World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

J. Choo Limited v. Xiong Lianshe

Case No. D2011-1341

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., United Kingdom of Great Britain and Northern Ireland.

The Respondent is Xiong Lianshe of Nanjing, Jiangsu, China.

2. The Domain Names and Registrar

The disputed domain names <chaussures-jimmychoo.com>, <jimmychoobags-uk.com>, <jimmychoobagsuk.com>, <jimmychoobridal-shoes.com>, <jimmychoohk.com>, <jimmychooie.com>, <jimmychoo-ireland.com>, <jimmychoolondonuk.com>, <jimmychoomensshoes.net>, <jimmy-chooonline.com>, <jimmychooparis.com>, <jimmychooprivate.com>, <jimmychoo-replicahandbags.com>, <jimmy-choosale.com>, and <jimmychooshoesie.com> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2011. On August 5, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On August 6, 2011 and August 11, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification responses 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”).

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 August 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2011.

The Center appointed Andrew F. Christie as the sole panelist in this matter on September 12, 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.

4. Factual Background

The Complainant produces high fashion footwear, handbags and small leather goods under the well-known brand JIMMY CHOO. The Complainant has been trading under the brand JIMMY CHOO since 2001, and has spent considerable time and money advertising the brand since then.

The Complainant, or its sister company, J. Choo (Jersey) Limited, is the proprietor of several registrations for the trademark JIMMY CHOO in the European Community and China. The first application for registration of the trademark JIMMY CHOO was filed in 2000, and the first registration of the trademark JIMMY CHOO occurred on September 21, 2001, in China, and on September 16, 2002, in the European Community.

The Complainant, or its sister company, J. Choo (Jersey) Limited, owns many gTLDs and ccTLDs incorporating its trademark JIMMY CHOO. All these direct users to the Complainant’s website at “www.jimmychoo.com”.

Each of the disputed domain names was registered on April 13, 2011. They resolve to websites that offer for sale goods (mainly shoes and bags) purporting to be those of the Complainant and/or those of the Complainant’s competitors. According to a reverse WhoIs search conducted on August 3, 2011, it appears the Respondent has registered 48 domain names incorporating the Complainant’s JIMMY CHOO trademark or the names of other well-known fashion brands.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights because they contain the Complainant’s trademark JIMMY CHOO in its entirety. The addition of descriptive and geographic words in the disputed domain names do not prevent them from being confusingly similar to the Complainant’s trademark JIMMY CHOO. The Complainant contends it received a phone call on July 18, 2011, from a customer seeking genuine “Jimmy Choo” products who had purchased goods bearing the trademark JIMMY CHOO from a website to which one of the disputed domain names, <jimmychoolondonuk.com>, resolved and received counterfeit goods. This is evidence that the disputed domain names are confusingly similar to the Complainant’s trademarks.

The Complainant contends the Respondent has no rights or legitimate interests in respect of the disputed domain names because (i) it has not been authorized by the Complainant to register them or to deal in genuine “Jimmy Choo”-branded goods; (ii) it is using the disputed domain names to offer goods bearing the JIMMY CHOO trademark which the Complainant believes are counterfeit, and this is not a bona fide offering of goods; (iii) some of the websites to which the disputed domain names resolve offer goods bearing the well-known trademarks of competitors of the Complainant alongside goods bearing the Complainant’s trademark; (iv) there is no evidence the Respondent was previously known by the Complainant’s trademark; and (v) due to the Complainant’s advertising and numerous trademark registrations, the Respondent would have been aware of the Complainant’s “Jimmy Choo” brand at the time of registering the disputed domain names.

The Complainant contends that the disputed domain names were registered and are being used in bad faith because (i) by incorporating the Complainant’s trademark JIMMY CHOO in its entirety in all the disputed domain names, the Respondent is disrupting the Complainant’s business by diverting Internet users who are searching for the Complainant’s products, and is preventing the Complainant from registering the disputed domain names in its own name; (ii) the Respondent is intentionally attempting to attract, for commercial gain, Internet users by creating an impression that the websites to which the disputed domain names resolve are associated with, or endorsed by, the Complainant; (iii) the Respondent is, without the Complainant’s authorization, using images taken from the Complainant’s genuine advertising which is clearly done to create an impression, for commercial gain, that the websites to which the disputed domain names resolve are associated with, or endorsed by, the Complainant, and is evidence the Respondent is trying to disrupt the Complainant’s business; and (iv) the Respondent has registered 48 domain names incorporating the Complainant’s trademark or other well-known fashion brand names which is evidence of bad faith and that the Respondent has engaged in a pattern of such conduct.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain names incorporate wholly the Complainant’s registered trademark JIMMY CHOO, and add various descriptive words or characters. These descriptive additions (except for “private”) are of three general types: (i) those naming a type of product (e.g. “bags”; “chaussures”, French for “shoes”); (ii) those relating a geographical location (e.g. “-ireland”; “ie”, the ccTLD indicator for Ireland); and (iii) those concerning retail activities (e.g. “sale”; “online”). For each of the disputed domain names, the distinctive aspect is the Complaint’s registered trademark, JIMMY CHOO. The addition of the descriptive words or characters does not lessen the inevitable confusion of each of the disputed domain names with the Complainant’s registered trademark. Accordingly, this Panel finds that each of the disputed domain names is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use the JIMMY CHOO trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain names, or that it has, for any other reason, rights or legitimate interests in the disputed domain names.

The Respondent registered the disputed domain names 10 years after the Complainant first registered the JIMMY CHOO trademark, and appears to be using them to resolve to websites offering for sale products that may be counterfeits of the Complainant’s products and/or that purport to be products of the Complainant’s competitors. According to the present record, none of the disputed domain names is being used in connection with a bona fide offering of goods and services. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in any of the disputed domain names.

C. Registered and Used in Bad Faith

The evidence on the record provided by the Complainant with respect to the registration and use of its trademark JIMMY CHOO, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy this Panel that the Respondent most likely knew of the Complainant’s trademark at the time of registration of the disputed domain names and knew that it had no rights or legitimate interests in the disputed domain names. Accordingly, this Panel finds that the Respondent registered the disputed domain names in bad faith. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain names indicates that the Respondent has used the disputed domain names to attract, for commercial gain, Internet users to websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of those websites. Accordingly, pursuant to paragraph 4(b)(iv) of the Policy, this Panel finds that each of the disputed domain names was registered and is being used in bad faith.

7. Decision

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 names, <chaussures-jimmychoo.com>, <jimmychoobags-uk.com>, <jimmychoobagsuk.com>, <jimmychoobridal-shoes.com>, <jimmychoohk.com>, <jimmychooie.com>, <jimmychoo-ireland.com>, <jimmychoolondonuk.com>, <jimmychoomensshoes.net>, <jimmy-chooonline.com>, <jimmychooparis.com>, <jimmychooprivate.com>, <jimmychoo-replicahandbags.com>, <jimmy-choosale.com>, and <jimmychooshoesie.com>, be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Dated: September 25, 2011

 

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