WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Retro Clothing Limited and Jaded London Limited v. milong qiu and Jia Yi

Case No. D2021-1009

1. The Parties

The Complainants are Retro Clothing Limited and Jaded London Limited (the “Complainants”), United Kingdom, represented by Lewis Silkin LLP, United Kingdom.

The Respondents are milong qiu, China and Jia Yi, China.

2. The Domain Names and Registrar

The disputed domain names <jadedldonline.com>, <jaded-online.com>, and <jadedsale.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2021. On April 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names <jadedldonline.com> and <jaded-online.com>. On April 2, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names <jadedldonline.com> and <jaded-online.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on April 6, 2021 providing the registrant and contact information disclosed by the Registrar and inviting the Complainants to submit an amendment to the Complaint or to file a separate complaint for each of the Disputed Domain Names. The Complainants filed an amended Complaint on April 6, 2021 with a consolidation request.

The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceedings commenced on April 7, 2021.In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2021.

The Center appointed Lynda M. Braun as the sole panelist in this matter on May 5, 2021. 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.

On April 9, 2021, after the notification of the Complaint, the Complainants, in an email to the Center, requested that an additional Disputed Domain Name, <jadedsale.com>, (the “Additional Domain Name”) be added to this proceeding and the Complainants included arguments for consolidation purposes. The Center informed the Complainants that the Panel, once appointed, would make the decision about whether consolidation of the Respondents was appropriate. The Panel agreed to add the Additional Domain Name and issued the Administrative Panel Procedural Order Nº 1 (the “Order”) on May 10, 2021. The Order granted the Respondents ten (10) calendar days from the date of the Order to respond to the Complaint regarding the Additional Domain Name, or to indicate whether they wished to participate in this proceeding. In the absence of a response by May 20, 2021, the Order indicated that the Panel would proceed with the decision. The Order informed the parties that the due date for the Panel to submit the decision to the Center was extended to May 27, 2021.

4. Factual Background

The Complainants have operated a successful clothing business since 2013 and their business has become a coveted brand with many celebrities such as Beyoncé, Rita Ora, Ellie Goulding, and Taylor Swift, who have purchased and worn the Complainants’ branded clothing and accessories. The Complainants own United Kingdom Trademark Registration No. UK00003218267 for the JADED LONDON Logo, registered on July 20, 2018 in international classes 18, 25, and 35 (hereinafter referred to as the “JADED LONDON Mark”)

The Complainants sell clothing and accessories bearing the JADED LONDON Mark through their official website at “www.jadedldn.com” and in exclusive brick and mortar clothing stores, including, but not limited to, Selfridges, Harvey Nichols, Topshop and Topman, ASOS and Urban Outfitters.

The Disputed Domain Names were registered as follows: <jadedldonline.com>, registered on July 29, 2020; <jaded-online.com>, registered on July 6, 2018; and <jadedsale.com>, registered on July 29, 2020.

The Disputed Domain Names are used as follows: <jadedldonline.com> and <jaded-online.com> both resolve to a website that sells similar (or the same) clothing as do the Complainants, copying the layout, look and feel, and type of clothing on the Complainants’ website. They also sell the Complainants’ branded clothing bearing the JADED LONDON Mark, offering the clothing for sale in various currencies. In addition, the clothing on the Respondents’ website is sold at substantially discounted prices. Thus, the clothing on the websites are in all likelihood counterfeits. The Disputed Domain Name <jadedsale.com> resolves to a landing page that states that the website is blocked, that it is a dangerous page, with the threat type as “scam”. It cautions users that “the website can transmit malicious software and could put your devices and network at risk” and then states, “please close this page”.

5. Parties’ Contentions

A. Complainant

The following are the Complainants’ contentions:

- the Disputed Domain Names are confusingly similar to the Complainants’ trademark;

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

- the Disputed Domain Names were registered and are being used in bad faith.

The Complainants seek the transfer of the Disputed Domain Names from the Respondents to the Complainants in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondents did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1 Preliminary Issue: Consolidation

As referenced above, the Complainants submitted a request for consolidation in this proceeding in their Complaint as well as in their April 9, 2021 email to the Center. With respect to a complaint brought against more than one respondent, paragraph 10(e) of the Rules states that consolidation may proceed where the disputed domain names or the websites to which they resolve are subject to common control, and the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.

Here, the Panel finds that the Disputed Domain Names are under common control, the Respondents are based in the same location, the Disputed Domain Names are registered through the same Registrar, use the same hosting company and domain name server, and two of the websites to which the Disputed Domain Names resolve are displayed in a manner that is identical to the Complainants’ online presence. The Disputed Domain Names <jadedldonline.com> and <jadedsale.com> share the same registrant “Jia Yi” from China. Since the Panel concludes that the criteria set out above are met, the Panel has accepted consolidation in the present proceeding.

6.2 Substantive Issues

In order for the Complainants to prevail and have the Disputed Domain Names transferred to the Complainants, the Complainants must prove the following (Policy, paragraph 4(a)(i-iii)):

(i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) the Disputed Domain Names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold inquiry, a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the domain name is identical or confusingly similar to that trademark. The Panel concludes that in the present case, the Disputed Domain Names are confusingly similar to the JADED LONDON Mark.

It is uncontroverted that the Complainants have established rights in the JADED LONDON Mark based on their years of use as well as their registration for the JADED LONDON Mark in the United Kingdom. The general consensus is that registration of a mark satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0 at section 1.2.1. Here, the Panel finds that the Complainants have rights in the JADED LONDON Mark.

The Disputed Domain Name <jadedldonline.com> consists of the JADED LONDON Mark, but instead of “London” in its entirety, the “ld” is used as an abbreviation for “London” ¹ , followed by the dictionary term “online”, and then followed by the generic Top-Level Domain (“gTLD”) “.com”. The Disputed Domain Name <jaded-online.com> consists of the JADED LONDON Mark, but only using the dominant portion of the mark, “Jaded”, connected by a hyphen to the dictionary term “online” and followed by the gTLD “.com”. The Disputed Domain Name <jadedsale.com> consists of the dominant portion of the JADED LONDON Mark, “Jaded”, followed by the dictionary term “sale”, and then followed by the gTLD “.com”.

The Panel concludes that based on the above, the Disputed Domain Names are confusingly similar to the JADED LONDON Mark in which the Complainants have rights. Numerous UDRP decisions have reiterated that the addition of a dictionary term to a trademark is insufficient to prevent confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffman-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923 (the addition of a dictionary or generic word to a trademark will not prevent a determination that the domain name at issue is confusingly similar).

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11.

Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainants.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent bears the burden of production to demonstrate rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

There is no evidence in the record suggesting that the Respondents have rights or legitimate interests in the Disputed Domain Names. The Complainants have not authorized, licensed, or otherwise permitted the Respondents to use the Complainants’ JADED LONDON Mark. The Complainants do not have any business relationship with the Respondents, nor are the Respondents making a legitimate noncommercial or fair use of the Disputed Domain Names. Based on the use made of the Disputed Domain Names to resolve to websites that appear to have counterfeit goods bearing the JADED LONDON Mark, and copying the layout, clothing type and structure of the Complainants’ official website, the Panel finds that the Respondents are not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Names. The same reasoning applies to the use of the Disputed Domain Name <jadedsale.com> to resolve to a landing page that states that the website is blocked.

There is also no evidence that the Respondents are commonly known by the Disputed Domain Names or by any name similar to them. Moreover, the Panel finds that the Disputed Domain Names carry a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.

In this case, the Panel finds that the Complainants have made out a prima facie case that the Respondents have no rights or legitimate interests in the Disputed Domain Names. The Respondents have not submitted any substantive arguments or evidence to rebut the Complainants’ prima facie case. As such, the Panel determines that the Respondents do not have rights or legitimate interests in the Disputed Domain Names.

Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainants.

C. Registered and Used in Bad Faith

The Panel finds that, based on the record, the Complainants have demonstrated the existence of the Respondents’ bad faith pursuant to paragraph 4(b) of the Policy.

First, based on the circumstances here, the Panel concludes that the Respondents registered and used the Disputed Domain Names in bad faith in an attempt to attract Internet users to the Respondents’ websites by creating a likelihood of confusion with the Complainants’ JADED LONDON Mark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Names’ resolving webpages. The Respondents’ registration and use of the Disputed Domain Names indicate that such registration and use had been done for the specific purpose of trading on the name and reputation of the Complainants and the JADED LONDON Mark (or at least the dominant portion of the mark). See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”). Further, the fact that one of the Disputed Domain Names currently resolves to a page containing malicious software is yet another example of the Respondents’ bad faith.

Second, the Panel concludes that the Respondents are using the Disputed Domain Names for an illegitimate purpose that demonstrates knowledge of the Complainants’ trademark rights and a bad faith intent to register and use the Disputed Domain Names. By registering a disputed domain name confusingly similar to a complainant’s mark to provide similar services to the ones provided by the complainant, it is evident that a respondent had knowledge of the complainant, its business, and its mark when registering the disputed domain name. In light of the circumstances in this case, it is not possible to conceive of a plausible situation in which the Respondents would have been unaware of the Complainants’ JADED LONDON Mark at the time the Disputed Domain Names were registered. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Finally, the Disputed Domain Names were registered after the Complainants first began using the JADED LONDON Mark. The Panel finds it likely that the Respondent had the Complainants’ JADED LONDON Mark in mind when registering the Disputed Domain Names, thus demonstrating bad faith.

Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainants.

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 <jadedldonline.com>, <jaded-online.com>, and <jadedsale.com> be transferred to the Complainants.

Lynda M. Braun
Sole Panelist
Date: May 20, 2021

¹ The letters “ld” are likely intended to imitate the ‘LDN’ element (a common abbreviation of London) of the Complainants’ website.