WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
J. Choo Limited v. Lai Ruipao
Case No. D2011-1074
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 Lai Ruipao, Beijing, China.
2. The Domain Names and Registrar
The disputed domain names are <cheap-jimmy-choo-shoes.com>, <hunter-jimmychoo.com>, <jimmychoo-discount.com>, <jimmychoofor-hm.com>, <jimmychoohandbagsuk.com>, <jimmychooheelsus.com>, <jimmychoohunter-boots.com>, <jimmychoo-ramona.com>, <jimmychooreplicabags.com>, <jimmychoo-sale-us.com>, <jimmychooshoes-it.com>, <jimmychooshoes-onsale.com>, <jimmychoos-uk.com>, <jimmychooweddingshoesus.com>, <jimmychooza.com> and <jimmychoo-2011.com> which are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2011. On June 24, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On June 27, 2011, GoDaddy.com, Inc. 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 June 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 20, 2011.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on July 26, 2011. This Panel finds that it was properly constituted. This 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
Complainant is a company incorporated in the United Kingdom.
Complainant has rights over the JIMMY CHOO trademark, for which it holds several registrations including: JIMMY CHOO, registration No. 1662543 with The Office for Harmonization in the Internal Market of the European Union (OHIM), registered in 2002, class 25, and JIMMY CHOO registration No. 2587830 with the OHIM, registered in 2003, classes 3, 9, 14, 18 and 35.
Complainant’s affiliate company J. Choo (Jersey) Limited also holds several JIMMY CHOO trademark registrations in China, including: JIMMY CHOO, registration No. 3189589 with the China Trademark Office, registered in 2003, class 3.
The disputed domain names were created on April 14, 2011, except for <jimmychooza.com> which was created on April 13, 2011.
5. Parties’ Contentions
A. Complainant
Complainant’s assertions may be summarized as follows:
Complainant’s JIMMY CHOO trademark is now one of the most recognized high fashion footwear and handbags and small leather products trademark in the world. Complainant has been trading under that trademark since 2001 and has spent a considerable amount of time and money protecting its intellectual property rights as evidenced by its numerous trademark registrations around the world.
Complainant’s trademark is regularly featured in magazines and newspaper articles, and there are over sixty own-branded stores across the world. Complainant’s products receive loyal support from celebrities, including musicians and television and film stars, who are often seen wearing Complainant’s products at world famous occasions and award ceremonies, such as the Academy Awards (Oscars).
Complainant owns many domain names (whether gTLDs and ccTLDs) incorporating its JIMMY CHOO trademark, including: <jimmychooshoes.com> created in 2003, <jimmychoocouture.com> created in 2002, <jimmychoo.com> created in 2007, <jimmychoo.net> created in 2001, and <jimmychooonline.co.uk> created in 2006. These domain names direct user traffic to Complainant’s website at “www.jimmychoo.com”.
The disputed domain names are confusingly similar to the trademark over which Complainant has rights.
Complainant and its affiliate company J. Choo (Jersey) Limited have rights over several JIMMY CHOO trademark registrations around the word.
All the disputed domain names incorporate in its entirety the JIMMY CHOO trademark, trademark over which Complainant has rights. The words used in conjunction with Complainant’s trademark in the disputed domain names do not prevent the disputed domain names from being confusingly similar to Complainant’s trademark JIMMY CHOO.
The addition of country abbreviations such as “us”, “uk”, “it” and “za” indicates simply that the products being sold are targeted at consumers in certain countries. Likewise the addition of words such as “shoes”, “handbags”, “heels”, “boots”, “replicabags” and “weddingshoes” indicates the style or type of Complainant’s branded products being sold. Additional elements such as “cheap”, “discount”, “sale” and “onsale” indicate the products are being sold at reduced prices.
Complainant has also entered into limited edition collaborations with third parties: Hunter (Wellington boots) in 2009 and H & M in 2009. The use of words “hunter” and “for-hm” in conjunction with Complainant’s trademark by Respondent indicates simply that the products sold are purportedly from Complainant’s collaborative collections with Hunter and H & M.
The word “Ramona” also used in one of the disputed domain names is a style name used by Complainant. The use of the word “Ramona” by Respondent is clearly a further attempt to indicate that the products sold are purportedly of Complainant’s Ramona style.
Respondent’s use of the JIMMY CHOO trademark is clearly an attempt to catch Internet users searching for Complainant’s products using Complainant’s registered trademark.
Respondent has no rights or legitimate interests in respect of the disputed domain names. There is no evidence that Respondent is making a legitimate noncommercial or fair use of any of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue so as to create an impression of association with Complainant.
There is no evidence that Respondent was previously known by Complainant’s trademark, or that is making a bona fide offering of goods and services through the disputed domain names.
Respondent is using the disputed domain names to offer products bearing the JIMMY CHOO trademark. Complainant believes the products offered on the websites under the disputed domain names to be counterfeit. Complainant refers in particular to the disputed domain name <jimmychooreplicabags.com>, which demonstrates that the products offered are not genuine Jimmy Choo products. As the disputed domain names are all owned by the same Respondent, this supports Complainant’s belief that the products offered under the disputed domain names are counterfeit. This is not a bona fide offering of goods, and therefore Respondent has no rights or legitimate interest in respect of the disputed domain names.
Several of the disputed domain names are offering products bearing trademarks of Complainant’s competitors. Complainant refers to the disputed domain names <jimmychoo-ramona.com>, <jimmychoo-sale-us.com>, <jimmychoofor-hm.com>, <jimmychoohandbagsuk.com> and <jimmychoohunter-boots.com>, which all offer for sale products bearing marks of Complainant’s competitors alongside products bearing the Complainant’s JIMMY CHOO trademark. This again is not a bona fide offering of goods.
The use of Complainant’s registered trademark within the disputed domain names to offer products bearing the JIMMY CHOO trademark is only for the purpose of diverting genuine consumers of Complainant’s products away from Complainant’s website, for commercial gain. Furthermore, use of elements such as “cheap”, “discount” and “onsale” in conjunction with Complainant’s trademark within the disputed domain names only serves to cheapen the trademark’s image, and therefore tarnish Complainant’s trademark.
Respondent registered and is using the disputed domain names in bad faith.
From Complainant’s advertising, marketing spend and numerous trademark registrations, Respondent would have been aware of Complainant’s trademark at the time of registering the disputed domain names.
The registration of 16 disputed domain names containing the identical words to the registered trademarks of Complainant is clearly aimed to disrupt Complainant’s business by diverting Internet users who are searching for Complainant’s products and leading them away from Complainant’s genuine websites, and is aimed to prevent Complainant from registering the domain names in its own name. Furthermore, the fact that Respondent has registered a total of 16 disputed domain names incorporating Complainant’s trademark shows that Respondent has engaged in a pattern of bad faith behaviour.
Respondent is intentionally attempting to attract for commercial gain Internet users by creating an impression under each of the websites related to the disputed domain names that the websites are associated with, or endorsed by, Complainant. Several of the websites owned by Respondent display Complainant’s style names in conjunction with Complainant’s JIMMY CHOO trademark to describe the products sold on the website, for example <hunter-jimmychoo.com>, <jimmychoo-2011.com>, <jimmychoofor-hm.com>, <jimmychooreplicabags.com>, <jimmychoo-ramona.com>.
Several of the websites related to the disputed domain names also reproduce images from Complainant’s genuine website and advertising campaign; Complainant refers to the following disputed domain names <jimmychooza.com>, <jimmychoos-uk.com>, <cheap-jimmy-choo-shoes.com>, <jimmychooshoes-onsale.com>. Complainant refers in particular to the disputed domain names <jimmychooza.com> and <jimmychoos-uk.com>, which both clearly try to re-create the look and feel of Complainant’s genuine website.
Such use is clearly done to create an impression, for commercial gain, that the websites owned by Respondent are associated with Complainant and is evidence that Respondent is attempting to disrupt the business of Complainant. Unauthorised use of images taken from Complainant’s website and genuine advertising campaign demonstrates that Respondent is using the domain names in bad faith, by intentionally creating an impression of association with Complainant.
Complainant requests that the disputed domain names be transferred to Complainant.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of Response from Respondent does not automatically result in a favorable decision for Complainant1. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that each disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of each disputed domain name; and (iii) each disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the JIMMY CHOO trademark. Complainant and its affiliate company J. Choo (Jersey) Limited have rights over several trademark registrations around the word, including in China.
All the disputed domain names entirely incorporate the JIMMY CHOO trademark.
The disputed domain names <jimmychoos-uk.com>, <jimmychoohandbagsuk.com>, <jimmychooshoes-it.com>, <jimmychoo-sale-us.com>,<jimmychooweddingshoesus.com> and <jimmychooheelsus.com> add, among other characters, the geographic descriptors “uk”, “it” and “us”; such suffixes correspond to the widely-used acronyms of “United Kingdom”, “Italy” and the “United States”, respectively. In the disputed domain name <jimmychooza.com>, Respondent simply adds the suffix “za”, which corresponds to the ccTLD for South Africa. Prior UDRP panel decisions have found that the addition of a geographic descriptor does not change the confusing nature of the similarity (Cfr. America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; eBay Inc., v. G L Liadis Computing, Ltd. and John L. Liadis d/b/a G L Liadis Computing Ltd., WIPO Case No. D2000-1463).
The disputed domain names <jimmychooweddingshoesus.com>, <jimmychoohandbagsuk.com>, <cheap-jimmy-choo-shoes.com>, <jimmychooheelsus.com>, <jimmychooreplicabags.com>, <jimmychooshoes-onsale.com>, <jimmychoohunter-boots.com>, <jimmychoo-discount.com>, <jimmychoofor-hm.com>, <jimmychoo-ramona.com>, <jimmychoo-sale-us.com>, <jimmychoo-2011.com> differ from Complainant’s JIMMY CHOO trademark by the addition of the suffixes “weddingshoesus”, “handbagsuk”, “shoes”, “heelsus”, “replicabags”, “shoes-onsale”, “hunter-boots”, “discount”, “for-hm”, “ramona”, “sale-us” and “2011”; while the disputed domain names <hunter-jimmychoo.com> and <cheap-jimmy-choo-shoes.com>, differ from Complainant’s JIMMY CHOO trademark by the addition of the prefixes “cheap” and “hunter”.
It is clear that the distinctive element in all such disputed domain names is Complainant’s JIMMY CHOO trademark. The addition of such prefixes and/or suffixes is not enough to avoid similarity, nor does it add anything to avoid confusion (Cfr. Ticketmaster Corporation v. Bill Hicks, WIPO Case No. D2004-0400; Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102).
Furthermore, the incorporation of a trademark in its entirety can be sufficient to establish that a disputed domain name is identical or confusingly similar to such trademark.
Therefore, this Panel finds that the disputed domain names are all confusingly similar to Complainant’s JIMMY CHOO trademark.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Complainant asserts that Respondent has never been commonly known by the JIMMY CHOO trademark.
Respondent is using the website associated with the disputed domain name <cheap-jimmy-choo-shoes.com> to sell products bearing Complainant’s JIMMY CHOO trademark, the website used in connection with the disputed domain name contains no disclaimer disassociating Complainant from such website. Also, Respondent is using the websites associated with the disputed domain names <hunter-jimmychoo.com>, <jimmychoo-2011.com>, <jimmychoo-discount.com>, <jimmychoofor-hm.com>, <jimmychoohandbagsuk.com>,<jimmychooheelsus.com>,<jimmychoohunter-boots.com>, <jimmychoo-ramona.com>, <jimmychooreplicabags.com>, <jimmychoo-sale-us.com>, <jimmychooshoes-it.com>, <jimmychooshoes-onsale.com>, <jimmychoos-uk.com>, <jimmychooweddingshoesus.com> and <jimmychooza.com> to offer for sale products bearing competitors’ trademarks albeit with products bearing Complainant’s JIMMY CHOO trademark. Such use is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names.
Further, Complainant contends that the products offered on the websites under the disputed domain names may be counterfeit. Complainant refers in particular to <jimmychooreplicabags.com>, which is indicative that the products offered at such web site are not the genuine products sold by Complainant. Furthermore, use of elements such as “cheap”, “discount” and “onsale” in conjunction with Complainant’s trademark within the disputed domain names only serves to cheapen the trademark’s image, and therefore tarnish Complainant’s trademark.
That cannot be considered as a bona fide offering of goods or services2.
From the documentation that is on the file there is no indication that may lead this Panel to consider that Respondent might have rights or legitimate interests in the disputed domain names, but rather the opposite may be inferred3.
In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using several disputed domain names which entirely incorporate Complainant’s trademark, this Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain names4.
Based on the aforesaid, this Panel concludes that Respondent has no rights or legitimate interests in any of the disputed domain names.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain names is in bad faith.
From a plain comparison of Complainant’s website and several of Respondent’s websites under the disputed domain names, it is clear that Respondent should have been aware of the existence of Complainant’s trademark at the time it obtained the registration of the disputed domain names, as they clearly show Complainant’s trademark with the same design used by Complainant on its own website.
The use of the disputed domain names for websites that are used to market products bearing Complainant’s trademark as well as products of Complainant’s competitors constitutes an improper use of Complainant’s mark and is evidence of Respondent’s bad faith. This Panel finds that Respondent’s choice of the disputed domain names was deliberate with the intention to obtain some kind of profit from the reputation and goodwill of Complainant’s trademark. Such use constitutes an improper use of Complainant’s mark and is evidence of Respondent’s bad faith5.
It is of this Panel’s view that in using the disputed domain names, Respondent has sought to take advantage of, and create a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s websites under the disputed domain names. Further, the registration of 16 disputed domain names almost on the same date, all containing Complainant’s trademark, is further evidence of Respondent’s bad faith6.
Based on all the above, this Panel finds that all the disputed domain names were registered and are being used in bad faith.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that all the disputed domain names <cheap-jimmy-choo-shoes.com>, <hunter-jimmychoo.com>, <jimmychoo-discount.com>, <jimmychoofor-hm.com>, <jimmychoohandbagsuk.com>, <jimmychooheelsus.com>, <jimmychoohunter-boots.com>, <jimmychoo-ramona.com>, <jimmychooreplicabags.com>, <jimmychoo-sale-us.com>, <jimmychooshoes-it.com>, <jimmychooshoes-onsale.com>, <jimmychoos-uk.com>, <jimmychooweddingshoesus.com>, <jimmychooza.com> and <jimmychoo-2011.com> be transferred to Complainant.
Gerardo Saavedra
Sole Panelist
Dated: August 9, 2011
1 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465: “[…]the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
2 See TAG HEUER S.A. v. JBlumers Inc./Jerald Blume, WIPO Case No. D2004-0871.
3 See Pfizer Inc., A Delaware Corporation v. RE THIS DOMAIN FOR SALE – EMAIL, WIPO Case No. D2002-0409: “[…] the Complainant contends that the Respondent’s use of the contested domain name intentionally and misleadingly redirects or diverts Internet users away from the Complainant’s web site in order to generate commercial gain for the Respondent and does not constitute a legitimate use”.
4 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given... Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
5 See Harrods Limited v. Pete Lormer, WIPO Case No. D2003-0504.
6 See America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713: “The registration of several names corresponding to Complainant’s service marks is sufficient to constitute a pattern of such conduct, and thus to constitute bad faith within the meaning of paragraph 4(b)(ii) of the Policy”.