WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktieselskabet af 21. November 2011 A/S v. Jian Lin aka Lin
Case No. D2011-0681
1. The Parties
The Complainant is Aktieselskabet af 21. November 2011 A/S of Denmark, represented by Bech-Bruun Law Firm, Denmark.
The Respondent is Jian Lin aka Lin of Putian, Fujian Province, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <jackandjonese.com> is registered with Jiangsu Bangning Science & technology Co. Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2011. On April 18, 2011, the Center transmitted by email to Jiangsu Bangning Science & technology Co. Ltd. a request for registrar verification in connection with the disputed domain name. On April 19, 2011 and April 22, 2011, Jiangsu Bangning Science & technology Co. Ltd. transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding the registrant information, the Complainant filed an amended Complaint on April 26, 2011.
On May 2, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, 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 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 May 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2011.
The Center appointed Douglas Clark as the sole panelist in this matter on June 6, 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.
Language of the Proceeding
The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:
Unless otherwise agreed by 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, having regard to the circumstances of the administrative proceeding.
The Complainant requested the language of the proceeding be in English on the grounds that: 1) the Complainant’s trademark is fully incorporated in the disputed domain name, and by the fact that the Respondent hereby uses the English words "jack", "and" and "jones". Therefore, many English speaking consumers might be convinced that they are able to purchase or receive information on the Complainant’s products from the Complainant on the Respondent’s website; 2) the website under the disputed domain name <jackandionese.com> is fully in the English language and visitors to the website can choose between USD and EUR as the currency of the web shop on the website, and thus the content of the disputed domain name is directed against visitors who are familiar with the English language; 3) the Respondent’s use of the Complainant’s trademark in the disputed domain name as well as the fact that the website under the disputed domain name is in the English language and the currencies offered on the website are USD and EUR clearly shows that the Respondent is familiar with the English language.
The Respondent has not responded to the proceedings nor to the request that the language of the proceeding to be in English.
Given that that the Respondent does business on the website in question only in English: that the evidence in the case is all in English: and, that the Respondent has not responded to the proceedings, the Panel determines that, in the circumstances of this case, English shall be the language of the proceeding for these proceedings.
4. Factual Background
The Complainant is part of the Bestseller group who is a global manufacturer and retailer of clothing and accessories under a number of trademarks, including ONLY, VERO MODA, JACK & JONES and SELECTED.
The Bestseller Group is a family-owned group of companies founded in Ringkøbing, Denmark, in 1975 by Merete Bech Povlsen and Troels Holch Povlsen. At present, the Bestseler Group directly employs more than 9,600 people, and for the year 2009/2010 the Bestseller Group had a turnover of 13,645,000,000 DKK (approximately 2,000,000,000 USD).
The Bestseller Group has more than 2,500 chain-stores and more than 12,000 external multibrand stores in 46 countries around the world, including in China. In 2009/2010, the Bestseller Group opened 474 new stores.
The Bestseller Group trades inter alia under the trademark JACK & JONES. The JACK & JONES trademark is registered in numerous jurisdictions registered worldwide, including in Denmark and the European Union. The first registration as a CTM was in 2000. The Complainant also is the owner of and maintains a website under the domain name <jackandjones.com>, which also features an online webshop.
The disputed domain name <jackandjonese.com> owned by the Respondent was first registered on July 22, 2010 and is currently being used by a company who claims to be "Jack & Jones official manufacturer". This company, is not an official manufacturer, distributor or retailer of Jack & Jones products, nor in anyway related to the Bestseller Group.
5. Parties’ Contentions
The Complainant’s contends that the disputed domain name <jackandjonese.com> should be transferred to the Complainant by the Respondent, see paragraph 4(a) of the Policy:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interest with respect to the disputed domain name: and
(iii) the disputed domain name has been registered and is being used by the Respondent in bad faith.
The disputed domain name <jackandjonese.com> must clearly be considered to be confusingly similar with the Complainant’s trademark JACK & JONES.
The symbol "&" will be pronounced and perceived as the word "and". Due to the fact that the domain name <jackandjonese.com> consists mostly of the Complainant’s well-known trademark, a likelihood of confusion between the disputed domain name clearly exists, as the dominant and characteristic parts of the disputed domain name are "jack", "and" (&) and "jones".
Furthermore, the addition of the letter "e" is indeed secondary and does not remove the distinctiveness of the mark JACK & JONES which continues to constitute the most predominant element within the disputed domain name. The disputed domain name <jackandjonese.com> must be assessed being a typosquatted version of the Complainant's domain name <jackandjones.com>
Rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
On the website under the disputed domain name <jackandjonese.com> a large quantity of apparently counterfeit products are being marketed and sold. It appears the articles of clothing are being passed off as being original products from the Complainant and from other well-known fashion houses, such as Calvin Klein, Zara, Polo, Esprit, Abercrombie & Fitch, Armani, Burberry and many others.
Furthermore, the Complainant's JACK JONES logo is being used on the website. The mere registration of a domain name does not establish rights or legitimate interests in that name. There must be a fair or noncommercial use or bona fide offering of goods under the domain name to establish rights or legitimate interests. No such use exists here.
The Complainant has not licensed or otherwise permitted the Respondent to use its JACK & JONES trademark or its JACK JONES logo, see Annex 11 to the Complaint or to apply for any domain name incorporating the trademark. There is no business relationship between the Bestseller Group and the Respondent. Consequently, the disputed domain name is not used in connection with a bona fide offering of goods.
The Complainant has shown prima facie evidence of the absence of any rights or legitimate interests in the disputed domain name by the Respondent the burden of proof thus shifts to the Respondent.
The Complainant submits that the disputed domain name which incorporates the Complainant’s registered trademark JACK & JONES has been registered and is being used in bad faith.
The Complainant's trademark JACK & JONES is well-known worldwide. On the website under the disputed domain name <jackandjonese.com> counterfeit JACK & JONES goods are being marketed and sold and the Complainant's JACK JONES logo is being used without permission. Thus it is unlikely that the Respondent is unaware of the Complainant’s trademark JACK & JONES.
Consequently, it is likely that the substantial intention with the registration of the disputed domain name <jackandjonese.com> is to profit on an illegal exploitation of the goodwill and reputation related to the Complainant’s well-known trademark JACK & JONES.
The Respondent does not have the right to use a domain name which incorporates the Complainant’s trademark. By using the Complainant’s trademark, the Respondent is likely to divert Internet traffic to his/her own site for his/her own commercial gain, thereby potentially depriving the Complainant of visits by Internet users.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <jackandjonese.com> is confusingly similar to the Complainant’s registered trademarks JACK & JONES (as well as to the domain name <jackandjones.com>). The addition of the letter “e” does not detract from the similarity. It is, as the Complainant argues, a clear case of typosquattiing.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. The use made by the Respondent of the website under the disputed domain name where the Complainant’s trademark features prominently and apparently counterfeit products are sold make it hard to imagine that the Respondent could ever establish any rights or legitimate interests. Clearly, none of the circumstances in paragraph 4(c) of the Policy, which sets out how a Respondent can prove his/her rights or legitimate interests, are present in this case.
C. Registered and Used in Bad Faith
For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain name <jackandjonese.com> was registered in bad faith and is being used in bad faith.
This case clearly falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
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.
For 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 <jackandjonese.com> be transferred to the Complainant.
Dated: June 20, 2011