WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Christopher Kane Limited v. Zhao Zhong Xian

Case No. D2017-1054

1. The Parties

The Complainant is Christopher Kane Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Studio Barbero, Italy.

The Respondent is Zhao Zhong Xian of Shenyang, Liaoning, China.

2. The Domain Names and Registrar

The disputed domain names <christopher-kane.club>, <christopherkane.club>, <christopherkane.site> and <christopher-kane.website> are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2017. On May 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 31, 2017, 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 June 8, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On June 8, 2017, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 and 4, the Center formally notified the Respondent in both Chinese and English of the Complaint, and the proceedings commenced on June 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2017.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on July 19, 2017. 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.

Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the disputed domain names are registered by the same domain name holder. Paragraph 10(e) of the Rules provides that the Panel shall decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and the Rules. The details of the registrants of the disputed domain names differ slightly. The Complainant requests that the Panel consolidate the multiple disputes in one UDRP proceeding. The Registrar confirmed that the Respondent is the registrant of the disputed domain names. The WhoIs information for the disputed domain names includes, although not completely identical, nonetheless overlapping contact information, including identical email addresses. As noted below, the Respondent confirmed it is the owner of all four of the disputed domain names in an email communication previous to this UDRP proceeding. It is apparent that the disputed domain names are registered by the same domain name holder. Accordingly, consolidation of the multiple domain name disputes asserted in the Complaint is appropriate in this instance.

4. Factual Background

The Complainant, founded by fashion designer Christopher Kane in 2006, operates as a luxury fashion designer label. Christopher Kane has a reputation for being a gifted designer. He has been the recipient of many industry awards, including four British Fashion Awards and Designer of the Year in 2013, and the Vogue Fashion Fund. Christopher Kane’s collections are distributed in over 30 countries across more than 150 wholesale accounts. The Complainant has expanded from producing bi-annual spring-summer and autumn-winter womenswear collections into resort, menswear, and pre-fall collections as well as accessories, handbags and footwear. In 2014, Christopher Kane launched a leather and precious skins accessories line as well as his first color cosmetics collection, sold at department and specialty store counters. In 2015, the Complainant opened its first flagship store in London’s Mayfair, where other luxury designers’ stores are located.

The Christopher Kane branded products can be purchased online on the websites “www.mrporter.com”, “www.net-a-porter.com”, and “www.farfetch.com”, which ship internationally, including to China. The Complainant has retailers in China, namely Joyce and 10 Corso Como, located in Beijing and Shanghai. The Complainant’s trademark has been widely publicized globally and has been subject of articles published in online editions of the international fashion magazines Vogue, GQ, WWD, Marie Claire, Elle and Grazia. The Complainant also has an active Internet presence of its own. It owns a number of domain names incorporating its CHRISTOPHER KANE trademark, including <christopherkane.com>, which resolves to the Complainant’s website. The Complainant also operates Instagram, Facebook, Twitter and Google+ social networking accounts.

The Complainant is the owner of several trademark registrations and applications for the CHRISTOPHER KANE mark around the world, including United Kingdom Trademark No. UK00002620066 (registered on August 17, 2012), International Trademark No. 1145810 (registered on June 6, 2012), which is designated for protection in China, the European Union, Australia, Japan, the Republic of Korea, Mexico, Singapore, the United States of America, and the Russian Federation, among other jurisdictions. The Complainant also owns China trademark Registration No. 6503362 for CHRISTOPHER KANE (registered on July 14, 2010).

The disputed domain name <christopherkane.site> was registered on November 5, 2016, the disputed domain name <christopherkane.club> was registered on November 11, 2016, and the disputed domain names <christopher-kane.club> and <christopher-kane.website> were registered on December 7, 2016. The disputed domain names have not been pointed to any active websites.

The Complainant engaged an agent who contacted the registered owner of the disputed domain names <christopherkane.site> and <christopherkane.club> via email on December 1, 2016, to ascertain the registrant’s intentions in respect to the domain names. The Respondent replied, requesting 1,200 USD for the transfer of these two disputed domain names. Thereafter, the Complainant became aware of the disputed domain names <christopher-kane.website> and <christopher-kane.club>. The Complainant’s agent again contacted the Respondent by email, requesting that the Respondent confirm the Respondent’s ownership of these domain names and to indicate an amount for the transfer of all of the disputed domain names. The Respondent confirmed ownership of the four disputed domain names and requested 1,600 USD in exchange for their transfer. The Complainant’s agent informed the Respondent that it would report the Respondent’s request to the Complainant. Before the Complainant’s agent responded to the Respondent’s offer, the Respondent told the agent that the Respondent was willing to transfer all four disputed domain names in exchange for 1,200 USD.

In one of the email communications with the Complainant’s agent, the Respondent stated: “Sorry, I do not understand English. [H]ere is Google’s translation.” However, some of the subsequent communications from the Respondent were written in English.

On April 20, 2017, the Complainant’s agent sent a cease and desist letter to the Respondent, demanding transfer of the disputed domain names free of charge. The Respondent replied in Chinese and indicated it would transfer the disputed domain names for 1,200 USD. The Complainant stated it would reimburse the Respondent only for out-of-pocket costs, quantified at 200 USD. The Respondent did not accept this offer and instead requested 1,000 USD for all of the disputed domain names.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant is the owner of the CHRISTOPHER KANE trademark. The disputed domain names entirely reproduce the Complainant’s trademark and add only the Top-Level domains (“TLDs”) “.site”, “.club”, and “.website”, and, in respect to the disputed domain names <christopher-kane.club> and <christopher-kane.website>, a hyphen. The TLDs may be disregarded for the purpose of assessing identity or confusing similarity. Similarly, hyphens are not sufficient to negate confusingly similarity between the disputed domain names and the Complainant’s trademark.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not a licensee of the Complainant or otherwise authorized by the Complainant to use the CHRISTOPHER KANE trademark. Registration of the disputed domain names alone does not establish rights or legitimate interests in the disputed domain names. The Respondent is not commonly known by the disputed domain names nor is “Christopher Kane” the family name of the Respondent. The Respondent has not provided any evidence of use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services before notice of the dispute.

Finally, the Complainant contends that the Respondent registered and is using the disputed domain names in bad faith. The Complainant’s rights in the CHRISTOPHER KANE trademark predate the registration of the disputed domain names. CHRISTOPHER KANE is a well-known trademark in the fashion industry and has been widely publicized globally and constantly featured throughout the Internet. The CHRISTOPHER KANE trademark is sufficiently distinctive and well-known that, in the absence of any other evidence to the contrary, it is fair to presume that the Respondent registered the disputed domain names with prior knowledge of the Complainant’s rights in the trademark. Where the Respondent knew, or should have known, of the existence of the Complainant and its trademark, registration of the disputed domain names was in bad faith.

The Respondent’s conduct also indicates use in bad faith. The Respondent’s email correspondence with the Complainant’s agent requesting amounts well in excess of the Respondent’s out-of-pocket costs related to the disputed domain names demonstrates that the Respondent intended to derive illegitimate profits from the sale of the disputed domain names. Additionally, by registering several domain names incorporating the Complainant’s trademark, the Respondent is preventing the Complainant from reflecting its well-known trademark in the corresponding domain names and the Respondent has engaged in a pattern of such conduct. The registration of four domain names incorporating the CHRISTOPHER KANE trademark within a short period of time, between November and December, 2016, indicates a pattern of abusive conduct. The Respondent also has registered many other domain names corresponding to well-known trademarks, including other fashion-industry marks, such as <giorgioarmani.website>, <tommyhilfiger.club>, and <laperla.site>. The Respondent has been the subject of a number of prior UDRP proceedings, concluding with the transfer of the subject domain names. This further supports a finding that the Respondent has engaged in a pattern of abusive registrations.

The Respondent’s passive holding of the disputed domain names does not prevent a finding of bad faith use under the totality of the present circumstances. Cumulative circumstances evidencing bad faith in this case include the fact that the distinctiveness and reputation of the CHRISTOPHER KANE trademark makes it implausible that the Respondent could put the disputed domain name to any good faith use, the fact that the Respondent has been the subjected of numerous adverse UDRP decisions, and the fact that the Respondent has attempted to profit from the sale of the disputed domain names to the Complainant.

The Complainant requests that the disputed domain names be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The Panel determines that the language of the proceeding should be English. Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. The language of the Registration Agreement is Chinese. However, the Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant requested the proceeding be in English. The Center formally notified the Respondent of the Complaint in both Chinese and English, giving the Respondent opportunity to comment on the language of the proceeding. The Respondent did not comment or request that the language of the proceeding be Chinese. Additionally, the Respondent’s conduct suggests that the Respondent understands English. The Respondent has been involved in prior domain name disputes with decisions issued in English. See, e.g., Arla Foods Amba v. Zhao Zhong Xian, WIPO Case No. D2017-0401; Intesa Sanpaolo S.p.A. v. Zhao Zhong Xian, WIPO Case No. D2016-2644; Association des Centres Distributeurs E. Leclerc – A.C.D. Lec v. Zhao Zhong Xian, WIPO Case No. D2016-2006. The disputed domain names contain English words and the TLDs are also English terms. Moreover, despite the Respondent’s claim that the Respondent does not understand English (which itself was written in English), the Respondent continued to correspond with the Complainant’s agent in English. Substantial additional expense and delay likely would be incurred if the Complaint must be translated into Chinese.

In light of these circumstances, it is appropriate for the Panel to exercise its discretion and allow the proceeding to be conducted in English.

6.2. Substantive Issues

The Policy provides for transfer or cancellation of the disputed domain names if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:

(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant is the owner of the CHRISTOPHER KANE trademark and owns many trademark registrations for the marks. The Panel accepts that the Complainant’s trademark is well-known.

The disputed domain names are identical or confusingly similar to the Complainant’s trademark. Each reproduces the CHRISTOPHER KANE mark in its entirety. The disputed domain names <christopherkane.club> and <christopherkane.site> comprise the Complainant’s trademark and a TLD. The TLDs “.club” and “.site” in the disputed domain names, being technical components, have no legal significance in the analysis. See Belo Corp. v. George Latimer, WCM, Inc., WIPO Case No. D2002-0329. Accordingly, the disputed domain names <christopherkane.club> and <christopherkane.site> are identical to the Complainant’s CHRISTOPHER KANE trademark.

The disputed domain names <christopher-kane.club> and <christopher-kane.website> comprise the Complainant’s trademark, with a hyphen separating the terms “christopher” and “kane”, and TLDs. Again, the TLDs have no legal significance in confusing similarity analysis. The addition of a hyphen to the Complainant’s trademark in these disputed domain names does not distinguish them from the CHRISTOPHER KANE trademark. Punctuation is irrelevant in the confusing similarity analysis, especially when the disputed domain names reproduce the Complainant’s mark in its entirety. See, e.g., Yahoo! Inc. v. wangwe gaohaolvshishiwusuo/shaoxiaogen, wang tian, ni maiwo, fangjincheng, WIPO Case No. D2014-0714. Accordingly, the <christopher-kane.club> and <christopher-kane.website> disputed domain names are confusingly similar to the CHRISTOPHER KANE trademark.

B. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the disputed domain names.

Under paragraph 4(c) of the Policy, the Respondent may demonstrate rights or legitimate interests in the disputed domain names by showing any of the following circumstances, in particular but without limitation:

(i) The Respondent’s use of, or demonstrable preparations to use, the disputed domain names or name corresponding to the disputed domain names in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute; or

(ii) The Respondent has been commonly known by the disputed domain names, even if the Respondent has acquired no trademark or service mark rights; or

(iii) The Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names are not used in connection with any active websites. Nor has the Respondent demonstrated preparation to use the disputed domain names in connection with a bona fide offering of goods or services.

There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain names. The Complainant states, and the Respondent does not deny, that the Complainant never licensed or authorized the Respondent to use the CHRISTOPHER KANE trademark.

Additionally, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. Indeed, the Respondent is not making any use of the disputed domain names.

C. Registered and Used in Bad Faith

The Respondent registered and is using the disputed domain names in bad faith.

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed domain names in bad faith:

(i) Circumstances indicating that the Respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names; or

(ii) The Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or location or of a product or service on such website or location.

The Respondent was undoubtedly aware of the Complainant and its CHRISTOPHER KANE trademark at the time of registration of the disputed domain names and that such registration was in bad faith. The Complainant and its trademark are widely known and the Complainant’s Christopher Kane brand goods are distributed throughout the world, including in China, where the Respondent is located. The Complainant owns many trademark registrations around the globe, including in China. The CHRISTOPHER KANE trademark has been in use for several years, with earliest use by the Complainant being a decade before the date of registration of the disputed domain names. A simple Internet search for “Christopher Kane” would have yielded many obvious references to the Complainant, its namesake and its Chrsitopher Kane brand goods. The Respondent’s registration of other domain names incorporating other third parties’ well-known fashion brand names indicates that the Respondent is familiar with the fashion industry and famous fashion trademarks. The Respondent’s intentional registration of the disputed domain names incorporating the Complainant’s well-known mark, being fully aware of the Complainant’s rights in the mark, without any right or legitimate interest in doing so is registration in bad faith. See, e.g., Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113; AXA S.A. v. P.A. van der Wees, WIPO Case No. D2009-0206; BHP Billiton Innovation v. Ravindra Bala, WIPO Case No. D2008-1059.

The Respondent is using the disputed domain names in bad faith. The present circumstances indicate that the Respondent has registered the disputed domain names primarily for the purpose of selling them to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs related to the disputed domain names, as contemplated by paragraph 4(b)(i) of the Policy. See, e.g., Virgin Enterprises Limited v. Duygu Mert, WIPO Case No. D2011-0632. The Respondent originally offered to sell just two of the disputed domain names for a total of 1,200 USD. Ultimately, the Respondent rejected the Complainant’s offer to pay out-of-pocket costs, which the Complainant proposed to be 200 USD, in exchange for the transfer of all four disputed domain names and countered with a request for 1,000 USD, or 250 USD per domain name.

The present circumstances also indicate that the Respondent registered the disputed domain names to prevent the Complainant from reflecting its CHRISTOPHER KANE trademark in corresponding domain names, as contemplated by paragraph 4(b)(ii) of the Policy. See Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798. The Respondent has registered four domain names incorporating the Complainant’s trademark, indicating a pattern of such conduct. Furthermore, the Respondent has been a respondent in numerous other UDRP proceedings, as noted above, which also indicates a pattern of abusive registrations.

That the Respondent is passively holding the disputed domain names does not prevent a finding of bad faith use. Given the totality of the circumstances of this case, the Respondent is using the disputed domain names in bad faith. See Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 The disputed domain names are confusingly similar to the Complainant’s extensively used and well-known trademark; therefore, the Respondent must have been aware that Internet users may reasonably believe that the disputed domain names and resolving websites would be owned, controlled, established or otherwise associated with the Complainant. See AXA, supra. Moreover, the Respondent’s holding of the disputed domain names prevents the Complainant from reflecting its mark in the same domain names. See id. The Respondent is holding four domain names that incorporate and are identical or confusingly similar to the Complainant’s well-known trademark, indicating a pattern of abusive registrations. See Statoil ASA v. Creative Domain Pty Ltd. / Christine K. Hoyer, WIPO Case No. DAU2013-0012. Furthermore, the Respondent has been a respondent in several domain name disputes in the past, also indicating a pattern of abuse. Additionally, there is no plausible way in which the disputed domain names could be used by the Respondent legitimately for purposes other than passing off or infringement of the Complainant’s trademark rights. Passive holding under such circumstances amounts to bad faith use of a disputed domain names. See Telstra, supra; Statoil ASA v. Creative Domain Pty Ltd. v. Christine K. Hoyer, WIPO Case No. DAU2013-0012.

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 names, <christopher-kane.club>, <christopherkane.club>, <christopherkane.site>, and <christopher-kane.website>, be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: August 2, 2017