World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

J. Choo Limited v. Zhenqun Mo AKA mozhenqun

Case No. D2010-1937

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, the United Kingdom.

The Respondent is Zhenqun Mo AKA mozhenqun of Yulin, Guangxi, the People’s Republic of China.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2010. On November 11, 2010, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 12, 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. On November 15, 2010, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On November 16, 2010, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceeding by the specified due date.

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 names is Chinese. On November 15, 2010, the Center transmitted by email to the parties in both Chinese and English a communication regarding the language of proceedings. On November 16, 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 names 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. 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 November 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2010.

The Center appointed Linda Chang as the sole panelist in this matter on December 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 a company incorporated in the United Kingdom. It has been trading under the brand JIMMY CHOO since 2001 and its 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 trademark registrations for the trademark JIMMY CHOO in several classes of goods in numerous jurisdictions. The Complainant owns many gTLDs and ccTLDs incorporating its trademark, 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 the disputed domain name <jimmychoooutlet.org> on September 30, 2010. The disputed domain name is used in connection with website selling JIMMY CHOO branded products.

5. Parties’ Contentions

A. Complainant

(1) The Disputed Domain Name Is Identical or Confusingly Similar to the Complainant’s Trademark

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

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

The Complainant asserts that the disputed domain name <jimmychoooutlet.org> incorporates the Complainant’s trademark JIMMY CHOO in full, deviates from the mark only with the addition of a term with no distinguishing power in the context of the domain names, “outlet”. Citing precedents including Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066, the Complainant contends that the incorporation of a trademark in its entirety has been deemed sufficient to establish the domain name is identical or confusingly similar to the Complainant’s registered trademark.

The Complainant further alleges that the abovementioned addition of word is not sufficient to avoid a likelihood of confusion with the Complainant’s trademark, as the addition is simply an indication that the website hosted at the contested domain name offers products marked with the JIMMY CHOO registered trademark for sale.

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

The Complainant contends 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 trademark, nor to apply for a domain name incorporating its trademark, nor to sale goods under its trademark 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 disputed domain name uses the mark JIMMY CHOO and product style names used by the Complainant, namely “Lance”, “Ivana”, “Glenys”, “Lewis”, as well as reproducing images taken from the Complainant’s official website, which is likely to mislead consumers for commercial gain, and suggest to them that the website of the Respondent is associated with, or endorsed by, the Complainant.

Thirdly, the Complainant alleges that the website hosted at the dispute domain name is selling JIMMY CHOO branded products which are believed to be counterfeits. To defeat a possible argument that the Respondent could be selling original JIMMY CHOO products, the Complainant argues that the Respondent is misleading Internet users thus does not meet the requirements to claim legitimate interests in the disputed domain name.

Fourthly, there is no evidence of any fair or non-commercial or bona fide uses of the disputed domain name.

(3) The Respondent Registered and Is Using the Disputed Domain Name in Bad Faith

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

Firstly, the Complainant asserts that its trademark JIMMY CHOO which has been in the market since 2001 is distinctive and well-known internationally. Moreover, the Complainant claims that the Respondent has displayed images of JIMMY CHOO branded products on the website hosted at the disputed domain name, which have been taken from the Complainant’s official marketing campaign. 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 September 2010. This prior knowledge constitutes bad faith in registration.

Secondly, the Complainant alleges that registration of the disputed domain name which incorporates the Complainant’s registered trademark clearly shows the Respondent’s intent 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 or to prevent the Complainant from registering the domain name, which further constitutes bad faith in registration.

Thirdly, the Complainant argues that the Respondent uses the disputed domain names in bad faith because the use of images taken from the Complainant’s online marketing campaign, in connection with the Complainant’s mark and product style names used by the Complainant, on the website hosted at the disputed domain name which is confusingly similar to the Complainant’s mark, shows the Respondent’s attempt to attract present and potential Internet users to his website at the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainant’s trademark and its official website, and attempting to create an impression of association with or endorsement by the Complainant of the Respondent’s website.

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 trademark 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 trademark JIMMY CHOO in many countries around the world. The Complainant has acquired substantial goodwill in this trademark.

Compared to the Complainant’s trade mark, the disputed domain name completely reproduces the trade mark with the only difference being addition of “outlet”, which has no distinguishing power in this context.

The Panel holds that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to that trademark.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. 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 non-commercial or fair use of the disputed domain name. Therefore, the burden 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, 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 trademark JIMMY CHOO in the high fashion industry for about 10 years and the Complainant’s trademarked products are sold worldwide. Moreover, the Respondent’s sale of JIMMY CHOO branded products very strongly suggests that the Respondent knew of the trademark JIMMY CHOO prior to registration. Given that the Respondent has not responded, it is reasonable to infer that the aim of the registration of the disputed domain names 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 (original or counterfeit) products marked with the JIMMY CHOO registered trademark without authorization, the Panel is convinced that the purpose of the Respondent’s registration of the domain name is to capitalize on the goodwill of the trademark by merely registering the trademark 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 in registration and in use of the domain name.

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, <jimmychoooutlet.org> be transferred to the Complainant.

Linda Chang
Sole Panelist
Dated: January 4, 2011

 

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