereby to enable customers conveniently to view and to purchase those goods, the bringing together, for the benefit of others, of a variety of descriptions of, or of images of, cosmetics, food and drink, chocolates, sweets, candies, soft drinks, non-alcoholic beverages, alcoholic beverages, clothing, footwear, hosiery, hair accessories, fashion accessories, bags, millinery, jewellery, imitation jewellery, writing instruments, stationery, books, watches and eyewear in a catalogue, thereby to enable customers conveniently to view and to purchase those goods by mail order; the bringing together, for the benefit of others, of a variety of descriptions of, or of images of, cosmetics, food and drink, chocolates, sweets, candies, soft drinks, non-alcoholic beverages, alcoholic beverages, clothing, footwear, hosiery, hair accessories, fashion accessories, bags, millinery, jewellery, imitation jewellery, writing instruments, stationery, books, watches and eyewear on an Internet website, thereby to enable customers conveniently to view and to purchase those goods by means of telecommunications, provision of information, advice and assistance to customers relating to the aforementioned services, window dressing; arranging window displays; business administration.”
On the basis of the evidence of use submitted by the Respondent, notwithstanding the Respondent’s long-standing legitimate use of the disputed domain name and of the Respondent’s Website, at some stage after June 4, 2012, the Respondent commenced retailing of clothing and footwear on the Respondent’s Website.
In all the circumstances, and in light of the available evidence, it appears the Respondent is unlikely to be able to avail itself of the defence of prior continuous use in respect of its retailing of clothing and footwear via the Respondent’s Website, the first available evidence of such use (dated March 4, 2014) being more than three and a half years after the date of registration of the Complainant’s Trade Mark in respect of such services.
It appears to the Panel that at some stage between June 4, 2012 and March 4, 2014 the Respondent has intentionally commenced retailing clothing and footwear via the Respondent’s Website, and that such timing coincides with the marked increase in the branding recognition of the Complainant and of its Trade Mark in Australia and worldwide. In all the circumstances, the Panel determines that the Respondent must have had the Complainant and its Trade Mark in mind when it commenced the retailing of clothing and footwear via the Respondent’s Website.
Given the Complainant’s prior rights in the Trade Mark in respect of such services in Class 35, the Panel agrees with the Complainant’s contentions that such use may well amount to trade mark infringement under Australian trade marks law.
In light of the current repute of the Trade Mark, and in light of the comparatively recent use of the disputed domain name in respect of such services via the Respondent’s Website, the Panel also agrees that such use may amount to common law passing off, as well as misleading and deceptive conduct under the Competition and Consumer Act 2010 (Cth).
In light of the above, notwithstanding the Respondent’s prior legitimate use of the disputed domain name and of the Respondent’s Website, and notwithstanding the Respondent’s continued legitimate use of the disputed domain name in respect of the retailing of goods such as movies and games, the Panel concludes that, by virtue of the present infringing use of the disputed domain name in relation to clothing and footwear, the Respondent is unable to establish bona fide rights or legitimate interests in the disputed domain name for the purposes of the Policy.
Accordingly, the Panel determines that the Complainant has satisfied the second limb under paragraph 4(a) of the Policy. C. Registered or Subsequently Used in Bad Faith
In light of the above findings under the second limb, the Panel finds the Respondent’s submissions regarding the change in the products offered via the Respondent’s Website somewhat disingenuous. There can be no doubt that, in recent years, the Respondent became well aware of the Complainant and of the increasing value of the Trade Mark in Australia and globally, and, at some stage between June 4, 2012 and March 4, 2014, the Respondent’s Website was changed to offer women’s clothing and footwear in direct competition with the goods offered by the Complainant under the Trade Mark in Australia.
The Panel notes, however, that in addition to third party branded clothing, shoes and accessories, the Respondent’s Website offers a wide range of other third party branded products, including bed and bath products; luggage and travel products; offices supplies; movies and games; and sports and outdoors products.
It is also pertinent to note that the current business model of the Respondent’s Website is broader than the business model of the Complainant, in that the Respondent’s Website offers for sale a range of third party branded products (although unclear from the record, presumably under licence from the trade mark owners), whereas the Complainant’s offline and online stores offer for sale the Complainant’s branded product under the Trade Mark.
In all the circumstances, the Panel finds the evidence does not demonstrate that the Respondent was aware of the Complainant and of its Trade Mark at the time of registration of the disputed domain name.
The Panel has examined closely the evidence submitted regarding the look and feel of both Parties’ websites. The Panel would agree with the Respondent that the look and feel of the Complainant’s Website is not particularly distinctive, and that the font used by the Complainant for the Trade Mark on the Complainant’s Website appears to be commonly-used and not distinctive. Whilst it is not for the Panel, for the purposes of this proceeding or otherwise, to make any determinations with respect to the Complainant’s allegations in this regard of misleading and deceptive conduct and of passing off, the Panel would simply observe and conclude that, for the purposes of this proceeding, the Panel considers the Complainant’s allegations that the Respondent’s Website has copied the look and feel of the Complainant’s Website have not been made out. The Panel would agree that the colours, fonts and layout of both of the parties’ websites are fairly non-distinctive, and that the signs used on the Respondent’s Website are different to the signs used on the Complainant’s Website.
The Panel considers that, had the Respondent not commenced relatively recently the online retailing of clothing and footwear via the Respondent’s Website, and as submitted by the Respondent’s representatives, the Respondent’s use of the following disclaimer on the Respondent’s Website would likely have served to dispel consumer confusion and would have demonstrated creditable, responsible and prudent behaviour:
“Please note, we are an independent online retailer and not affiliated in any way with the British TOPSHOP department store brand which is operated in Australia under franchise by Next Athleisure.”
In light of the current use of the Respondent’s Website, however, and given the specific wording of paragraph 4(b)(iv) of the Policy (which mirrors the wording of the same paragraph in the UDRP), the Panel considers the disclaimer is unlikely to cure user confusion, particularly when those who reach the Respondent’s Website will likely be exposed to clothing and footwear products before reading the disclaimer (if they do).
In sum, the Panel concludes that:
1. The disputed domain name was not registered in bad faith;
2. However, the disputed domain name has subsequently been used in bad faith.
Accordingly, the Panel determines that the Complainant has satisfied the third limb under paragraph 4(a) of the Policy.
The Panel however finds that the evidence does not establish the Respondent has engaged in bad faith under paragraph 4(b)(i) of the Policy. Mr. Cooper has declared in his statutory declaration that he has never offered to sell the disputed domain name to any person. This is borne out by the chain of email correspondence between Mr. Cooper and the Complainant’s unidentified agent, submitted by the Respondent:
“Andrew Cooper Mon, Nov 3, 2014 at 9:34 PM
To: Dave Rogers
“Hi Dave,
T is a significant asset for us and is not actively for sale. However, if you believe you can make an offer that represents the value of the internationally recognised domain name then please feel free to do so and I will respond accordingly.
Cheers
Andrew”
On Monday, November 3, 2014 at 8:21 PM, Dave Rogers wrote:
“Hi Andrew
I am interested in buying the domain name
Are you interested in selling? lf yes, how much do you want?
Cheers
Dave”
The Panel does not find the evidence of this unsolicited and covert approach convincing. The Panel would also note that the approach was made at least six months after the Respondent had commenced retailing clothing and footwear via the Respondent’s Website.
In all the circumstances, and given Mr Cooper’s declaration on oath, the Panel is unable to conclude that, absent further evidence of a genuine offer to sell the disputed domain name, and given in particular the Respondent’s long-standing prior legitimate use of the disputed domain name, the evidence supports a finding that the disputed domain name has been registered or acquired primarily for the purpose of selling it to another person for an amount in excess of the Respondent’s out-of-pocket expenses relating to the domain name. 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 be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: September 28, 2015
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