The Complainant is C & J Clark International Limited of Somerset, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Squire Patton Boggs LLP, UK.
The Respondent is Karen Brand of Brighton, Michigan, United States of America ("US"). 2. The Domain Name and Registrar
The Disputed Domain Name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 21, 2015. On October 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 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 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 November 10, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 2, 2015.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on December 9, 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. 4. Factual Background
The Complainant is a long established UK manufacturer of shoes and other leather goods and is internationally known. It holds trade mark registrations for the word CLARKS in respect of a wide range of goods including footwear in a number of countries including the US, Colombia and China. The earliest of these registrations, US Registration No. 540599, dates from 1949. The Complainant also owns and uses a number of domain names consisting of the trade mark CLARKS including , and .
The Disputed Domain Name was registered on June 13, 2013. The address of the Registrant shown in the WhoIs for the Disputed Domain Name indicated "BRIGHTON MI 48116 CHINA".
The Disputed Domain Name resolves to an ecommerce website prominently displaying the Complainant's CLARKS trade mark and offers for sale ranges of the Complainant's footwear at apparently discounted prices. The "checkout" tab requires entry of the customer's name, address and credit card details. 5. Parties' Contentions A. Complainant
The Complainant's contentions may be summarized as follows:
• The Disputed Domain Name is confusingly similar to the Complainant's CLARKS trade mark. The addition of the word "shop" accentuates the likelihood of association with the Complainant who operates in the retail sector. The Respondent has no right or legitimate interest in the Disputed Domain Name, it is not affiliated with the Complainant and is not licensed or authorized to use the Complainant's trade mark. It is not commonly known by the Disputed Domain Name and has no trade mark rights in relation to it;
• The Respondent's use of the Disputed Domain Name is an unfair use resulting in misleading diversion;
• The Disputed Domain Name was intentionally registered to profit unfairly from the goodwill of the Complainant's trade mark and the use of the Disputed Domain Name seeks deliberately to cause confusion with the Complainant's marks.
• The Disputed Domain Name is likely to be confused with the Complainant's domain names in the ".com", generic Top-Level Domain ("gTLD") and ".co" and "." country code Top-Level Domains ("ccTLDs"). B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has clearly established registration rights in the trade mark CLARKS and has established a valuable reputation in that trade mark in many countries throughout the world. The dominant element of the Disputed Domain Name comprises that trade mark with the addition of the word "shop". That addition does not in any way serve to distinguish the Disputed Domain Name from the Complainant's trade mark. Indeed, since the Complainant is a major operator in the retail sector, the addition of that word serves merely to reinforce a likelihood of confusion due to the fact that the Disputed Domain Name would be associated with the Complainant (see, for example, Ansell Healthcare Products Inc. v. Australian Therapeutic Suppliers Pty, Ltd.,WIPO Case No. D2001-0110).
The Panel therefore finds that the Disputed Domain Name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
There is no apparent basis upon which the Respondent could claim to have any rights or legitimate interests in the Disputed Domain Name. There is no evidence that it has any rights or legitimate interests based on any of the circumstances set out in paragraph 4(c) of the Policy. There is no indication that the Respondent has been commonly known by the Disputed Domain Name and for the reasons more fully set out in paragraph 6C below, there is no apparent basis upon which the Respondent could claim that its use of the Disputed Domain Name is in connection with a bona fide offering for sale of goods or provision of services or that it is a legitimate fair use of the Disputed Domain Name. The Panel accepts the Complainant's contentions in this regard.
The Complainant has made out a prima face that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In the light of that, the onus shifted to the Respondent to rebut and it has failed to do so.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
At the time the Disputed Domain Name was registered in 2013, the Complainant had been operating under its name and trade mark CLARKS for at least several decades. The many countries in which it traded included the US, Colombia and China. The website to which the Disputed Domain Name directs clearly associates the Disputed Domain Name with the Complainant and gives every indication that the Disputed Domain Name was chosen to reflect an association with the Complainant. Further, the Panel notes that the address for the Registrant given in the WhoIs database for the Disputed Domain Name shows an apparently fictitious address. The city and state address is Brighton, Michigan, but the country is stated to be China. The Panel further notes that the copy of the Complaint forwarded by the Center to the Respondent could not be delivered notwithstanding that the Centre employed all reasonable means to effect delivery in accordance with paragraph 2 of the Rules.
As noted, the website to which the Disputed Domain Name directs prominently features the name and trade mark of the Complainant, lists for sale apparently the products of the Complainant and includes a copyright notice in the name of the Complainant. The site gives every indication that it is the Complainant's site but according to the Complainant, it is not. The site is an ecommerce site inviting the user to provide name, address and credit card details. It is not for the Panel to speculate as to why this site has been established by the Respondent. Even adopting the most favourable view for the Respondent, if it is a site offering the Complainant's genuine goods, then it fails to satisfy the criteria established in Oki Data Americas, Inc. v ASD, Inc.,WIPO Case No. D2001-0903. It does not explain the relationship between the operator of the website and the Complainant and indeed it appears deliberately to conceal that relationship or lack of it. In that case, the panel said:
"The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc.,WIPO Case No. D2001-0211 (WIPO April 25, 2001) (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. LutonWIPO Case No. D2000-1201 (WIPO November 14, 2000) (no bona fide offering because domain name improperly suggest that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods.,WIPO Case No. D2001-0344 (WIPO June 14, 2001) (no bona fide use when respondent suggested that it was the manufacturer of complainant's products)."
The Respondent's website at the Disputed Domain Name clearly fails to satisfy this criterion.
The Respondent has had the opportunity to respond to the contentions made by the Complainant and to explain its actions in adopting and using the Disputed Domain Name. It has failed to do so.
The Panel therefore finds 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 be transferred to the Complainant.
Desmond J. Ryan Am
Sole Panelist
Date: December 23, 2015
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