WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DKH Retail Limited v. Perfect Privacy LLC / Orn Valdimarsson, Arnarland ehf
Case No. D2018-1799
1. The Parties
The Complainant is DKH Retail Limited of Cheltenham, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), internally represented.
The Respondent is Perfect Privacy LLC of Jacksonville, Florida, United States of America / Orn Valdimarsson, Arnarland ehf of Statutory Gardabaer, Iceland, self-represented.
2. The Domain Name and Registrar
The disputed domain name <superdryisland.com> is registered with Register.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2018. On August 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 10, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 16, 2018.
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 Respondent of the Complaint, and the proceedings commenced on August 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2018. The Center received informal email communications from the Respondent on August 10, 2018, August 13, 2018, August 16, 2018, August 21, 2018, August 31, 2018. On August 13, 2018, the Center sent to the Parties a communication regarding possible settlement. On the same day, the Complainant replied that it was not prepared to explore settlement options. On September 1, 2018, the Respondent requested an additional four (4) calendar days in which to respond to the Complaint. In accordance with the Rules, paragraph 5(b), the due date for Response was extended to September 10, 2018. The Response was filed with the Center on September 8, 2018.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on September 18, 2018. 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 DKH Retail Limited is part of the Superdry plc group of companies, of which it is a wholly-owned subsidiary together with SuperGroup Internet Limited.
The trademark SUPERDRY was launched in England as a clothing brand in 2003 and the Complainant is the proprietor of a number of trademark registrations world-wide for SUPERDRY covering clothing and accessories, in addition to retail services for such goods, including the following:
United Kingdom trademark registration No. 2430291 SUPERDRY in classes 18 and 25 granted on April 17, 2009;
United Kingdom trademark registration No. 3160196 SUPERDRY in classes 3, 4, 8, 9, 12, 14, 16, 18, 20, 21, 24, 25, 28, 35 and 41 granted on August 19, 2016;
European Union trade mark registration No. 3528403 SUPERDRY in class 25 granted on June 22, 2005;
European Union trade mark registration No. 9883372 SUPERDRY in class 35 granted on February 2, 2012; and
Iceland trademark registration SUPERDRY No. V0096703 in classes 3, 9, 14, 18, 25, 28 and 35 granted on January 31, 2016, among many others.
The Complainant owns the domain names <superdry.co.uk> and <superdrystore.co.uk> both of which redirect to <superdry.com>.
The Respondent registered the disputed domain name <superdryisland.com> on June 8, 2018 which is used to compete with the Complainant in the market in Iceland, reproducing the Complainant’s trademark SUPER DRY in the website.
In its Response, the Respondent claims that the Complainant “started to sell superdry products to Costco Wholesale in Iceland in competition with the Respondent although the Respondent had exclusivity for the brand in Iceland”.
5. Parties’ Contentions
The Complainant asserts that the “Superdry” brand was created by Julian Dunkerton and James Holder in England towards the end of 2002 and was launched as a clothing brand in 2003. Initially through a chain of retail stores owned by Julian Dunkerton called Cult Clothing, which not before long was re-branded as SUPERDRY stores.
At present the Complainant has over 550 SUPERDRY stores selling SUPERDRY clothing and accessories across 45 countries. There are 139 owned stores across the United Kingdom and Europe. The “www.superdry.com” website sells to over 100 countries worldwide operating from 21 international websites.
The Complainant’s domain names <superdry.co.uk> and <superdrystore.co.uk> redirect to <superdry.com> which over the past months has seen an average of 1.7 million users per month.
It has a strong presence on social media with over 2 million “likes” on Facebook and 300,000 followers on Twitter.
The success of the Complainant’s “Superdry” brand since its launch in 2003 and its reputation as a quality retailer has been widely covered by the United Kingdom press, business news and industry/fashion publications.
The “Superdry” brand won the Drapers – Young Fashion Brand of the Year award in 2008. Drapers is the leading United Kingdom fashion business industry publication and its history dates back to 1887.
As a result of the Complainant’s extensive use of SUPERDRY in relation to clothing and accessories, plus retail services in relation to these goods for over 10 years the name is a well-known – highly recognizable – mark worldwide but in particular the United Kingdom and Europe.
The Complainant has worldwide trademark coverage, including Iceland, for SUPERDRY in relation to clothing and related goods and services, including the trademark registrations mentioned in paragraph 4
The Respondent knew about the Complainant’s SUPERDRY trademark due to the former business relationship between the parties. Respondent was previously a franchisee of the SUPERDRY brand, operating a franchise in Iceland with the Complainant. This relationship was terminated on March 31, 2018, before the Respondent registered the disputed domain name <superdryisland.com> on June 8, 2018.
The Respondent has not been authorized to use SUPERDRY for the disputed domain name or content.
Given that the content on the website displays clothing for sale and use of Complainant’s trademark the Respondent does not have any rights or legitimate interests in the disputed domain name.
The Respondent has not been commonly known by the disputed domain name.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Rather, the Respondent is using content (images and wording) in order to pass off as the Complainant.
In essence, the Complainant contends that the disputed domain name <superdryisland.com> is confusingly similar to the Complainant’s trademark SUPERDRY, that the Respondent has no rights or legitimate interests with respect to the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
Finally, the Complainant requests transfer of the disputed domain name to the Complainant.
In his Response, the Respondent argues the following:
The terms “super dry” are generic terms to describe that something is extremely dry, among other meanings.
“Superdry” is a United Kingdom clothing brand established in 2003. Since then the Complainant has tried to sell SUPERDRY products internationally and they are now sold on many websites as well as Costco Wholesale in Iceland.
The SUPERDRY trademark is only registered in classes 18 and 25.
Asahi Breweries Ltd. has applied to register for the trademark SUPERDRY and has been in dispute with Laundry Athletics LLP. The first registration of SUPERDRY in 1987 is owned by Asahi Group holdings Ltd.
The disputed domain name <superdryisland.com> has nothing to do with the Complainant and should not be confused with SUPERDRY as it is “superdry island”. “I am located in Iceland and it is my intention to use <superdryisland.com> in connection with the country of Iseland.”
The Respondent had invested in the brand to open franchise stores in Iceland.
The disputed domain name was registered in good faith and the Respondent who “has invested in the domain development and email registration” has full rights and legitimate interests in using it. In any case, the Complainant does not have the registered trademark of SUPERDRY ISLAND.
The Complainant uses SUPERDRY in connection with various clothing types, i.e., Superdry Snow, Superdry Sport and Superdry Athletics, but has never used it in connection with “Island”. The Complainant has, however, applied for registration of SUPERDRY ISLAND with the Icelandic Patent Office on August 1, 2018 an on July 4, 2018 registered the domain name <superdryisland.is>, after the registration of the disputed domain name on June 8, 2018, which proves that the disputed domain name was registered in good faith.
The fact that “island” is used may have reference to an “island”, however, “in this case it has reference to Iceland in Icelandic”.
The Complainant claims that “superdry” and “superdry island” will be confused although the term “superdry” in the disputed domain name <superdryisland.com> is referring to different products.
The trademark and name SUPERDRY are not as well known as the Complainant states in its Complaint. Superdry employees are only 4,800 compared to 30,800 at Asahi Group Holding Ltd.
The Complainant failed to provide any marketing brochures, trade advertisements, or other evidence of use of SUPERDRY ISLAND.
The Respondent claims that the Complainant has terminated on franchise store contract with the company Okkar ehf and no termination has taken place between the Complainant and Arnarland ehf.
Summing up, the Respondent contends that the Complainant has not proved any of the three requirements in paragraph 4(a) of the Policy.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain
name, the Complainant must prove each of the following, namely that:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which
the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights in the trademark SUPERDRY.
The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the domain name is confusingly similar to the trademark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.
In this case the disputed domain name <superdryisland.com> contains the Complainant’s trademark, SUPERDRY in its entirety. In the Panel’s opinion the addition of the word “island” is not sufficient to avoid a finding of confusing similarity.
As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “in cases where the domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark”.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) as it is viewed as a standard registration requirement (section 1.11.1 of WIPO Overview 3.0). Thus, for the test for confusing similarity of this his first prong the Panel shall disregard the “.com” included in the disputed domain name.
The Panel finds that the disputed domain name is confusingly similar to the trademark SUPERDRY in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Respondent claims that the Complainant started to sell SUPERDRY products to Costco Wholesale in Iceland “in competition with the Respondent although the Respondent had exclusivity for the brand in Iceland”.
However, the Respondent has not proved to own a trademark registration or submitted a license or similar agreement to prove such exclusive rights in the trademark SUPERDRY in Iceland. Thus, in the Panel’s view the Respondent has no such exclusive rights.
The Complainant sustains that it has never granted the Respondent with the right to use the trademark SUPERDRY belonging to the Complainant or to register it as a domain name or part thereof.
Previous panels under the Policy have found that a lack of rights or legitimate interests exists where, as here, “Complainant asserts that it has not authorized Respondent to use the mark.” Chicago Pneumatic Tool Company LLC v. Texas International Property Associates- NA NA, WIPO Case No. D2008-0144.
As sustained by the Complainant, there is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interest in the disputed domain name <superdryisland.com>. The name of the Respondent is “Orn Valdimarsson” which does not resemble the disputed domain name in any manner.
In addition the Panel notes the evidence provided by the Complainant regarding a “Notice of Termination for Breach” sent to Okkar ehf, SDR ehf & Arnarland ehf on February 28, 2018 to produce effects on March 31, 2018. The Panel also notes that the disputed domain name was registered on June 8, 2018.
The Respondent’s allegation of the disputed domain name consisting of generic terms with different dictionary meanings is irrelevant in view of the use of the disputed domain name.
As further discussed under the third element in section C, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name, but rather it is using the Complainant’s trademark without consent for the purpose of deriving unfair monitory advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name relates is the official site of the Complainant.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the disputed domain name has been both registered and used in bad faith. It is a double requirement.
The Respondent has acknowledged that the Complainant’s “Superdry” brand was established in the United Kingdom in 2003 and that since then they have tried to sell SUPERDRY products internationally. Thus there is no doubt that the Respondent was perfectly aware of the Complainant’s trademark SUPERDRY when it registered the disputed domain name <superdryisland.com> on June 8, 2018. This knowledge of the Respondent also becomes manifest from the prior business relationship between the parties which was terminated on March 31, 2018, i.e., before the Respondent registered the disputed domain name.
The Complainant has proved that its SUPERDRY trademark was well established and registered internationally well before the Respondent registered the disputed domain name.
Additionally, the fact that the Respondent has used a United States Registrar and proxy service for concealing its details does not contribute to a finding of good faith.
It should be noted that in the Response the Respondent affirms the following: “The fact that Island is used may have reference to an Island, however, in this case it has reference to the country Iceland in Icelandic.” Furthermore, the Respondent also clarifies: “I am located in Iceland and my intention is to use superdryisland.com in connection with the country of Iceland.”
It is the Panel’s view that the addition of the word “island” to the Complainant’s SUPERDRY mark in the in the disputed domain name will very likely lead to confusion and make Internet consumers think that the disputed domain name relates to the Complainant’s SUPERDRY business in Iceland.
It would seem that the Respondent mistakenly tries to argue that it has the right to register and use the disputed domain name because it only intends to use it in Iceland. Such justification is far from being acceptable under the Policy.
The Panel is of the view that the intention of the Respondent is to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant’s extensively used mark as to the source, sponsorship or affiliation. This amounts to bad faith under paragraph 4(b)(iv) of the Policy.
In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <superdryisland.com> be transferred to the Complainant.
Miguel B. O’Farrell
Date: October 2, 2018