The Complainant is Old England of Paris, France, represented by Cabinet Germain & Maureau, France.
The Respondent is Wang Chuan Sheng of Taipei City, Taiwan, Province of China.
The disputed domain name <oldengland.com> (the “Disputed Domain Name”) is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2009. On January 29, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On January 29, 2009, eNom 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 24, 2009.
The Center appointed Charné Le Roux as the sole panelist in this matter on March 6, 2009. 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.
The Complainant is Old England, a French company registered in 1956. It asserts rights in the trade mark OLD ENGLAND through registration of the trade mark (with and without associated shield devices) in relation to a broad range of goods including clothing, footwear, cosmetics, etc. Evidence of registrations in Andorra, France, Japan, Republic of Korea and Singapore were provided. The first registration in France was filed on January 22, 1948. The registrations also show International registrations filed on August 14, 1950, February 24, 1986 and November 7, 1988 and a Community Trade Mark filed on August 11, 1998 for the OLD ENGLAND mark in the Complainant's name. The Complainant also provided evidence of catalogues in which OLD ENGLAND clothing and fashion items appeared, dating from Summer 1899 to Winter 1901-1902 and Winter 1929-1930.
The Respondent registered the Disputed Domain Name on April 20, 2002. The Disputed Domain Name is connected to a website which features sponsored links to the websites of third parties offering goods and services in competition with the Complainant, including T-shirts and cosmetics.
The Complainant contends that it is the owner of the trade mark OLD ENGLAND and that it owns many registrations for this trade mark, some of which were filed as long ago as January 22, 1948. It provided details of a selection of the registered trade marks as set out in paragraph 4 above.
The Complainant indicates that it conducts the website at “www.oldengland.fr” and that a reputation vests in the trade mark OLD ENGLAND through wide use that has made of the trade mark around the world. The evidence that it provides in support of this contention consists of catalogues in which OLD ENGLAND clothing and fashion items appeared, dating from Summer 1899, Winter 1901-1902 and Winter 1929-1930.
The Complainant contends that the Disputed Domain Name is identical, alternatively confusingly similar to its OLD ENGLAND trade mark.
The Complainant also contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that:
a) the Respondent has never been authorized by the Complainant to use the Complainant's trade mark in any way, including use in the Disputed Domain Name;
b) the Respondent has never commonly been known by the Disputed Domain Name and has never made a bona fide offering of goods and services under the Disputed Domain Name;
c) the adoption by the Respondent of a domain name which is identical to the trade mark of the Complainant and very similar to its French domain name <oldengland.fr> would inevitably and misleadingly divert consumers to its website with the effect of tarnishing the Complainant's trade mark; and
d) the Respondent is using the Disputed Domain Name on a commercial basis to benefit from the Complainant's trade mark.
The Complainant further contends that the Respondent has registered and is using the Disputed Domain Name in bad faith because the Respondent has adopted the Complainant's trade mark in the Disputed Domain Name in order to divert potential visitors searching for the Complainant to the website associated to the Disputed Domain Name.
The Complainant also contends that the Respondent is unduly profiting from the sponsored links that appear on the website at the Disputed Domain Name and makes particular reference to the portal sites which include key words such as “T-shirt” and “skincare”.
The Complainant finally contends that the Disputed Domain Name has no real purpose other than to prevent the Complainant from reflecting its trade mark in a corresponding domain name and that the Respondent has previously been engaged in the registration of a known trade mark of another party. It refers to the decision in Prada S.A. v. Mr. Chuan Sheng Wang, WIPO Case No. D2003-0758 (concerning the domain name <prada.org>), where the panel found that the domain name in that case was registered and was being used in bad faith. The Complainant points out that the details of the Respondent in this matter are identical to those in the <prada.org> case with particular reference to the name, e-mail and fax numbers of the Respondent.
The Complainant requests that the Disputed Domain Name be transferred to it.
The Respondent did not reply to the Complainant's contentions.
Default of the Respondent.
The Respondent has not reacted to the Complaint, but this does not relieve the Complainant of the burden of proof. The Respondent's failure to deny the Complainant's allegations and the evidence submitted by the Complainant does, however, in terms of the Rules, permit the Panel to draw appropriate inferences.
Paragraph 4 of the Policy requires that the Complainant proves each of the following three elements in order for the Disputed Domain Name to be transferred:
a. that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
b. that the Respondent has no rights or legitimate interests with respect to the Disputed Domain Name; and
c. that the Disputed Domain Name has been registered and is being used in bad faith.
(i) The Complainant has rights in a registered trade mark.
The Panel finds that the Complainant has proven that it owns rights in the registered OLD ENGLAND trade mark.
Furthermore, the Complainant's evidence in support of its use of the OLD ENGLAND trade mark and statement that it has been used widely around the world was not contested by the Respondent. The Panel finds that in addition to the registered rights, the Complainant has also established that a reputation attaches to the OLD ENGLAND mark.
(ii) The Disputed Domain Name is identical or confusingly similar to the Complainant's mark.
The Panel finds that the Disputed Domain Name is identical to the Complainant's trade mark OLD ENGLAND. The only difference between the Disputed Domain Name and the Complainant's trade mark is the generic indicator “.com”, which is to be ignored for purposes of the analysis.
The panel in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 summarised the burden of proof in respect of paragraph 4(a)(ii) of the Policy, namely that once the Complainant has asserted that the Respondent has no rights or legitimate interest, the burden of proof shifts to the Respondent. The Respondent must then make more than an assertion that it has rights or legitimate interests and must provide factual evidence in support of its claim. Paragraph 4(c) of the Policy provides circumstances whereby the Respondent may demonstrate its rights or legitimate interest in a domain name.
The Complainant in this matter has made the required prima face case to which the Respondent has not reacted. By failing to file a response, the Respondent has failed to demonstrate rights or legitimate interest in the Disputed Domain Name. See also Time Out Group Ltd. v. Marc Jacobson, WIPO Case No. D2001-0317.
Furthermore, on the record presented in this matter, the Respondent registered the Disputed Domain Name after registration had been made of the OLD ENGLAND trade mark by the Complainant. The Complainant has also provided copies of catalogues that demonstrate that the OLD ENGLAND trade mark has been in use since as long ago as 1899. In these circumstances, the Panel finds it difficult to believe that the Respondent was unaware of the Complainant's trade mark when he registered the Disputed Domain Name.
The Panel finds that Internet users would in all likelihood be attracted to the website linked to the Disputed Domain Name by the OLD ENGLAND trade mark and that they would be likely to access the website because of interest in the Complainant's goods.
The Panel also concurs with the Complainant's assertion that the Respondent's choice of the Disputed Domain Name demonstrates an intention to derive a benefit from the goodwill attached to the Complainant's trade mark, particularly since the Respondent also included sponsored links and key words on the website attached to the Disputed Domain Name to promote the sale of goods in competition with the Complainant.
The Panel finds that the Complainant has discharged its onus in proving that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. The Complainant relies on paragraph 4(b)(iv) and the Panel finds that on the record presented, a case has been made out that the Respondent is intentionally attempting to divert Internet users to his website by exploiting the confusing similarity between the Disputed Domain Name and the Complainant's OLD ENGLAND trade mark and that the Respondent is in all likelihood engaging in such conduct in order to reap commercial benefit.
While the Respondent has deprived the Complainant of the opportunity to reflect its trade mark in a domain name corresponding with the Disputed Domain Name, the Panel is not prepared to find that the Respondent has engaged in a pattern of the conduct required in paragraph 4(b)(ii). The interpretation of “pattern” demands more than the registration of two domain names in bad faith, with the ordinary dictionary definition of “pattern” being a frequent or widespread incidence. Refer also to Ruby's Diner, Inc. v. Joseph W. Popow, WIPO Case No. D2001-0868 (although not entirely conclusive on this point). It is, however, not necessary for the Complainant to prove this point since a finding of bad faith in terms of paragraph 4(b)(ii) has already been made.
For all the aforegoing reasons, in accordance with paragraph 4(ii) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <oldengland.com>, be transferred to the Complainant.
Charné Le Roux
Dated: March 20, 2009