WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Orlebar Brown Limited v. Kailong Wen
Case No. D2012-2435
1. The Parties
The Complainant is Orlebar Brown Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Baron Warren Redfern, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Kailong Wen of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <orlebarbrownshop.com> (the “Disputed Domain Name”) is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2012. On December 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 14, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 17, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On December 19, 2012, the Complainant confirmed its request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.
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 January 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2013.
The Center appointed Kar Liang Soh as the sole panelist in this matter on January 30, 2013. 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 was incorporated in 2005 and first adopted the use of the trade mark ORLEBAR BROWN in 2007. Goods under the trade mark, namely clothing, towels, belts and bags, are sold through Selfridges and Harrods in the United Kingdom and retailers in major cities (e.g., New York, Paris, Dubai, Sydney, Tokyo). These are regularly featured in fashion magazines and other publications having international circulation.
The Complainant has registered the trade mark ORLEBAR BROWN in various countries. Some of these registrations are:
October 12, 2005
WIPO International Registration
November 1, 2006
August 19, 2008
The Complainant is the registrant of the domain name <orlebarbrown.com> and operates an online retail website at “www.orlebarbrown.com’’. The website prominently features the trade mark ORLEBAR BROWN as follows with an upside down “V” in place of the letter “A” (the “Red Logo”):
The Disputed Domain Name was registered on September 21, 2012. The evidence shows that as of December 12, 2012, the Disputed Domain Name resolved to a website which offered online retail facilities and prominently featured the Red Logo. The website’s user registration link redirected to another website at “www.ehclothingshop.com’’ which purported to be an online retailing website for the clothing brand Ed Hardy. The website contained images which were also found on the Complainant’s website.
Other than information derived from the WhoIs details of the Disputed Domain Name and the fact that the Respondent was the respondent in 2 earlier UDRP proceedings (J. Choo Limited v. Kailong Wen, WIPO Case No. D2012-1770; Alice + Olivia, LLC v. Kailong Wen, WIPO Case No. D2012-1022), not much more is known about the Respondent.
5. Parties’ Contentions
The Complainant contends that:
a) The Disputed Domain Name is confusingly similar to the Complainant’s trade mark ORLEBAR BROWN. The Disputed Domain Name incorporates the Complainant’s trade mark in its entirety subject to the addition of the generic word “shop” which does not provide any distinguishing feature from the Complainant’s trade mark;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant has never had business dealings with the Respondent and has never authorized use of its trade mark by the Respondent, or to register any domain names incorporating its trade mark. The Respondent has never been commonly known by the Disputed Domain Name. The Respondent’s website is using the Disputed Domain Name with an intention of commercial gain; and
c) The Disputed Domain Name was registered and is being used in bad faith. The Respondent has a history of registering domain names in bad faith (see earlier UDRP proceedings J. Choo Limited v. Kailong Wen, supra; Alice + Olivia, LLC v. Kailong Wen, supra.). The Respondent registered the Disputed Domain Name to create an association in the minds of consumers between the Respondent’s website and the Complainant’s trade mark. The Respondent has used the Complainant’s own images in creating the Respondent’s website. By creating a likelihood of confusion with the Complainant’s mark or suggesting an endorsement by the Complainant, the registration and use of the Disputed Domain Name has been for commercial gain to the detriment of the Complainant’s business.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of Proceeding
The Complainant has requested that English be adopted as the language of the proceedings. The language of the proceedings should be Chinese by default as the Registration Agreement is in Chinese. However, the Panel has the discretion to determine otherwise.
In the present instance, having taken into account the circumstances of the case, the Panel determines that the language of the proceedings shall be English. In reaching this decision, the Panel found the following factors to be pertinent:
a) The website resolved from the Disputed Domain Name is exclusively in the English language;
b) The Complainant has informed that it will suffer substantial inconvenience and cost should it be required to translate documents into Chinese. The Panel infers that Chinese is not the Complainant’s the natural language of communication and the Complainant is unable to communicate in Chinese without external assistance;
c) The Respondent did not file a response in this proceeding and has not protested against the Complainant’s request for English to be the language of the proceeding;
d) Further, the Respondent was a part to earlier UDRP proceedings (J. Choo Limited v. Kailong Wen, supra; Alice + Olivia, LLC v. Kailong Wen, supra). English was adopted as the language of those proceedings in place of Chinese as the default language.
e) Requiring the Complainant to translate the Complaint into Chinese would unnecessarily delay the proceeding.
To succeed in this proceeding, the Complainant must establish that all 3 limbs of paragraph 4(a) of the Policy exist on the facts.
A. Identical or Confusingly Similar
The 1st limb of paragraph 4(a) of the Policy states:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”.
The Complainant’s trade mark ORLEBAR BROWN is a registered in a number of jurisdictions. There is no doubt that the Complainant has rights in the same. The Disputed Domain Name incorporates the trade mark ORLEBAR BROWN in its entirety. The only difference between the Disputed Domain Name and the trade mark ORLEBAR BROWN is the addition of the suffix “shop”. The Panel agrees with the Complainant that the word “shop” is generic and simply describes a purpose of the Disputed Domain Name for resolving to a website which offers goods online. The addition of the word “shop” to the trade mark ORLEBAR BROWN does not result in a combination which is distinguishable from the trade mark. The Panel holds that the Disputed Domain Name is confusingly similar to the Complainant’s trade mark ORLEBAR BROWN and the 1st limb of paragraph 4(a) is established.
B. Rights or Legitimate Interests
The 2nd limb of paragraph 4(a) of the Policy states:
“(ii) you have no rights or legitimate interests in respect of the domain name”.
The Complainant has confirmed that it has not authorized the Respondent to use the trade mark ORLEBAR BROWN. There is no evidence before the Panel to suggest that the Respondent is otherwise imbued with rights to the mark ORLEBAR BROWN and/or the Disputed Domain Name. There is also no evidence before the Panel to indicate that the Respondent is commonly known by the same. On the other hand, the manner in which the website resolved from the Disputed Domain Name depicted the trade mark ORLEBAR BROWN leaves little doubt that there is a commercial intention in its use.
Having considered the circumstances, the Panel is satisfied that a prima facie case has been established by the Complainant that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. In the absence of a Response or any indication to the contrary, the prima facie case stands.
C. Registered and Used in Bad Faith
The 3rd limb of paragraph 4(a) of the Policy states:
“(iii) your domain name has been registered and is being used in bad faith”.
Paragraph 4(b)(iv) of the Policy goes further to provide an example of bad faith registration and use as follows:
“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.”
The offering of products for sale online at the website resolved from the Disputed Domain Name indicates that the Respondent has an intention for commercial gain.
The trade mark ORLEBAR BROWN comprises a combination of words which the Panel agrees is unusual and distinctive and pre-dates the registration of the Disputed Domain Name by several years. It is inconceivable that the Respondent incorporated the words “Orlebar Brown” in the Disputed Domain Name by pure coincidence. In using the same stylized Red Logo of the Complainant on the website resolved from the Disputed Domain Name, the Respondent must have been aware of the trade mark ORLEBAR BROWN.
As such, the only reasonable conclusion that may be deduced from the evidence is that the Respondent intentionally attempted to attract for commercial gain Internet users to the website resolved from the Dispute Domain Name. The use of the Complainant’s trade mark ORLEBAR BROWN on the website and its incorporation in the Disputed Domain Name was seemingly premeditated to create a likelihood of confusion with the Complainants’ trade mark as to the source, sponsorship, affiliation, or endorsement of the website or of products on the website.
In the face of such serious allegations, including the allegation that the images used on the website resolved from the Disputed Domain Name were the Complainant’s own images, the Respondent has chosen to remain silent. Moreover, the Respondent has a historical record of bad faith in 2 prior UDRP cases. Even though each case has to be decided on its own facts, the failure of the Respondent to respond and clear his/her name in the present case leads the Panel to draw an adverse inference against the Respondent.
Accordingly, the matters outlined above justify the Panel in concluding that the Respondent registered and is using the Disputed Domain Name in bad faith.
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 <orlebarbrownshop.com>, be transferred to the Complainant
Kar Liang Soh
Date: February 25, 2013