WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
J. Choo Limited v. Xi Yingsi
Case No. D2011-1609
1. The Parties
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.
Respondent is Xi Yingsi of Quanzhou, China.
2. The Domain Name and Registrar
The disputed domain name <jimmychoo247.com> (the “Domain Name”) is registered with FastDomain, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2011. On September 22, 2011, the Center transmitted by e-mail to FastDomain, Inc. a request for registrar verification in connection with the Domain Name. On September 22, 2011, FastDomain, Inc. transmitted by e-mail to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 21, 2011.
The Center appointed Robert A. Badgley as the sole panelist in this matter on November 3, 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
Complainant has marketed footwear, handbags, and other items under the mark JIMMY CHOO since 2001, and has registered the mark JIMMY CHOO in the European Union, China, and the United States. In 2010, Complainant launched a new line under the mark CHOO 24:7, and that mark has been registered in the United Kingdom. Complainant has expended considerable sums advertising its fashion goods, and operates a website (“www.jimmychoo.com”) where products may be purchased on the Internet.
The Domain Name was registered on April 11, 2011. The website to which the Domain Name resolves purports to offer Jimmy Choo shoes for sale, at what appear to be steeply discounted prices. The site also offers shoes made by different designers (such as Christian Leboutin). Complainant alleges that the Jimmy Choo footwear offered at Respondent’s website is counterfeit. Complainant alleges further that Respondent is not authorized or licensed to use Complainant’s mark in any manner.
Complainant’s counsel sent a letter dated July 20, 2011 to Respondent, asserting that the Domain Name and its corresponding website violated Complainant’s rights in the mark JIMMY CHOO and demanding that the Domain Name be transferred for an amount up to USD100. No response was received from Respondent.
5. Parties’ Contentions
Complainant’s salient factual assertions are set forth above in the “Factual Background” section. Complainant’s substantive arguments will be taken up below in the discussion of the three elements required under the Policy.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant clearly has rights in the mark JIMMY CHOO through registration and extensive use. Complainant also holds rights in the more recent mark CHOO 24:7. The Domain Name is confusingly similar to both of these marks. The addition of “247” to the mark JIMMY CHOO in the Domain Name does not diminish the confusing similarity between the Domain Name and the mark. Similarly, the absence of “Jimmy” from the mark CHOO 24:7 does not sufficiently distinguish the Domain name from that mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122 (March 26, 2001). Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174 (April 22, 2003), correctly observed: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a Response and therefore did not rebut any of Complainant’s allegations.
There is no evidence that Respondent is commonly known by the Domain Name, or has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services. Complainant has alleged that Respondent is selling counterfeit products at his website, and this has not been denied. Respondent had the opportunity, upon receipt of Complainant’s cease-and-desist letter (and upon receipt of the Complaint in this proceeding) to demonstrate his legitimacy, but Respondent has not done so. The Panel concludes from the record that Respondent has no rights or legitimate interests in respect of the Domain Name.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds that Respondent has committed bad faith under paragraph 4(b)(iv). It is easy to conclude that Respondent had Complainant’s mark in mind when registering the Domain Name, which incorporates the mark JIMMY CHOO in its entirety and adds “247,” which correspond to Complainant’s more recent fashion line. Respondent’s website, as far as the record shows, does nothing to disclaim any affiliation with Complainant, and purports to sell numerous Jimmy Choo shoes, as well as shoes made by Complainant’s competitors. This is classic intentional diversion of Internet users to a mistaken website by means of confusion between the legitimate merchandiser’s mark and the subject domain name.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <jimmychoo247.com> be transferred to Complainant.
Robert A. Badgley
Dated: November 5, 2011