World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

J. Choo Limited v. Zhuangsu Huguo

Case No. D2013-0222

1. The Parties

Complainant is J. Choo Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by A. A. Thornton & Co., London, United Kingdom of Great Britain and Northern Ireland.

Respondent is Zhuangsu Huguo of Nanyuan, Wodehaidea, China.

2. The Domain Name and Registrar

The disputed domain name <jimmychoosingapore.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2013. On January 31, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2013, 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 26, 2013.

The Center appointed Carol Anne Been as the sole panelist in this matter on March 6, 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 JIMMY CHOO brand is a high fashion brand with a significant reputation for luxury footwear. Complainant alleges that it has traded under the JIMMY CHOO brand since 2001 and spends considerable amounts of time and money promoting the brand.

Complainant provided several trademark registrations for its JIMMY CHOO mark, including registrations in Singapore, China, and the European Union. Each of these registrations was issued prior to 2012.

Complainant also provided WhoIs records for several domain names that it owns, including <jimmychooshoes.com>, <jimmychooshoes.net>, <jimmychooshoes.org> and <jimmychooonline.co.uk>. These domain names direct traffic to Complainant’s website at “www.jimmychoo.com”. Each of these domain names was issued prior to 2012.

Complainant provided evidence that as of June 2011 it had over 120 branded JIMMY CHOO stores across the world, including 3 locations in Singapore and 2 locations in China. Complainant alleges that its website attracts significantly large volumes of traffic from countries all over the world, including Singapore and China. According to Google Analytics evidence provided by Complainant, from 2006 to 2012, among all countries of the world, China ranked 12th in Internet traffic to Complainant’s website with over 350,000 visits, and Singapore ranked 28th in Internet traffic to Complainant’s website with nearly 150,000 visits.

The disputed domain name, <jimmychoosingapore.com>, was issued to Respondent on May 18, 2012. The website at the disputed domain name offers high fashion shoes for sale, primarily under the JIMMY CHOO brand, and also under the CHRISTIAN LOUBOUTIN brand.

5. Parties’ Contentions

A. Complainant

Complainant alleges that it owns rights in the mark JIMMY CHOO, which is known across the world, and registrations of its mark in Singapore (referenced in the disputed domain name) and China (where Respondent is domiciled). Complainant alleges that the disputed domain name is confusingly similar to Complainant’s rights. Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant owns trademark registrations for the mark JIMMY CHOO in Singapore, China and the European Union, and uses the mark widely. Complainant has established that it owns rights in the mark JIMMY CHOO.

The disputed domain name consists of Complainant’s mark, followed by the geographically descriptive term, “Singapore”. The addition of a geographically descriptive term to the identical use of Complainant’s mark does not avoid the confusing similarity of the disputed domain name with Complainant’s trademark. See, e.g., Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768 (<playboyturkey.com>).

The Panel finds that the disputed domain name is identical or confusingly similar to the JIMMY CHOO mark in which Complainant has rights, under paragraphs 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. The domain name does not reflect Respondent’s name. Respondent does not appear to be making a legitimate noncommercial or fair use of the disputed domain name. Respondent is using the disputed domain name for an ecommerce site selling high fashion shoes primarily under the brand JIMMY CHOO. Complainant further alleges that the site at the disputed domain name uses style names for the shoes it offers which are the same as style names for shoes sold by Complainant on its “www.jimmychoo.com” site. Since Complainant believes that Respondent is an individual, and Complainant does not authorize individuals to distribute its goods, Complainant believes Respondent sells counterfeit products through the website at the disputed domain name.

Respondent did not respond to these allegations and did not provide any evidence of rights or legitimate interests. There is nothing in the record to suggest that Respondent has any rights or legitimate interests in the disputed domain name.

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name, under paragraphs 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant’s JIMMY CHOO mark is registered both in Singapore (referenced in the disputed domain name) and in China (where Respondent is domiciled). Complainant’s website receives a significant amount of traffic from these countries. Respondent’s website at the disputed domain name sells high fashion shoes that appear very similar to Complainant’s shoes, and further uses style names for shoes that are the same as those used by Complainant on its website. Thus, it is highly likely that Respondent was aware of Complainant’s rights in the JIMMY CHOO mark before registering the disputed domain name.

Complainant alleges that Respondent uses the disputed domain name to divert consumers away from Complainant’s website to the site at the disputed domain name, where Respondent sells counterfeit products under the JIMMY CHOO mark and style names used by Complainant. Complainant alleges that Respondent seeks to create the impression that Respondent’s website at the disputed domain name is connected to, affiliated with or endorsed by Complainant. The Panel further notes that the website at the disputed domain name also offers for sale shoes under the CHRISTIAN LOUBOUTIN brand.

Respondent did not respond to the Complainant’s allegations and did not provide any evidence to counter the allegations of bad faith. There is nothing in the record to suggest registration or use of the disputed domain name by Respondent in good faith.

The Panel finds that Respondent registered and uses the disputed domain name in bad faith, under paragraphs 4(a)(iii) and 4(b) of the Policy.

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 name <jimmychoosingapore.com> be transferred to Complainant.

Carol Anne Been
Sole Panelist
Date: March 20, 2013

 

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