WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
J. Choo Limited v. Janques Van
Case No. D2013-0828
1. The Parties
The Complainant is J. Choo Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by A. A. Thornton & Co., UK.
The Respondent is Janques Van of Nanging and/or Beiging, China.
2. The Domain Names and Registrar
The domain names at issue are <jimmychoonsale.com> and <jimmychooshoesforsale.com> (the "Domain Names").
The disputed domain name <jimmychoonsale.com> is registered with FastDomain, Inc.
The disputed domain name <jimmychooshoesforsale.com> is registered with GoDaddy.com, LLC
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2013. On May 13, 2013, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On May 13 and May 14, 2013, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant of the Domain Names 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 the Respondent of the Complaint, and the proceedings commenced on May 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2013.
The Center appointed Antonio Millé as the sole panelist in this matter on June 10, 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
Complainant is a luxury and high fashion brand with an important number of shops in different continents and countries throughout the world with a significant reputation for luxury footwear for women and men, as well as handbags, small leather goods, scarves and belts. The Panel verified that the JIMMY CHOO trademark is used by the Complainant in packages and labels for shoes, handbags, accessories and perfume and also for retail store services. As a result of extensive sales, advertising and media recognition the JIMMY CHOO trademark is wellknown around the world.
The Complainant proved to be the owner of European Community trademark registration No. 2587830 for JIMMY CHOO in classes 3, 9, 14, 18 and 35; Chinese trademark registration No. 3189592 for JIMMY CHOO in class 18; Chinese trademark registration No. 1637164 for JIMMY CHOO in class 25; Chinese trademark registration No. 6053902 for JIMMY CHOO in Mandarin in class 18; and the Chinese trademark registration No. 6053901 for JIMMY CHOO in Mandarin in class 25; and declared to have registrations of the trademark JIMMY CHOO in a total of 77 countries. The Complainant also submitted evidence of being the registrant of a number of domain names containing its trademark.
5. Parties’ Contentions
Complainant contends that the Domain Names are confusingly similar to its trademark, that Respondent has no rights or legitimate interests in the Domain Names, and that Respondent has registered and used the Domain Names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
To obtain relief under the paragraph 4(a) of the Policy it is required that the Complainant prove each of the following elements:
(1) that the Domain Names registered by the respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in the Domain Names; and
(3) that the Domain Names have been registered and used in bad faith.
A. Identical or Confusingly Similar
The Domain Names in dispute comprise three elements:
a) the expression “jimmychoo”, which is identical to the Complainant’s registered trademarks;
b) the expressions “nsale1” and “shoesforsale”, which are generic terms. “Sale” (or “on sale”) “shoes” and “for sale”, are not distinguishing features that could contribute to avoid a confusion of the public about the link between the Complainant and the websites hosted at the Domain Names. Previous Center decisions adopted this approach to evaluate the similarity between trademarks and domain names, among others Time Warner Entertainment Company L.P. v. HarperStephens, WIPO Case No. D2000-1254; AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; and eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307.
c) the generic top-level domain “.com” which may be excluded from consideration when determining whether the Domain Names are identical or confusingly similar to the trademarks held by the Complainant. It is indeed deemed to be a functional or generic component of the Domain Names (Gerling Beteiligungs-GmbH (GBG) v. World Space Corp, WIPO Case No. D2006-0223).
Adding generic terms following to the Complainant’s complete trademark does not reduce the confusing similarity of the Domain Names with the Complainant’s trademark, especially because the added expressions suggest concepts related with the commerce and with the kind of merchandize that the Complainant trades. For that reason, the Panel considers the disputed Domain Names to be confusingly similar with the Complainant’s trademark.
The Panel finds, therefore, that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, the respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) the respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain or to misleadingly divert customers or to tarnish the trademark at issue.
The Respondent has not answered to the Complaint and therefore, it has not given any basis to a right or legitimate interest in respect of the use of the expression “Jimmy Choo” in the Domain Names. The use of the Domain Names to display copies of the Complainant websites pages; the complete difference between the Respondent name or pseudonymous and the Complainant’s trademark; and the evident possibility of consumers confusion, has been alleged by the Complainant and supported by convincing evidence. On the other hand, the Panel has taken into consideration that the Respondent: a) does not appear to be using the Domain Names in connection with a bona fide offering of goods or services; b) there is no evidence that the Respondent is commonly known by a denomination similar to the Complainant‘s trademark; and c) all the factual circumstances suggest that the Respondent is making a commercial use of the Domain Names, with the intent for commercial gain by means of misleadingly diverting consumers.
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names, after which the burden of rebuttal passes to the Respondent(see, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response (see Accor v. Eren Atesmen, WIPO Case No. D2009-0701citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005). Previous panel decisions in cases were no sign of legitimate interest in the domain name was apparent as the respondent did not make any attempt to rebut the “prima facie” case made by the complainant, have stated that the panel will decide the dispute on the basis of the complainant’s undisputed contentions of facts. Although the respondent’s default does not automatically result in a decision in favour of the complainant, the panel may draw negative inferences from the same (see Unilever N.V. v. Kentech, WIPO Case No. D2005-1021).
On this basis, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Names. Therefore, the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
The Complainant based the Complaint on this point on the existence of the circumstances set out in paragraph 4(b)(of the Policy regarding the registration and use of the Domain Names in bad faith.
The disputed domain name <jimmychoonsale.com> was registered by the Respondent on August 20, 2012; and <jimmychooshoesforsale.com> was registered by the Respondent on August 22, 2012, long after Complainant’s trademarks were registered.
The use as Domain Names of a well known trademark seems to the Panel a typical expression of the conduct of those that “intentionally attempted to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of this web site or location or of a product or service on such web site or location” (Policy, paragraph 4(b)(iv)). This conviction is reinforced by the fact alleged by the Complainant, not refuted by the Respondent that, at the time of filing the Complaint with the Center, the Internet user entering the Domain Names accessed websites displaying the Complainant’s products and using the JIMMY CHOO trademark products which the Complainant alleges are counterfeit.
In front of this circumstances, and remaining silent the Respondent about any legitimate reason that could drive the Respondent into registering and using <jimmychoonsale.com> and <jimmychooshoesforsale.com> as Domain Names, the Panel cannot find any justification for such registration and use of the Domain Names that clearly and univocally evoke the Complainant’s trademark.
The use of insufficient and contradictory contact information is a further indication of the Respondent’s bad faith. This circumstance was taken into account in previous decisions of the Center: “The Respondent’s bad faith is further demonstrated by the false contact information he provided to the registrar with which the domain names are registered (see Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362, finding bad faith, in part, because respondent provided false contact details to Register.com, Inc.)”; and Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.
On this basis, the Panel finds that the Complainant has met the requirement under paragraph 4(a)(iii) of the Policy.
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 <jimmychoonsale.com> and <jimmychooshoesforsale.com> be transferred to the Complainant.
Dated: June 18, 2013
1 “nsale” is a non existent word resulting from the suppression of the initial letter “o”, probably to avoid the need of using three letters “o”.