WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Monsoon Accessorize Limited v. Shi Yue
Case No. D2012-1688
1. The Parties
The Complainant is Monsoon Accessorize Limited of London, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”), represented by Eversheds, LLP, United Kingdom.
The Respondent is Shi Yue of Ji Nan, Shan Dong, China.
2. The Domain Name and Registrar
The disputed domain name <discountmonsoondresses.com> is registered with Xin Net Technology Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2012. On August 23, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 2012, 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 August 27, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On August 28, 2012, the Complainant confirmed its request that 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 proceeding commenced on September 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on September 24, 2012.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on October 9, 2012. 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 a company incorporated in the United Kingdom and the owner of registrations in several jurisdictions for the trade mark MONSOON (the “Trade Mark”), the earliest (United Kingdom) registration dating from 1980.
The Respondent is an individual apparently with an address in China.
C. The Disputed Domain Name
The disputed domain name was registered on July 16, 2012.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint.
The Complainant is one of the United Kingdom’s most well-known ladies’ fashion retailers and has been trading under the Trade Mark in the United Kingdom since 1973. The Complainant currently operates over 400 retail stores under the Trade Mark in the United Kingdom, and over 600 stores internationally, including in France, Russia, Brazil, South Africa and Hong Kong, China. The Complainant also operates online via its “www.monsoon.co.uk” website, which receives over 1.3 million visitors per month.
In the last financial year, the Complainant’s turnover in respect of its ladies’ clothing business under the Trade Mark was £288 million.
The disputed domain name is confusingly similar to the Trade Mark. It comprises the Trade Mark in its entirety, together with the non-distinctive words “discount” and “dresses”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with or authorised by the Complainant in any way and is not commonly known by the disputed domain name. The Complainant is not making a legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name is linked to a website which offers for sale what appears to be the Complainant’s clothing for substantially reduced prices (the “Website”). The Website features prominently the Trade Mark and contains images of the Complainant’s clothing as well as product codes and colour, fabric and care instruction information taken from the Complainant’s website.
Although it appears the Complainant has not received any specific customer complaints relating to the Website, the Complainant has recently received complaints from customers who appear to have been defrauded by similar websites.
The Complainant believes the Website has been set up in order to deceive customers into placing orders for the Complainant’s clothing on the Website. The Respondent does not have access to supplies of genuine Monsoon clothing. The Complainant believes the Respondent is either supplying counterfeit clothing, or is accepting payments but not delivering clothing at all. In this regard, the Complainant’s representative placed an order on the Website and made payment on August 8, 2012, but, despite the purported 3-7 day delivery period stated on the Website, as at the date of the Complaint, no clothing had been delivered to the Complainant’s representative.
For all of these reasons, the disputed domain name has been registered and used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The Complainant is a United Kingdom company;
(2) Neither the Complainant nor its advisors have any knowledge of Chinese language;
(3) The Website is in English and is targeted towards English speaking consumers based in the United Kingdom. The currency used on the Website is pounds sterling and communications between customers and the Website are entirely in English language.
The Respondent did not file any submissions with respect to the language of the proceeding and did not file a response.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
It appears from the content of the Website that the Respondent is proficient in the English language (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047). The Website is a sophisticated website featuring several pages using flawless English.
The Panel therefore finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be unduly prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by almost 40 years.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for the purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
The disputed domain name contains the Trade Mark in its entirety. The Panel concludes that the use of the generic words “discount” and “dresses” does not serve to distinguish the disputed domain name from the Trade Mark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organisation) has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by decades. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the Website which features prominently the Trade Mark as well as images and content taken from the Complainant’s website, and offers for sale unauthorised, and possibly counterfeit, clothing products under the Trade Mark. Such use does not amount to a bona fide offering of goods or services under the Policy (Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750).
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
By using the disputed domain name, 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel has no hesitation in concluding the Respondent has registered the disputed domain name and set up the Website in order to defraud the Complainant’s customers into paying for what they believe is genuine discounted Monsoon clothing, only to receive nothing in return, or, at best, counterfeit or inferior quality clothing.
At some stage following the filing of the Complaint, the Website has been taken down by the Respondent. As at the date of this Decision, the disputed domain name is not being used by the Respondent. In all the circumstances of this case, the Panel finds this constitutes further evidence of bad faith.
For the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <discountmonsoondresses.com> be transferred to the Complainant.
Sebastian M. W. Hughes
Dated: October 23, 2012