WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
J. Choo Limited v. Lonken Hong
Case No. D2010-1523
1. The Parties
The Complainant is J. Choo Limited of London, the United Kingdom of Great Britain and Northern Ireland, represented by A. A. Thornton & Co. of the United Kingdom.
The Respondent is Lonken Hong of People’s Republic of China.
2. The Domain Names and Registrar
The disputed domain names <jimmychoooutlets.com>, <jimmychoooutletstore.com> and <jimmychooshoesoutlet.com> are registered with HiChina Zhicheng Technology Ltd. Bizcn.com, Inc., and Xin Net Technology Corp. respectively (“the Registrars”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2010. On September 10, 2010, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On September 13, 2010 and September 19, 2010, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the Respondent’s 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”).
On September 20, 2010, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On September 21, 2010, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the due date.
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 September 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for the Response was October 17, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on October 17, 2010.
The Center appointed Sebastian Hughes as the sole panelist in this matter on October 25, 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
A. he Complainant
The Complainant is a company incorporated in the United Kingdom and the owner of numerous registrations for the JIMMY CHOO trade mark (“the Trade Mark”) in Europe and in China, where the Respondent is based. The Complainant and its sister company, J. Choo (Jersey) Limited, are also the owners of numerous domain names comprising the Trade Mark, all of which are directed to the Complainant’s “www.jimmychoo.com” website, including:
B. The Respondent
The Respondent is an individual apparently with an address in China.
The disputed domain name <jimmychoooutlets.com> was registered on July 9, 2010, <jimmychoooutletstore.com> on April 16, 2010 and <jimmychooshoesoutlet.com> on March 3, 2010 respectively.
5. Parties’ Contentions
The Trade Mark is one of the most recognised high fashion footwear and handbags and small leather goods brands in the world. The Complainant has been trading under the Trade Mark since 2001 and has spent considerable amounts of time and money advertising the Trade Mark. The Complainant operates over 100 own-branded boutiques across 32 countries worldwide. The Trade Mark is regularly featured in magazines and newspaper articles.
The disputed domain names incorporate the Trade Mark in its entirety. The addition of the words “outlets”, “outletstore” and “shoesoutlet” does not prevent the disputed domain names from being confusingly similar to the Trade Mark. Furthermore, the variations of the word “outlets” are common in the Complainant’s line of business, as many brands offer factory outlets for their products. The Complainant operates an outlet in part of a discount outlet village in Bicester, Oxfordshire, United Kingdom. Accordingly, the addition of variations on the word outlet will not be sufficient to avoid a likelihood of confusion with the Trade Mark.
The Respondent’s use of the disputed domain names incorporating the Trade Mark is clearly an attempt to catch Internet users searching for the Complainant’s goods using the Trade Mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has no relationship with, or permission from, the Complainant to use the Trade Mark.
The use of the disputed domain names is likely to mislead consumers into believing that the websites hosted at the disputed domain names (“the Websites”) are associated with the Complainant. The Websites appear to offer JIMMY CHOO branded products for sale. The Complainant is unable to confirm the authenticity of the goods displayed on the Websites, but believes them to be counterfeit.
Use of the disputed domain names is likely to confuse consumers into believing that they are purchasing authentic products through websites authorised by the Complainant.
The Websites also appear to offer Christian Louboutin products for sale. The offer for sale of competitors’ branded goods under a domain name incorporating the Complainant’s registered trade mark does not constitute legitimate use of the domain names.
There is no evidence the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Respondent’s registration of several domain names comprising the Trade Mark is clearly aimed to disrupt the Complainant’s business by diverting Internet users who are searching for the Complainant’s products and leading them away from the Complainant’s genuine websites.
The registration of the disputed domain names incorporating the Trade Mark for the purpose of hosting the sale of counterfeit products amounts to registration in bad faith. The Complainant believes the goods to be counterfeit as it has not authorised the Respondent to sell its genuine goods, and the Complainant carefully selects its retailers and distributors to ensure the integrity and reputation of its brand is maintained.
The Respondent has attempted to register domain names as close as possible to the Trade Mark. The Respondent aims to create the impression of association with the Complainant, or endorsement of the Websites, when in fact the Respondent is not an authorised JIMMY CHOO retailer and has no relationship with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the registration agreements for the disputed domain names is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The Websites are all in English;
(2) The disputed domain names are all in English;
(3) All the product names, product information and user instructions on the Websites are in English. There is no option to view the Websites in a different language;
(4) This indicates the Respondent has a working knowledge of English.
The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
The Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra).
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) that English shall be the language of the proceeding.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate by many years the dates of registration of the disputed domain names.
UDRP panels have consistently held that domain names may be found identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to a disputed domain name generally has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
The addition of the generic words “outlets”, “outletstore” and “shoesoutlet”, all of which are common and non-distinctive words used in the shoe and fashion retail industries, does not serve to distinguish the disputed domain names from the Trade Mark in any way.
The Panel finds that the disputed domain names are confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests a disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is evidence that the Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain names by many years. The Complainant has therefore shown a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant has asserted that the Websites are used by the Respondent to market counterfeit goods. There can be no legitimate interest in the sale of counterfeits (Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750).
The Respondent has failed to show that it has acquired any rights in respect of the disputed domain names or that the disputed domain names are used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”
The Complainant contends that the disputed domain names are being used to offer for sale unauthorised counterfeit JIMMY CHOO products via the Websites and this contention has not been rebutted by the Respondent. This is strong evidence of bad faith (Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019).
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
The Panel also considers the failure of the Respondent to file a Response to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <jimmychoooutlets.com>, <jimmychoooutletstore.com> and <jimmychooshoesoutlet.com> be transferred to the Complainant.
Dated: November 8, 2010