WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
J. Choo Limited v. xi mi ke / junjie che
Case No. D2010-1357
1. The Parties
The Complainant is J. Choo Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by A.A.Thornton & Co, United Kingdom of Great Britain and Northern Ireland.
The Respondent is xi mi ke / junjie che of Fujian, People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <jimmychoousa.com> (“Disputed Domain Name”) is registered with Xin Net Technology Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2010. On August 11, 2010, the Center transmitted by email to Xin Net Technology Corp .a request for registrar verification in connection with the Disputed Domain Name. On August 12, 2010, Xin Net Technology Corp. transmitted by email to the Center its verification response registrant information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 13, 2010 providing the registrant information and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 18, 2010. On August 13, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On August 16, 2010, the Complainant confirmed its request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2010.
The Center appointed Kar Liang Soh as the sole panelist in this matter on September 21, 2010. 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 in the industry of high fashion footwear, handbags and small leather goods. It has been trading under trademarks incorporating the words JIMMY CHOO (“JIMMY CHOO Brand”) since 2001. The Complainant currently has boutiques across 32 countries including the United Kingdom, United States of America and China. It and has spent significant efforts and expenses advertising the JIMMY CHOO Brand. The JIMMY CHOO Brand is regularly featured in magazines and newspaper articles.
The JIMMY CHOO Brand is registered as a trademark in various jurisdictions. Some of these are:
Jurisdiction Trademark No. Registration date
Community Trade Mark 1662543 September 16, 2002
China 3189590 July 21, 2003
The Complainant also owns various domain names incorporating the JIMMY CHOO Brand, including <jimmychoo.com>, <jimmychooshoes.com>, <jimmychoocouture.com>, <jimmychoo.biz>, <jimmychoo.info>, <jimmychooonline.co.uk>.
The Respondent registered the Disputed Domain Name on February 18, 2010, several years after the Complainant’s trademark registrations above. Very little information is available about the Respondent beyond the WhoIs information on the Disputed Domain Name and the website resolved from the Disputed Domain Name. The failure of the Respondent to file a Response does not assist the situation.
The Disputed Domain Name resolves to a website at “www.jimmychoousa.com”. The website refers to “Jimmy Choo” as a famous brand. It includes several paragraphs about the rise of “jimmy choo” from humble beginnings as a scion of a shoemaker family in Malaysia to the immortalization of his high-fashion handmade shoes associated with hit Hollywood movies. The words JIMMY CHOO are used generously as an identifier for shoes, handbags and products. In addition, the website purportedly offers shopping cart facilities for purchase of these products online.
The Complainant wrote to the Respondent on June 29, 2010 threatening to file a complaint under the Policy and offering to compensate the Respondent for out-of-pocket expenses for registering the Disputed Domain Name subject to a transfer of the Disputed Domain Name to the Complainant. It is not known whether the Complainant received any response.
5. Parties’ Contentions
The Complainant contents that:
(1) The Disputed Domain Name is identical or confusingly similar to the JIMMY CHOO Brand in which the Complainant has rights. The generic suffix “usa” in the Disputed Domain Name does not prevent the Disputed Domain Name from being confusingly similar to the JIMMY CHOO Brand;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. There is no evidence of legitimate non-commercial or fair use of the Disputed Domain Name. The Respondent has no relationship with or permission from the Complainant to use the JIMMY CHOO Brand. The Respondent is not an authorized retailer of products under the JIMMY CHOO Brand; and
(3) The Disputed Domain Name was registered and is being used in bad faith. The Respondent registered the Disputed Domain Name to disrupt the Complainant’s business by diverting away Internet users who are searching for the Complainant’s products. The Respondent is clearly aware of the Complainant when the website resolved from the Disputed Domain Name was created. The use of the suffix “usa” in the Disputed Domain Name is an attempt to create an impression of association with the Complainant or endorsement of the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The Panel is entitled to determine an alternative language of the proceeding pursuant to paragraph 10 of the Policy even though the default language of the proceeding is Chinese. In support of the request for English to be the language of the proceeding, the Complainant submitted that the Respondent is likely familiar with English as the Respondent’s website is in English.
The Panel also notes the following:
(1) The Complainant is a United Kingdom company;
(2) Not only is the Respondent’s website in English, it is exclusively so;
(3) The Respondent has remained silent about the language of the proceeding which suggests that the Respondent is not concerned about English being adopted as the language of the proceeding; and
(4) Adopting Chinese as the language of the proceeding is unlikely to serve any purpose or result in any benefit to the proceeding. Instead, this will definitely delay the proceeding.
In view of the circumstances, the Panel hereby determines pursuant to paragraphs 10 and 11 of the Rules that English shall be the language of the proceeding.
The Complainant is required to establish the following limbs of paragraph 4(a) of the Policy to succeed in the proceedings:
(1) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) The Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
From the facts, the Complainant certainly has rights in a trademark, namely the JIMMY CHOO Brand being a registered trademark in various jurisdictions. The words “jimmy choo” is the essentially element of the JIMMY CHOO Brand and they are incorporated in their entirety in the Disputed Domain Name. Ignoring the gTLD “.com” in the usual manner of proceeding under the Policy, the only difference between the JIMMY CHOO Brand and the Disputed Domain Name is the suffix “usa”. It is clearly a reference to the United States of America and suggests that the Disputed Domain Name is associated with the JIMMY CHOO Brand in the United States of America. No other reasonable explanation exists on record for the Respondent’s use of this suffix. Generic prefixes and suffixes to a trademark in a domain name have consistently been held to be unable to distinguish the domain name from the trademark (e.g., Lacoste Alligator S.A. v. Priscilla, Ranesha, Angel, Jane, Victor, Olivier, Carl, Darren, Angela, Jonathan, Michell, Oiu, Matthew, Pamela, Selima, Angela, John, Sally, Susanna, WIPO Case No. D2010-0988). It is no different in this case. The Panel takes that view that it does not distinguish the preceding letters of the Disputed Domain Name from the JIMMY CHOO Brand. Therefore, the Panel holds that the Disputed Domain Name is confusingly similar to the JIMMY CHOO Brand and the first limb of paragraph 4(a) is established.
B. Rights or Legitimate Interests
The Complainant has denied any relationship with the Respondent or authorization of the Respondent as the Complainant’s retailer or user of the JIMMY CHOO Brand. The Respondent has not offered any reasonable explanation for the Respondent’s selection of the Disputed Domain Name. In the circumstances, in accordance with established principles e.g., the Complainant has shown a prima facie case that the Respondent does not have any right or legitimate interest in the Disputed Domain Name. In the absence of any rebuttal by the Respondent, it is held that the second limb of paragraph 4(a) of the Policy is also established.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) provides an example of bad faith registration and use of a domain name:
“[…] by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The attempt at association with the Complainant via the content of the directed website resolved from the Disputed Domain Name is unmistakable. Since it is obvious from the facts that the Respondent is well aware of the fame of the Complainant and the Complainant’s products under the JIMMY CHOO Brand, the deliberate association speaks of opportunistic bad faith (e.g., Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing, WIPO Case No. D2010-0746). The Panel is of the view that a reasonable person visiting the website will likely be misled in relation to the source, sponsorship, affiliation, or endorsement of the website and the products purportedly made available for online sale on the website. The website is obviously targeted at attaining commercial gain from Internet users visiting it. The factual circumstances fall within the ambit of the scenario envisaged by paragraph 4(b)(iv).
The facts exhibit behaviour on the part of the Respondent described in paragraph 4(b)(iv) of the Policy. On that basis, the Panel holds that bad faith use and registration under the third limb of paragraph 4(a) is established as well.
For all 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 <jimmychoousa.com> be transferred to the Complainant.
Kar Liang Soh
Dated: October 5, 2010