WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arcadia Group Brands Limited, trading as Topshop v. Richard Yaming
Case No. D2012-1490
1. The Parties
Complainant is Arcadia Group Brands Limited, trading as Topshop of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Sipara, United Kingdom.
Respondent is Richard Yaming of Seoul, Republic of Korea, representing himself.
2. The Domain Name and Registrar
The disputed domain name <mytopshop.com> (“the Domain Name”) is registered with INames Co., Ltd. d/b/a inames.co.kr (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2012. On July 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 25, 2012, the Registrar transmitted by email 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”).
On July 25, 2012, the Center notified the Parties in both English and Korean that the language of the Registration Agreement in this case was Korean, and directed Complainant to either resubmit the Complaint in Korean or to submit a request to use English as the language of the proceeding. On the same date, Complainant submitted a request that the language of the proceeding be English. On July 26, 2012, Respondent requested that the language of the proceeding be Korean, stating that he does not know English. On July 31, 2012, the Center notified the Parties in both English and Korean of its preliminary decision to (1) accept the Complaint as filed in English, (2) accept a Response in either English or Korean, and (3) appoint a Panel familiar with both English and Korean, if available. The Parties were informed that the Panel would be given the authority to determine the language of proceedings.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, in both English and Korean, and the proceedings commenced on July 31, 2012. On August 5, 2012, Respondent requested a Korean translation of the annexes to the Complaint, noting that he is a Korean citizen and that Korean is the language of the Registration Agreement. On August 9, 2012, the Center informed Respondent in English and Korean that it had already made its preliminary decision on the language of the proceeding and that the Center would forward Respondent’s request to the Panel on appointment, where the matter would be considered at the Panel’s discretion. On August 15, 2012, Respondent requested an update on concerning his request for a Korean translation, noting that his Response to the Complaint would soon be due. On August 15, 2012, the Center reiterated its August 9, 2012 communication to Respondent in English and Korean.
In accordance with the Rules, paragraph 5(a), the due date for the Response was August 20, 2012. An individual identifying himself as Respondent Yang Kyung Won filed the Response in Korean with the Center on August 19, 2012. Yang Kyung Won sent or was copied on prior emails from Respondent, so it appears that Yang Kyung Won is either the Korean name of Richard Yaming, or is an authorized representative of Respondent.
The Center appointed Grant L. Kim as the sole panelist in this matter on August 28, 2012. 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 Arcadia Group Brands Limited, trading as Topshop, is an international retail company headquartered in London, United Kingdom that provides clothing apparel and related goods. Complainant operates a website at “www.topshop.com” where it promotes its products under the TOP SHOP trademark. Complainant has submitted evidence of its ownership of several registrations for the TOP SHOP or TOP SHOP trademarks (collectively, “TOP SHOP Marks”) in the Republic of Korea, United Kingdom, and European Union. Complainant has also submitted evidence of its use of the TOP SHOP trademark in connection with clothing advertisements.
Respondent Richard Yaming is the individual identified as the registrant and administrative contact of the <mytopshop.com> Domain Name. The WhoIs records for the Domain Name also refers to DongYang Trademark Worx, LLC, which appears to be the company at which Respondent works and/or under whose name Respondent conducts business. Public WhoIs records indicate that the Domain Name was created on August 6, 2010. On August 31, 2012, the <mytopshop.com> Domain Name resolved to an active website displayed in the English language. The website at the Domain Name currently contains links to third party websites organized under various shopping categories and has a link labeled “Top Shop” on the homepage.
5. Parties’ Contentions
Complainant states that it was established in 1964 and is a well-known international clothing company with retail stores in over 20 countries. Complainant has submitted website statistics showing that over 1.9 million visitors per year visit Complainant’s “www.topshop.com” website. Complainant claims rights in the TOP SHOP and TOPSHOP trademarks. In support of its claim, Complainant offers evidence of numerous trademark registrations around the world, including United Kingdom Trademark Nos. 2527368a, B1522279, 2311217, B1522280, B1204489, 2018231, B1522281, and 2017957; Community Trademark Nos. 67041,1691922, and 3682011; and Korean Trademark Nos. 501627 and 456863. Complainant argues that <mytopshop.com> is confusingly similar to Complainant’s TOP SHOP Marks because the word “my” in <mytopshop.com> is merely generic or descriptive.
Complainant also contends that Respondent has no rights or legitimate interests in the Domain Name because <mytopshop.com> resolves to a parking page with sponsored links. Many of the links direct Internet users to websites operated by Complainant’s competitors or websites related to clothing apparel. Complainant alleges that the presence of these links indicates that Respondent is using the Domain Name for illegitimate commercial gain by intentionally diverting consumers to its and its advertisers’ websites through the use of a confusingly similar domain name.
Finally, Complainant asserts that Respondent has registered and used the Domain Name in bad faith. Complainant states that Respondent has used and registered <mytopshop.com> for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant or a competitor of Complainant. Print-outs submitted by Complainant show that on July 6, 2012, Respondent’s website displayed the following notice in English: “This domain name is for sale at www.VipBroker.com,” “Please click here to inquire,” and “For Sale.” Complainant argues that Respondent has a history of registering domain names confusingly similar to well-known trademarks, citing information about prior registrations, as well as prior UDRP transfer decisions involving Richard Yaming, Yang Kyung Won, and/or Trademark Worx LLC a/k/a Richard Yaming. Complainant submits that there is no plausible explanation for Respondent’s use of the TOP SHOP trademark in the Domain Name, and that the presence of links to clothing-related websites suggests that Respondent is seeking to profit from confused Internet users through revenue earned from click-through referrals. Even if the links are automatically-generated, Complainant claims that Respondent is responsible for the content displayed on the website at the Domain Name because it has failed to exclude search terms associated with Complainant’s TOP SHOP Marks.
Respondent states in his Korean-language Response that he purchased the Domain Name from the original registrant in December 2010 with the intent of creating a domestic shopping mall website featuring electronic products. Respondent states that he is still in the process of establishing the shopping website and therefore has rights or legitimate interests in the Domain Name. Respondent claims that he will be harmed if he is unable to conduct his Internet business as a result of the transfer of the Domain Name to Complainant. Respondent also states that he was unaware of the existence of Complainant when he acquired the Domain Name. He contends that Complainant’s trademarks are not registered in the Republic of Korea, and does not believe the trademarks are well-known. Respondent denies that he purchased <mytopshop.com> for the sole purpose of transferring the registration to Complainant.
6. Discussion and Findings
A. Language of the Proceeding
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement unless the Panel decides otherwise. Therefore, the default language of this proceeding is Korean, as the Registrar has confirmed that the Registration Agreement was in Korean. Upon receiving notice from the Center regarding the default language, Complainant submitted a request for English to be the language of the proceeding. The Center issued a preliminary decision advising the Parties that the Center would accept the Complaint in English and the Response in either Korean or English. The Parties were also advised that the ultimate decision regarding the language of the proceeding would be within the discretion of the Panel. The notice provided by the Center to the Parties was in both English and Korean to accommodate the situations of the Parties. After the Center provided notice of the Complaint to the Parties in English and Korean, Respondent requested that the Annexes to the Complaint be translated in Korean. The Center indicated that it would refer Respondent’s request to the Panel. Respondent subsequently submitted a Response in Korean.
While paragraph 11 of the Rules specifies the language of the Registration Agreement as the default language, it confers discretion on the Panel to use a different language depending on the circumstances. As prior UDRP decisions have noted, the key consideration is to ensure fairness in the selection of language by giving consideration to the parties’ level of comfort with each language, the expenses to be incurred, and possibility of delay in the proceeding to accommodate translations. Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679. The Panel has discretion to adopt a language other than that of the Registration Agreement, taking into account all relevant circumstances of the case. Biotechnology and Biological Sciences Research Council v. Kim Jung Hak, WIPO Case No. D2009-1583.
The Panel has decided to proceed in English in this proceeding, with the important condition that Respondent has been allowed to submit his Response and other communications in Korean, which the Panel has reviewed and taken into account. The Panel notes that Respondent’s “www.mytopshop.com” website is written in English and is thus directed at English-speaking Internet users. It would not be possible for Respondent to operate an English-language website unless Respondent or his staff had the ability to read and understand the website. Moreover, by operating an English-language website, Respondent is holding himself out to the public as having at least some ability to communicate in English. This conclusion is reinforced by a July 17, 2012, print-out of Respondent’s website that Complainant submitted, which included the following English-language notice: “This domain name is for sale at “www.VipBroker.com”,” “Please click here to inquire.” This notice was evidently intended to solicit English-language offers to buy the Domain Name.
Complainant has also submitted copies of English-language correspondence between Complainant and Respondent related to this dispute. While Respondent’s English-language replies are short, they show the ability to communicate in basic English. In view of these English-language communications and the fact that Respondent has chosen to operate an English-language website and to solicit English-language offers to buy the Domain Name, Respondent appears to have sufficient ability to read English, so that he is not unduly prejudiced by the lack of a Korean translation of the Complaint and Annexes thereto.
Under these circumstances, the Panel concludes that it is reasonable to proceed primarily in English and to render this decision in English, which both Parties have the ability to sufficiently understand. This Panel notes that this does not impose any undue prejudice on Respondent, as Respondent has been permitted to submit arguments in Respondent’s preferred language, which the Panel has reviewed.
B. Scope of the Policy
Pursuant to paragraph 4(a) of the Policy, the Domain Name may be cancelled or transferred to Complainant where the three elements below are satisfied. The burden of proof is on Complainant.
(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 with respect to the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Transfer or cancellation of the Domain Name is the sole remedy provided to Complainant under the Policy, as described in paragraph 4(i).
A. Identical or Confusingly Similar
To satisfy the first element under paragraph 4(a) of the Policy, the Panel must find that (1) Complainant has demonstrated its rights in the TOP SHOP trademark; and (2) the Domain Name is identical or confusingly similar to Complainant’s mark.
Complainant has adequately demonstrated its rights in the TOP SHOP trademark by submitting records of its trademark registrations in several jurisdictions. While Respondent disputes that Complainant owns a registered trademark in the Republic of Korea, Complainant has submitted physical documentation of its ownership of two Korean trademark registrations dating back to as early as 1999. The registrations are provided in both Korean and English. Complainant’s trademark registrations in other jurisdictions are not disputed by Respondent. The TOP SHOP Marks are used by Complainant in connection with clothing apparel and related products available at Complainant’s “www.topshop.com” website and in Complainant’s retail stores. Complainant’s ownership and use of registered TOP SHOP Marks satisfy the initial requirement that Complainant has valid rights in the asserted trademark. See, e.g., Micro Electronics, Inc. v. Strateks Corporation, WIPO Case No. D2005-0129 (“the existence of the registered trademarks satisfies the threshold requirement of having rights in the mark”).
Complainant has also established that the Domain Name is confusingly similar to Complainant’s TOP SHOP Marks. Respondent’s Domain Name consists of Complainant’s TOP SHOP trademark preceded by the word “my.” The addition of the “my” prefix does not render the Domain Name significantly different from Complainant’s TOP SHOP Marks. See The Coca-Cola Company v. MyFanta Network, S.L., WIPO Case No. D2011-2063; InfoSpace, Inc. v. Domains Secured, LLC, WIPO Case No. D2011-1529. In fact, the addition of the word “my” increases the likelihood of confusion between <mytopshop.com> and Complainant’s TOP SHOP Marks because Internet users may be led to believe that <mytopshop.com> resolves to an individualized webpage related to Complainant’s “www.topshop.com” website. See Herbalife International of America, Inc. v. myherbalife.com, WIPO Case No. D2002-0101 (noting the use of “my” as a prefix has become a common Internet practice to designate personalized pages at a website). Because the “my” term is insufficient to notify users that <mytopshop.com> is unrelated to Complainant, the Panel finds that the Domain Name is confusingly similar to Complainant’s TOP SHOP Marks.
B. Rights or Legitimate Interests
In order to meet the second element under paragraph 4(a) of the Policy, Complainant must make at least a prima facie showing that Respondent has no rights or legitimate interests in respect of the Domain Name. Once Complainant has made a prima facie case, the burden of production shifts to Respondent to present evidence of its rights or legitimate interests. See, e.g., Gerd Petrik v. Johnny Carpela, WIPO Case No. D2004-1043; see also Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
Complainant states that Respondent has no rights or legitimate interests in the Domain Name. Complainant asserts that before notice of the dispute, Respondent was not using <mytopshop.com> in connection with a bona fide offering of goods or services that would support Respondent’s rights or legitimate interests in the Domain Name. Complainant has provided evidence that the <mytopshop.com> Domain Name resolves to a parking page with sponsored links to various third party websites. The submitted print-out of the website at the Domain Name, dated July 16, 2012, shows that Respondent was actively offering the Domain Name for sale, supporting Complainant’s claim that Respondent is not making a legitimate noncommercial use of the Domain Name.
There is no evidence that Respondent has ever been commonly known by the Domain Name. Based on the foregoing, the Panel finds that Complainant has presented a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.
Respondent asserts in his Response that he has legitimate interests in the Domain name because he intends to operate a domestic shopping mall website that features electronic products. Given that Respondent is based in the Republic of Korea, a “domestic” shopping website would presumably be in the Korean language. However, the current website is in English and does not focus on electronic products. Respondent contends that he is still in the process of creating this new website, but has presented no explanation of why this new website has not been established, more than one and a half years after Respondent acquired the Domain Name in December 2010. Nor has Respondent submitted any evidence of bona fide preparations to establish the new Korean-language shopping mall website for electronic products. Thus, Respondent has not shown that he was using his website for this desired purpose before receiving notice of the dispute, or that Respondent had made “demonstrable preparations” for such use.
While Respondent claims that he did not purchase the Domain Name for the sole purpose of selling it to Complainant, Respondent does not dispute that the website at the Domain Name previously contained a notice that the Domain Name was for sale, as evidenced by a print-out of the website annexed to the Complaint. That notice no longer appears on the website, but that fact does not support Respondent’s position. On the contrary, Respondent’s recent removal of this notice, after receiving notice of this dispute, supports an inference that Respondent is attempting to avoid transfer of the Domain Name by disguising his true purpose. See Bayerische Motoren Werke AG v. Lucjan Niemiec, WIPO Case No. D2003-0240 (finding the respondent’s removal of a “for sale” notice from the respondent’s website after receiving cease-and-desist letters from the complainant to be “inconsistent with a bona fide offering of goods or services”). Accordingly, the Panel concludes that Respondent has not submitted credible evidence that Respondent was making any use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services before the commencement of this proceeding.
Respondent also has not presented evidence that the website at <mytopshop.com> is a legitimate noncommercial or fair use of the Domain Name. The offering of the Domain Name for sale constitutes a commercial use. Even assuming that Respondent no longer desires to sell the Domain Name, having removed the “for sale” notice, the website currently contains what appear to be sponsored links that likely provide Respondent with click-through revenues from website visitors. The nature of these links indicates that Respondent is specifically targeting consumers who end up on Respondent’s website because they are looking for clothing apparel similar to that sold by Complainant under the TOP SHOP Mark. For example, the first link under “Related Links” on Respondent’s website is labeled “Top Shop” and leads to another page containing links that are specifically directed to clothing apparel. The use of <mytopshop.com> to link to Complainant’s competitors is a deceptive “bait-and-switch” advertising tactic and therefore does not constitute noncommercial or nominative fair use. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Finally, there is no indication that Respondent has ever been commonly known or identified by “My Top Shop”. Respondent has presented no evidence of any trademark rights or other legitimate interests in the “My Top Shop” name. The Panel concludes that Complainant has met its burden under paragraph 4(a)(ii) of the Policy, and Respondent has failed to establish rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
To establish the third element, Complainant must demonstrate that Respondent has registered and is using the Domain Name in bad faith. Paragraph 4(b) of the Policy sets forth a list of circumstances that may show bad faith, including registrations made (i) primarily for the purpose of selling, renting, or transferring the domain name to the complainant (who owns the relevant trademark or service mark) or a complainant’s competitor; (ii) to prevent the trademark or service mark owner from reflecting the mark in a corresponding domain name, where a respondent has engaged in a pattern of such conduct; (iii) primarily for disrupting a competitor’s business; or (iv) to attract Internet users intentionally and for commercial gain, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location, or an offered product or service. This list is non-exclusive. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“[P]aragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith”) (emphasis in the original).
As noted above, the website at the Domain Name provides various sponsored links to other websites. While some of these links do not relate to clothing, the “Top Shop” category leads specifically to links to competing clothing websites. These links appears to be targeted to consumers searching for Complainant’s Top Shop brand on Respondent’s website and undermine Respondent’s claim that Respondent had never heard of Complainant’s TOP SHOP Marks before receiving notice of this proceeding. This attempt to generate click-through revenues from consumers looking for Complainant’s “www.topshop.com” website but diverted to Respondent’s “www.mytopshop.com” website supports the inference that Respondent has sought to profit from the goodwill of Complainant’s TOP SHOP Marks. See Zedge Ltd. v. Moniker Privacy Services/Aaron Wilson, WIPO Case No. D2006-1585 (use of parking websites to generate click-through fees from links to competing products qualifies as bad faith, because it intentionally capitalizes on the goodwill of third party trademarks).
Other evidence further supports the inference that Respondent registered and has used the Domain Name in bad faith. Respondent states that he was unaware of the TOP SHOP mark or of Complainant when he purchased the Domain Name, because Complainant did not register that mark in the Republic of Korea. Complainant, however, has submitted unrebutted, Korean-language evidence that it registered the TOP SHOP mark in the Republic of Korea more than a decade before Respondent acquired the Domain Name. Complainant has also submitted evidence that Respondent is a sophisticated Internet user who appears to have registered thousands of domain names. Given Respondent’s extensive experience with domain names, it seems highly unlikely that Respondent acquired the Domain Name without conducting an Internet and/or trademark search that would have resulted in discovering the existence of Complainant’s TOP SHOP mark and website. This conclusion is supported by the fact that the “Top Shop” link on Respondent’s website targets purchasers of clothing, which is the same type of goods that Complainant sells.
Complainant has also submitted evidence that Respondent has previously registered domain names that are confusing similar to well-known trademarks. This evidence includes a WhoIs record for <iphone-ipod.com>, a domain name registered by Richard Yaming using the same email address as that listed in the <mytopshop.com> WhoIs records. It also includes copies of the following three UDRP decisions where Respondent Richard Yaming or related persons or entities registered domain names that are confusingly similar to well-known trademarks: Samsung Electronics Co., Ltd. v. Richard Yaming, WIPO Case No. D2011-1097 (Richard Yaming, <samsungad.com>); Google Inc. v. Trademark Worx LLC a/k/a Richard Yaming, NAF Claim No. 1370035 (Trademark Worx LLC a/k/a Richard Yaming, <googlebrowser.com>); and LEGO Juris A/S v. Yang Kyung Won, WIPO Case No. D2011-1124 (Yang Kyung Won, <legoonline.com>).1 In each of these UDRP proceedings, the panel found against the respondent and transferred the domain name to the complainant. While these prior registrations and transfers do not prove bad faith by themselves, they support an inference of bad faith when combined by the other evidence discussed above.
Respondent argues that it would not be reasonable for Complainant to have exclusive, worldwide rights to any domain name that is similar to the TOP SHOP mark. The Panel agrees that there could be situations were another party was making a bona fide, legitimate use of a similar domain name under circumstances where a transfer of the domain name would not be appropriate. But this is not such a case. The evidence discussed above indicates that Respondent registered and used the Domain Name in bad faith to generate revenues by diverting consumers looking for Top Shop clothing apparel. The evidence also indicates that Respondent has no rights or legitimate interests in the Domain Name, and that the Domain Name is confusingly similar to Complainant’s TOP SHOP Marks. Accordingly, the requirements of the Policy for transfer of the Domain Name are met.
For the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <mytopshop.com> be transferred to Complainant.
Grant L. Kim
Dated: September 11, 2012
1 As noted above, Yang Kyung Won appears to be the Korean name of Richard Yaming or an authorized representative, since Yang Kyung Won submitted Respondent’s Response to the Complaint, identifying himself as Respondent.