WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
J. Choo Limited v. Bai Hanjin
Case No. D2010-2053
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., United Kingdom.
The Respondent is Bai Hanjin of Lanzhou, Gansu Province, the People’s Republic of China.
2. The Domain Name and Registra
The disputed domain name <jimmychoooutlet-uk.com> (“the Domain Name”) is registered with Bizcn.com, Inc. (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2010. On November 26, 2010, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the Domain Name. On November 29, 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 original Complaint involved two domain names - the Domain Name and <jimmychoochoo.com> against the Respondent and Jimmy Choo respectively. On December 1, 2010, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceedings. On December 2, 2010, the Center received an email from firstname.lastname@example.org (the contact email address for the domain name <jimmychoochoo.com>) indicating he/she is not the owner of the Domain Name and also requesting the Center to communicate with him/her in Chinese.
On December 3, 2010, the Center transmitted an email communication to the Complainant and requested the Complainant to remove one of the disputed domain names from the Complaint in accordance with paragraph 3(c) of the Rules. On December 8, 2010, the Complainant filed an amended Complaint and removed the domain name <jimmychoochoo.com> from the current proceedings. The <jimmychoochoo.com> domain name is the subject of separate UDRP proceedings.
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the Respondent and the Registrar in relation to the Domain Name (“the Registration Agreement”), the language of the proceedings shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the Registration Agreement is Chinese. The Complainant submits in paragraph 10 of the Complaint that the language of the proceedings should be English as the website hosted at the Domain Name is in English, therefore indicating that the Respondent has a working knowledge of English. In response to the Center’s email of December 1, 2010 regarding language of the proceedings in both Chinese and English, on December 3, 2010, the Complainant contended that it had nothing to add to its submissions in the Complaint regarding the language of the proceedings. The Respondent did not respond 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 December 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2011.
The Center appointed Karen Fong as the sole panelist in this matter on January 14, 2011. 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 Panel accepts the Complainant’s submissions in paragraph 10 of the Complaint regarding the language of the proceedings and is satisfied that the Respondent appears to be 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 were transmitted in both Chinese and English. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceedings.
4. Factual Background
The Complainant is a company based in the United Kingdom. It has been trading under the brand name 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. The Complainant and its sister company J. Choo (Jersey) Limited owns numerous trade mark registrations around the world for JIMMY CHOO in a number of classes. Chinese Trade Mark Registration No.1637164 in class 25 is one example of the trade mark registrations submitted by the Complainant in the Complaint.
The Complainant and J. Choo (Jersey) Limited also own many gTLDs and ccTLDs incorporating the JIMMY CHOO trade mark. These include <jimmychooonline.co.uk>, <jimmychooshoes.org> and <jimmy-choo.biz>. These domain names all direct user traffic to the Complainant’s website connected to the domain name, <jimmychoo.com>.
The Domain Name was registered on August 31, 2010 and is connected to a website which appears to offer Jimmy Choo branded products for sale. These products may be counterfeit as the Respondent is not an authorised retailer of the Complainant’s products. The website also features images of Jimmy Choo products.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy has been met:
Identical or Confusingly Similar
The Complainant contends that the Domain Name is identical or confusingly similar to trade marks in which the Complainant has rights.
The Complainant states that it and its sister company J. Choo (Jersey) Limited owns numerous trade mark registrations around the world in various classes including classes 14, 18, 24 and 25 for JIMMY CHOO.
The Complainant asserts that the Domain Name incorporates the Complainant’s JIMMY CHOO trade mark in its entirety which is sufficient to establish that the Domain Name is identical or confusingly similar to the Complainant’s trade mark. The addition of the word “outlet” and “uk” to the Complainant’s mark does not prevent the Domain Name from being confusingly similar to the mark JIMMY CHOO.
Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name and relies on the following grounds:
Firstly, the Respondent has no relationship with or permission from the Complainant to use the JIMMY CHOO marks.
Secondly, the Complainant believes that the Jimmy Choo branded goods offered for sale on the website connected to the Domain Name are counterfeit as the Complainant has not authorised the sale of its Jimmy Choo branded products through the Domain Name. The use of the Domain Name which incorporates the Complainant’s registered trade mark is likely to mislead consumers into believing that the website hosted at the Domain Name is associated with and authorised by the Complainant and the products offered for sale on the website are authentic products. Even if the Respondent is offering genuine Jimmy Choo products which the Complainant does not believe to be true, the Respondent cannot claim rights or legitimate interests in a domain name, the use of which misleads Internet users.
Thirdly, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the marks at issue. Further, as the Domain Name was registered in bad faith, the Respondent cannot be found to have made a bona fide offering of goods and services.
Registered and Used in Bad Faith
The Complainant relies on the following to support its contention that the Domain Name has been registered and used in bad faith:
Firstly, the registration of the Domain Name, a domain name incorporating the Complainant’s registered trade marks, is aimed at disrupting the Complainant’s business by diverting Internet users searching for the Complainant’s products and leading them away from the Complainant’s genuine websites.
Secondly, at the time of the registration of the Domain Name, the Respondent would have been aware of the fame and repute of the Jimmy Choo brand. The registration of a domain name that incorporates or is confusingly similar to a registered trade mark of considerable fame and repute with the intention of profiting through the goodwill associated with the registered trade mark constitutes registration in bad faith.
Thirdly, the terms of service at the website connected to the Domain Name claim that the images and contents of the website are intellectual property owned, controlled or licensed by <jimmychoooutlet-uk.com> or by third parties who have licensed their material to <jimmychoooutlet-uk.com>. The Complainant has not licensed the use of its trade marks to the Respondent. The Respondent’s knowledge of intellectual property rights indicates that the Respondent is aware that the registration and use of the Domain Name incorporating the Complainant’s registered trade marks is registration and use in bad faith of the same.
Fourthly, the Complainant believes that the website connected to the Domain Name is offering counterfeit products for sale as it has not been authorised by the Complainant to sell as genuine goods which would be damaging to the Complainant and constitutes bad faith.
Fifthly, the Respondent in registering a domain name which is very close to the Complainant’s trade marks and offering of Jimmy Choo products for sale on the website connected to the Domain Name, aims to create the impression of association with the Complainant or endorsement of the website when in fact it is not an authorised retailer and has no relationship with the Complainant. The fact that the ”popular tags” link at the bottom of the homepage of the website contains a link to the Complainant’s genuine website is evidence that the Respondent is attempting to mislead consumers into believing that the website is connected with the Complainant.
Finally, the use of the Complainant’s trade marks in the above manner is an attempt to ride on the reputation of the Jimmy Choo brand and an attempt to mislead the customers.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name comprises a combination of the Complainant’s registered trade mark JIMMY CHOO (details are to be found in section 4), the descriptive term “outlet”, the geographical indicator “uk” and the generic ”.com” domain suffix. The addition of a descriptive term which describes one of the places where the Complainant’s products are sold and a geographical indicator does nothing to minimise the risk of confusion. Moreover, for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Panel finds that the Complainant has made out a prima facie case (details are set out in section 5.A), a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent was aware of the Complainant’s marks when it registered the Domain Name. The fact that the Domain Name incorporates the Complainant’s trade mark is evidence that the registration of the name was in bad faith.
The Panel also concludes that the actual use of the Domain Name is in bad faith. The products offered for sale on the website connected to the Domain Name are likely to be counterfeit JIMMY CHOO products. There is a clear intention to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s website is and the products sold on it are authorised or endorsed by the Complainant. This is clearly bad faith under paragraph 4(b)(iv) of the Policy.
The Panel finds that the Domain Name was registered and is being used in bad faith.
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-uk.com> be transferred to the Complainant.
Dated: January 24, 2011