WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
C & J Clark International Limited v. Yue Tianhai, Chen Kaiming
Case No. D2012-2500
1. The Parties
The Complainant is C & J Clark International Limited of Somerset, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stevens Hewlett & Perkins, United Kingdom.
The Respondent is Yue Tianhai, Chen Kaiming of Xiamen, Fujian, China.
2. The Domain Names and Registrars
The disputed domain name <clarkshoesmall.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. The disputed domain name <clarkstore.net> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn. Both disputed domain names shall be referred to as the “Domain Names”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2012. On December 19, 2012, the Center transmitted by email to Chengdu West Dimension Digital Technology Co., Ltd. and Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the “Registrars”) a request for registrar verification in connection with the Domain Names. On December 20, 2012, the Registrars transmitted by email respectively to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. On December 21, 2012, 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 requested 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 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 December 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2013.
The Center appointed Karen Fong as the sole panelist in this matter on January 24, 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 is an English footwear company that can trace its origins back to the year 1825 in the Somerset village of Street in the United Kingdom when the first sheepskin slippers were devised by James and Cyrus Clark. The Complainant’s footwear is sold under the brand CLARKS.
The Complainant’s long-established global business has been very successful. It is estimated that the Complainant sells 55 million pairs of shoes in 35 countries every year. It is estimated that by 2015 the Complainant’s business will have almost doubled in size. In the years 2011-2012 the Complainant sales turnover figures were 601 million pounds in the United Kingdom, 536 million pounds in the United States of America, 162 million pounds in the European Union and 99 million pounds throughout the rest of the world. All of these sales accounted for products sold bearing the CLARKS mark. The Complainant’s sales are generated by an international network of retail stores and third party distributors, in addition to significant sales via the Complainant’s retail platform at “www.clarks.com”.
The Complainant has registered trade marks for CLARKS all over the world including the United Kingdom and China. These trade marks were registered long before the date of registration of the Domain Names.
The Domain Names <clarkstore.net> and <clarkshoesmall.com> were registered respectively on September 25, 2012 and December 18, 2012 and the Respondent was using the Domain Names to resolve to the website connected to <clarkshoesmall.com> (“the Website”) which purported to sell footwear under the CLARKS trade mark. The Website also used to bear the Complainant’s stylized CLARKS logo on its web pages. At the time of preparing the decision, the Website has been disabled. The Domain Name <clarkstore.net> now resolves to a website connected to the Domain Name <clarksshoesoutletsale.com> which is also a website purporting to sell Clarks shoes and bears the Complainant’s stylized CLARKS logo on its web pages. A WhoIs search revealed that this domain name was registered to baikaiming on January 16, 2013, after the Complaint was filed, and the email contact […]@163.com is the same as the email contact for the Domain Names.
5. Parties’ Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the CLARKS trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Names and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names, all of which it believes are related and under management and control of a single owner/registrant.
The basis of the Complainant’s belief that the registrants are related and under management and control of a single owner/registrant are as follows:
a. The Domain Name <clarkstore.net> had been set up to resolve to the website connected to <clarkshoesmall.com>. This strongly suggests that the registrants are either (1) the same individual, having provided one or more false registrant details when registering the Domain Names, or, (2) two individuals having a close business association with one another and for the same economic gain.
b. The contact email address for the two registrants is identical in each case. It must therefore be assumed that the Respondent has access to and control over the same accounts.
c. The Domain Names correspond closely with one another; both incorporate the Complainant’s trade mark CLARKS, whilst the words “store”, “shoes” and “mall” were descriptive of the content of the Website which is a website set up for the purpose of selling goods purporting to bear the Complainant’s trade marks.
d. The two registrants are both listed as Chinese individuals and the motives behind the registering of the Domain Names are common and affect the Complainant in the same manner. .
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
B. Preliminary Procedural Issue
(i) Consolidation of Proceedings
Paragraph 5(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. 2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple respondent’s cases and extracted the following general principles:
1. Consolidation of multiples registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.
2. The administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
In the present case, each of the Domain Names incorporates the Complainant’s well-known CLARKS mark in its entirety. The Complainant’s submissions and supporting evidence summarized in paragraph 5A above demonstrates that prima facie the Domain Names are subject to common control. The Respondent had the opportunity but did not respond substantively to the Complaint.
Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to the common ownership or control of either Yue Tianhai or Chen Kaiming. The Panel finds such common control to justify consolidation of the Complainant’s claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.
(ii) Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from both the Registrars, the language of the registration agreement for the Domain Names is Chinese.
The Complainant submits in section IV of the Complaint, that the language of the proceeding should be English. The Complainant contends as follows:
1. The Complainant is an English company and its representatives do not speak Chinese.
2. The approximate cost for a translation of the complaint from English to Chinese has been estimated at approximately 500 pounds + VAT (i.e. 600 pounds - approximately 900 Swiss Francs).
3. The Respondent’s website at ‘’www.clarksshoesmall.com’’ is in the English language. As it is conducting its business in the English language, it must be familiar with it. Also, the Domain Names which include the words “store”, “shoes” and “mall” are in the English language, which is further evidence that the Respondent is familiar with the language.
4. Other panelists in complaints filed by the Complainant in similar cases have accepted English as the language of the proceeding.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding and is satisfied that the Respondent appears to be familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Further, the Respondent did not respond to the Complaint or the language of the proceeding by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel accepts that the Complainant has trade mark rights to the name CLARKS through use and registration that pre dates the Domain Names.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Complainant’s registered trade mark CLARKS is the dominant portion of the Domain Names with the addition of the descriptive terms, “(s)tore”, “(s)hoes” and “mall” and the generic “.net” and “.com” domain suffixes. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic domain suffixes. Further, the addition of the descriptive terms, “(s)tore”, “(s)hoes” and “mall” do not negate the confusing similarity encouraged by the Respondent’ s complete integration of the CLARKS trade mark in the Domain Names. E.g. N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org – WIPO Case No. D2011-0260; Oakley, Inc. v. Wu bingjie aka bingjie we/ Whois Privacy Protection Service – WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207.
The Panel finds that the Domain Names are confusingly similar to the CLARKS trade mark of the Complainant, and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled.
D. Rights or Legitimate Interests
The Complainant alleges that it has not licensed, consented or otherwise authorized the Respondent to use its CLARKS trade mark in the Domain Names or any other manner. On the Website, the Respondent was offering Clarks shoes. The consensus view under paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) says this:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to ‘corner the market’ in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark”.
In this case, there is nothing on the Website explaining the relationship between the Complainant and the Respondent. It seems to this Panel that the content of the Website taken together with the Domain Names are intended to mislead Internet users that there is a connection between the Complainant and the Respondent. The Panel finds the Oki Data principles for the rights or legitimate interests are not satisfied in this case. The Panel also takes the view as stated in the WIPO Overview 2.0 “[…] that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant's trademark”.
This is such a case.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
E. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s CLARKS trade marks when it registered the Domain Names. The fact that the Domain Names incorporate the Complainant’s well-known trade mark in its entirety and the Respondent is purporting to sell Clarks products without authorization from the Complainant is in the Panel’s view evidence that the registration of the Domain Names was in bad faith.
The Panel also concludes that the actual use of the Domain Names was in bad faith. The use of the Complainant’s trade mark as the dominant part of the Domain Names is intended to capture Internet traffic from Internet users who are looking for the Complainant’s products and services connected with such products. The Respondent was using the Domain Names to resolve to the Website which purported to sell footwear under the CLARKS trade mark. The Website also used to bear the Complainant’s stylized CLARKS logo on its web pages. At the time of preparing the decision, the website connected to <clarkshoesmall.com> has been disabled. The Domain Name <clarkstore.net> now resolves to a website connected to the domain name <clarksshoesoutletsale.com> which is also a website purporting to sell Clarks shoes and bearing the Complainant’s stylized CLARKS logo on its web pages. This domain name also has in its WhoIs details, the same email as the email contact for the Domain Names.
The Domain Names and the content of the websites which were connected to the Domain Names and the content of the website now connected to the Domain Name <clarkstore.net> are calculated to confuse Internet users that the Respondent is licensed or somehow connected to the Complainant goods when this is not the case. This shows a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s websites and the products sold on them were authorised or endorsed by the Complainant. The fact that the website connected to the Domain Name <clarkshoesmall.com> has been disabled does not change the Panel’s findings.
The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Names are 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 Domain Names <clarkshoesmall.com> and <clarkstore.net> be transferred to the Complainant.
Date: February 15, 2013