WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Forever New Clothing Pty Ltd. v. Su Kezeng

Case No. D2013-1497

1. The Parties

The Complainant is Forever New Clothing Pty Ltd. of Victora, Australia, represented by Sipara, United Kingdom of Great Britain and Northern Ireland (“UK”).

The Respondent is Su Kezeng of Jiangsu, China.

2. The Domain Name and Registrar

The disputed domain name <forevernew-au.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, 2013. On August 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 2013, 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, 2013, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceedings. On the August 28, 2013, the Complainant submitted its request that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings 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 proceedings commenced on September 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2013.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on October 4, 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

The Complainant, Forever New Clothing Pty Ltd., is a global fashion clothing and accessories business, with approximately 250 stores across Australia, South Africa, Turkey, China, India, New Zealand, Singapore and Indonesia. It is the proprietor of numerous registered trademarks for the brand Forever New including in Australia in classes 9, 14, 18, 25 and 35 under numbers 1365380, 1098776 and 1098596, the European Union in classes 9, 14, 18, 25 and 35 under number 7054463, and in China in classes 18 and 35 under numbers 5547739 and 5547740. The FOREVER NEW trade mark was registered in Australia in 2007; in the European Union in 2008 and in China in 2009.

The Respondent registered the disputed domain name <forevernew-au.com> on February 26, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain is identical or confusingly similar to a trademark or service mark in which the Complainant has rights on the following grounds:

1. The Complainant is the registered trade mark owner of FOREVER NEW in several countries including Australia, the European Union and China and asserts that it has rights over the mark FOREVER NEW.

2. The Respondent has appropriated the Complainant’s entire trade mark, FOREVER NEW, as the dominant element of the disputed domain name, with the small addition of ‘-au’. The addition of ‘-au’ does not distinguish the disputed domain name from the Complainant’s FOREVER NEW trade mark. In fact, over the Internet, the confusion between the disputed domain name and the Complainant’s FOREVER NEW trade mark is enhanced because the Complainant’s own website has a domain name <forevernew.com.au> whilst the disputed domain name is <forevernew-au.com>.

Therefore the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s FOREVER NEW trade mark in which the Complainant has rights.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds:

1. The Respondent has not used, or made 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.

2. The Respondent has not been commonly known by the disputed domain name.

3. The Respondent is not 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.

4. The Complainant has not licensed or authorized the Respondent to use the FOREVER NEW trade mark or to apply for or use any domain name incorporating the FOREVER NEW trade mark.

5. Although the website resolving from the disputed domain name mentions “Forever New Fans”, the Complainant contends that this is not a legitimate fan-site as the Respondent has used a large amount of text and a number of images from the Complainant’s website on its website, and the website contains links to third party websites where goods are advertised for sale. The Complainant contends that this is evidence that the Respondent has an intention for commercial gain and is not simply running a fan-site under the disputed domain name.

Based on the above, the Complainant contends that the Respondent is not making legitimate noncommercial use of the disputed domain name.

The Complainant contends that the disputed domain name was registered and is being used in bad faith on the following grounds:

1. The Complainant’s trade mark FOREVER NEW is distinctive and well known internationally. It appears from the website of the Respondent that it is based in China. The reputation of FOREVER NEW is such that the Respondent must have known of the existence of the Complainant’s trade mark at the time the disputed domain name was registered in 2011. The Complainant launched the brand in China in 2008 and currently has stores in Beijing, Chongqing, Chengdu and Shanghai. The Respondent’s knowledge of the Complainant is evidenced by the website content resolving from the disputed domain name, which includes copies of images from the Complainant’s website and text which accurately describes the Complainant’s business. The incorporation of a well-known trade mark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith.

2. The Complainant contends that the use of the disputed domain name by the Respondent is an attempt to attract Internet users to its website where they would be misled into thinking it is the Complainant’s website or a website authorized by the Complainant. The content and images of the Respondents’ website are copied from the Complainant’s website and so there is a strong likelihood of confusion. Such conduct on the part of the Respondent has created a likelihood of confusion within the meaning of paragraph 4(b)(iv) of the Policy and constitutes registration and use in bad faith. The likelihood of confusion is accentuated by the use of the Complainant’s trade mark and images taken from its website. The Complainant thus contends that the Respondent has used the disputed domain name for commercial gain as the links used on the website resolving from the disputed domain name are for other businesses, including a cable company and a third party selling wedding dresses.

In conclusion, the Complainant contends that, as the use of the disputed domain name, with the intention to create commercial gain, creates a likelihood of confusion and an impression of association with the Complainant’s trade mark, the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or as specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Registrar has confirmed that the language of the registration agreement for the disputed domain name is Chinese. Furthermore, from the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceedings should be in English. Considering the facts of the case, the Complainant has decided to submit a request that English be the language of proceedings, to which the Respondent did not comment or object.

After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:

(i) The Panel’s discretion under the Policy

Paragraph 11 of the Rules provides:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.

(ii) The circumstances of this proceeding

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On the record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; (b) the contents of the website to which the disputed domain name resolves are in English; and (c) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. The Panel is of the view that if the Respondent had experienced difficulty with the English language, he could have communicated this to the Center and the Panel would have ruled accordingly. However, the Respondent has chosen not to respond to the Complainant’s allegations. Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English.

6.2 Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

(i). the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence produced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has adduced evidence to demonstrate that it has registered trade mark rights and continues to have such rights in the FOREVER NEW trade mark in many territories, including Australia, the European Union and China. The Panel finds that the Complainant has rights and continues to have such rights in the relevant FOREVER NEW mark.

In assessing the degree of similarity between the Complainant’s trade mark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s trade mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.

The disputed domain name comprises (a) an exact reproduction of the Complainant’s trade mark FOREVER NEW with the acronym of the word Australia “au”; and (b) the top level domain suffix “.com”. The Panel finds that the addition of the acronym of the word Australia “au” to be non-distinctive and it does not provide additional specification or sufficient distinction from the Complainant or its trade mark FOREVER NEW. Internet users could be confused that the Respondent’s website is one of the Complainant’s official websites selling FOREVER NEW brand products online. In fact, Internet users’ confusion is heightened in this case as the Complainant’s own website has a domain name <forevernew.com.au> whilst the disputed domain name is <forevernew-au.com>, which is very similar. It is also a well-accepted principle that the addition of a suffix such as “.net” or “.com” being the generic top level domain is not a distinguishing factor.

Accordingly, the Panel finds that the disputed domain name <forevernew-au.com> is confusingly similar to a trade mark or service mark in which the Complainant has rights.

The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

1. The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “forevernew-au” in its business operations;

2. There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the FOREVER NEW mark;

3. There is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;

4. On the Contrary, the Respondent is using the disputed domain name to purportedly sell the Complainant’s Forever New branded products on its website without the consent of the Complainant. The Respondent is not an authorised agent and does not adequately disclose its relationship with the Complainant on the website associated with the disputed domain name. The Panel finds that the Respondent therefore does not have the right to use FOREVER NEW mark in the disputed domain name. Such a behaviour on the part of the Respondent clearly shows that it is not using the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent has no rights or legitimate interests in the disputed domain name.

5. The Complainant and its FOREVER NEW mark enjoy a strong reputation in connection with fashion clothing and accessories and is a registered trade mark in many countries, including China. Consequently, in the absence of contrary evidence from the Respondent, the FOREVER NEW mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Based on the above reasons, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights to or legitimate interests in the disputed domain name.

In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has not adduced evidence of any rights to or legitimate interests in the disputed domain name.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a 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 domain name; or

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

(iii) A respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, a 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 a 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 above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by a respondent in appropriate cases.

One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trade mark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks often transcend national borders. Taking into account the strong reputation of the Complainant and its FOREVER NEW mark, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trade mark rights at the time of the registration of the disputed domain name.

Furthermore, the Complainant has established a substantial presence on the Internet through the Complainant’s official website, located at “www.forevernew.com.au”. A simple search on the Internet would reveal the presence of the Complainant’s trade mark and domain name. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trade mark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of association with the Complainant and its products.

Where the Respondent has chosen to register the disputed domain name that is identical or confusingly similar to the Complainant’s trade mark and where the mark in question has through substantial use acquired a strong reputation, a reasonable conclusion is that the mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use to the disputed domain name for purposes of bona fide offering of goods and services on the Internet. On the Contrary, the Respondent is using the disputed domain name to purportedly sell the Complainant’s Forever New branded products on its website without the consent of the Complainant. The Respondent is not an authorised agent and does not adequately disclose its relationship with the Complainant on the website associated with the disputed domain name. The Panel finds that the Respondent therefore does not have the right to use FOREVER NEW mark in the disputed domain name. Such behaviour on the part of the Respondent is indicative of bad faith registration and use. The Respondent could have explained its choice of the disputed domain and its subsequent conduct. However, the Respondent did not do so and the Panel was not provided with any plausible explanation.

The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website in accordance with paragraph 4(b)(iv) of the Policy. The Panel finds that given the strong reputation of the Complainant’s FOREVER NEW mark and a lack of plausible explanation for the choice of incorporating the Complainant’s well-known mark in the disputed domain name, the conduct of the Respondent in using the disputed domain name to purportedly sell the Complainant’s goods without authorization is certainly a relevant factor indicating bad faith registration and use.

Thus, the Panel finds for the Complainant on the third part of the test.

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 name <forevernew-au.com> be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist
Date: October 18, 2013