World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

J. Choo Limited v. Yizhi Maoyi

Case No. D2010-1726

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. of United Kingdom of Great Britain and Northern Ireland.

The Respondent is Yizhi Maoyi of Fujian, People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <jimmychoo4sale.com> is registered with Bizcn.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2010. On October 13, 2010, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 14, 2010, Bizcn.com, Inc. 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”).

Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise. According to information from the concerned Registrar, the language of the registration agreement for the disputed domain name is Chinese. On October 14, 2010, the Center transmitted by email to the parties in both Chinese and English a communication regarding the language of proceedings. On October 18, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. The Panel notes that the disputed domain name resolves to a website with content in English, so it appears that the Respondent is familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties have been transmitted in both Chinese and English and that the Respondent was allowed to file a Response in either Chinese or English but decided not to do so. Given the provided submissions and circumstances of this case, the Panel chooses at its discretion to render the decision in English.

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 October 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2010.

The Center appointed Linda Chang as the sole panelist in this matter on November 19, 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.

Due to special circumstances, the Panel decided to extend the decision date to December 10, 2010 in accordance with paragraph 10(c) of the UDRP Rules.

4. Factual Background

The Complainant is a company incorporated in the United Kingdom. It has been trading under the trade mark JIMMY CHOO since 2001 and its internationally renowned high fashion footwear, handbags and small leather goods are sold in over one hundred own-branded boutiques across thirty two countries of the world. The Complainant owns a number of trade mark registrations for the trade mark JIMMY CHOO in several classes of goods in numerous jurisdictions. The Complainant owns many gTLD’s and ccTLD’s incorporating its trade mark, either in its own name or in the name of its sister company. These domain names all direct user traffic to the Complainant’s website at “www.jimmychoo.com”.

The Respondent registered disputed domain name <jimmychoo4sale.com> on June 14, 2010. The disputed domain name is used in connection with website selling Jimmy Choo branded products.

5. Parties’ Contentions

A. Complainant

The Disputed Domain Name Is Confusingly Similar to the Complainant’s Trade mark

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trade mark to which the Complainant has rights.

The Complainant states that it owns a number of registrations for the trade mark JIMMY CHOO in numerous countries all over the world.

The Complainant asserts that the disputed domain name <jimmychoo4sale.com> incorporates the Complainant’s trade mark JIMMY CHOO in full, deviates from the mark only with the addition of the elements with no distinguishing power in the context of the domain name “4” and “sale”. Citing precedents including PACCAR, Inc. v. Enyart Associates and Truckalley.com, LLC, WIPO Case No. D2000-0289 and Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253, the Complainant contends that the incorporation of a trade mark in its entirety has been deemed sufficient to establish the domain name is identical or confusingly similar to the Complainant’s registered trade mark.

The Complainant further alleges that the addition of “4sale” is not sufficient to avoid confusing similarity with the Complainant’s trade mark, as the addition is simply an indication that the website hosted at the disputed domain name offers products marked with the JIMMY CHOO registered trade mark for sale.

The Respondent has No Rights or Legitimate Interests in the Disputed Domain Name

The Complainant disputed that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the basis of the following reasons:

Firstly, the Complainant states that it has never licensed or otherwise permitted the Respondent to use its trade marks, nor to apply for domain names incorporating its trade marks, nor to sale goods under its trade marks similar to the ones sold by the Complainant in particular on its official website. Therefore, there is no relationship whatsoever between the Complainant and the Respondent.

Secondly, the Complainant alleges that the website hosted at the contested domain name is reportedly selling counterfeit products under the Complainant’s registered trade mark thus misleading Internet users, citing the precedents Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and NA PALI S.A.S. v. DILLC DomainAdmin, WIPO Case No. D2008-0517.

Thirdly, there is no evidence of any fair or noncommercial or bona fide uses of the disputed domain name, citing the precedents The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, WIPO Case No. D2002-0701 and AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937.

Registered and Used in Bad Faith

The Complainant contends that the disputed domain name was registered and used in bad faith on the basis of the following reasons:

Firstly, the Complainant asserts that its trade mark JIMMY CHOO is distinctive and well-known internationally and has been in the market since 2001. Therefore, the Complainant contends that the Respondent knew or should have known of the existence of the Complainant's trademark prior to registering the disputed domain name in 2010. Moreover, the Complainant alleges that registration of a domain name identical to the registered trade mark of the Complainant is clearly aimed at the Complainant’s business. This prior knowledge constitutes bad faith in registration.

Secondly, the Complainant argues that the Respondent uses the disputed domain name in bad faith because the unauthorized use of the Complainant’s trade mark and a false claim to be “an official Jimmy Choo outlet store” evidence the Respondent’s clear intentional attempt to attract present and potential new Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark and official website and attempting to create an impression of association with the Complainant, or endorsement of the Respondent’s website.

Thirdly, the Complainant alleges that the website connected with the disputed domain name is reported to sell counterfeits and that the contradicting statement on its website “www.jimmychoo4sale.com only sell original Jimmy Choo” further constitute bad faith in use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

There being no Response, under paragraphs 5(e) and 14(a) of the Rules, the Panel, in the absence of exceptional circumstances, decides the dispute on the basis of the Complaint.

Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceeding:

(A) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(B) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(C) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the registered owner of the trade mark JIMMY CHOO in many countries around the world. The Complainant has acquired substantial goodwill in this trade mark.

Compared to the Complainant’s trade mark, the disputed domain name was completely reproduce the trade mark with the only difference being addition of “4sale”.

The Panel holds that the incorporation of a trade mark in its entirety is sufficient to establish the domain name is identical or confusingly similar to the Complainant’s registered trade mark and that the addition of a generic term does not negate the confusing similarity between the disputed name and the Complainant’s trade marks.

Therefore, the Panel finds that the disputed domain name is clearly, and intentionally, confusingly similar to the Complainant’s trade marks. Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name. There is nothing in the record to suggest the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, to suggest that it has been commonly known by the disputed domain name, or to suggest that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names. Therefore, the burden of production shifts to the Respondent to prove otherwise. However, the Respondent has not responded to the Complainant’s claims.

The Complainant contends that the goods being offered for sale on the website connected to the disputed domain name may be counterfeits of the Complainant’s products. Given that there is no Response, and citing Vibram S.p.A .v. Dai Xiu Mei, WIPO Case No. D2010-0846, the Panel considers it unnecessary to decide if the products on sale are counterfeit in this case.

The Panel bases its decision on the information and evidence submitted before it, and given the circumstances, finds it more likely than not that the Respondent does not have any rights or legitimate interests in the disputed domain name.

The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has developed a reputation for the trade mark JIMMY CHOO in the high fashion industry for about 10 years and the Complainant’s trade marked products are sold worldwide. Moreover, the Respondent’s unauthorized sale of Jimmy Choo branded products (counterfeit or otherwise) very strongly suggests that the Respondent knew of the Complainant’s trade marks prior to registration of the disputed domain name. The Respondent has not responded, and it is reasonable to infer from the circumstancese of this case that the aim of the registration and use of the disputed domain name is to exploit consumer confusion for commercial gain.

In addition, the Respondent’s lack of rights or legitimate interests in the name Jimmy Choo as well as the fact that the disputed domain name has been used to sell (counterfeit or otherwise) products marked with the JIMMY CHOO registered trade mark without authorization, the Panel is convinced that the purpose of the Respondent’s registration and use of the domain name is to capitalize on the goodwill of the trade marks by merely registering the trade mark as a domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating this consumer confusion on the source, sponsorship, affiliation or endorsement of its website. This behavior constitutes bad faith registration and use of the disputed domain name under the Policy.

The Panel finds that the Complainant has established that the Respondent has registered and used the disputed domain name in bad faith and has met the requirements of 4(a)(iii) of the Policy.

7. Decision

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 name <jimmychoo4sale.com> be transferred to the Complainant.

Linda Chang
Sole Panelist
Dated: December 10, 2010

 

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