WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DKH Retail Limited v. Domain Administrator, PrivacyGuardian.org / Eric Eichmann

Case No. D2018-2299

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 Domain Administrator, PrivacyGuardian.org of Phoenix, Arizona, United States of America / Eric Eichmann of Stuttgart, Germany.

2. The Domain Name and Registrar

The disputed domain name <superdrysklep.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2018. On October 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2018, 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 October 15, 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 October 19, 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 October 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2018.

The Center appointed Luca Barbero as the sole panelist in this matter on November 16, 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 is a wholly-owned subsidiary of Superdry PLC and is the owner of the trademark SUPERDRY, which was launched as a clothing brand in the United Kingdom in 2003.

At present, the Complainant has its head office in England and has over 550 branded stores selling branded clothing and accessories across 45 different countries, including 139 across Europe.

The Superdry business floated on the London Stock Exchange in March 2010 and its current market capitalization is over GBP 1 billion.

The Complainant is the owner, amongst others, of the following trademark registrations:

- United Kingdom trademark registration Nos. UK00002430291 for SUPERDRY (word mark), registered on April 17, 2009, in classes 18 and 25; UK00003160196 for SUPERDRY (word mark), registered on August 19, 2016, in classes 3, 4, 8, 9, 12, 14, 16, 18, 20, 21, 24, 25, 28, 35 and 41; UK00003039912 for SUPERDRY (figurative mark), registered on June 27, 2014, in classes 18 and 25;

- European Union trademark registration Nos. 003528403 for SUPERDRY (word mark), registered on June 22, 2005, in class 25; 009883372 for SUPERDRY (word mark), registered on February 2, 2012, in classes 9, 16 and 35; 013360656 for SUPERDRY (figurative mark), registered on March 14, 2015, in classes 3, 4, 8, 9, 14, 16, 18, 20, 21, 24, 25 and 28; and 016974917 for SUPERDRY (figurative mark), registered on October 30, 2017, in class 35.

The Complainant operates a website at to domain name <superdry.com> - registered on August 18, 1996 – where it advertises and offers for sale its Superdry products to users located in over 100 countries worldwide. The Complainant is also the owner of the domain names <superdrystore.pl>, registered on September 26, 2012, and <superdrystore.com.pl>, registered on November 14, 2016.

The disputed domain name <superdrysklep.com> was registered on August 7, 2018 and is pointed to a website offering for sale purported Superdry clothing products.

5. Parties’ Contentions

A. Complainant

The Complainant states that, as a result of its extensive use of the trademark SUPERDRY in relation to clothing and accessories as well as retail services in relation to these goods for over 10 years, SUPERDRY is a well-known and highly recognizable mark worldwide, in particular in the United Kingdom and across Europe.

The Complainant contends that the disputed domain name is confusingly similar to its trademark SUPERDRY since it reproduces the trademark in its entirety with the sole addition of the generic word “sklep”, meaning “shop” in Polish.

The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name because:

(i) the Complainant has not authorized the Respondent to use the trademark SUPERDRY in the disputed domain name;

(ii) the Respondent is displaying clothing goods for sale on the website to which the disputed domain name resolves, using without permission the Complainant’s trademarks;

(iii) the Respondent is not commonly known by the disputed domain name;

(iv) the Respondent is not using the disputed domain name for a legitimate, noncommercial or fair use, as it is using content taken from the Complainant’s website (namely logos and images) in order to pass itself off as the Complainant, thus intending to misleadingly diverting customers and/or tarnishing the Complainant’s earlier trademarks.

The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith since:

(i) the Respondent is using the disputed domain name to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s registered trademark as to the source of its website, as highlighted by the Respondent’s use of a domain name nearly identical to the Complainant’s trademark in relation to goods protected by the Complainant’s trademark;

(ii) the disputed domain name is very similar to the Complainant’s domain name <superdrystore.pl> - as “sklep” means “shop” or “store” in Polish – and the website at the disputed domain name has the same look and feel as the Complainant’s website in Polish version;

(iii) the Respondent’s knowledge of the Complainant’s trademarks is apparent from the content of the website to which the disputed domain name resolves, most of which has been taken from the Complainant’s website and uses the Complainant’s registered trademarks in exactly the same form;

(iv) the incorporation of the Complainant’s well-known trademark in the disputed domain name without any plausible explanation for doing so is an indication of bad faith.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

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

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

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

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights over the trademark SUPERDRY based on the registrations for the word mark SUPERDRY cited under section 4 above and the related trademark details submitted as annexes to the Complaint.

It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Moreover, where the relevant trademark is recognizable within the disputed domain name, the addition of a descriptive term does not prevent a finding of confusing similarity under the first element (section 1.8 of the WIPO Overview 3.0).

The Panel notes that the disputed domain name reproduces the trademark SUPERDRY in its entirety with the mere addition of the generic term “sklep” (“shop” in Polish), which does not prevent a finding of confusing similarity. The Top-Level Domain (“TLD”) “.com” can be disregarded under the first element confusing similarity test, being a standard registration requirement (section 1.11 of the WIPO Overview 3.0).

Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not submitting a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.

According to the records, there is no relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain name. Moreover, there is no evidence that the Respondent might be commonly known by the disputed domain name.

The Panel finds that the Respondent’s use of the disputed domain name to redirect users to a website promoting the sale of purported Superdry products and publishing without authorization the Complainant’s trademarks, without displaying any disclaimer as to the lack of affiliation with the Complainant, does not amount to a bona fide offering of goods or services, as it does not meet the standards set forth in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the “Oki Data Test”) for a reseller to claim a legitimate interest in a domain name encompassing a complainant’s trademark.

Moreover, since the Respondent’s use of the disputed domain name is clearly commercial and apt to create confusion with the Complainant’s trademark as to the source or affiliation of the Respondent’s website, the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.

The Panel finds that, in view of the Complainant’s prior registration and use of the trademark SUPERDRY in connection with the Complainant’s production and sale of clothing and accessories, the Respondent was or should have been aware of the Complainant’s trademark at the time of registration.

Furthermore, the circumstance that the disputed domain name has been pointed to a website featuring the Complainant’s SUPERDRY trademarks, images and other content taken from the Complainant’s website demonstrates that the Respondent was indeed well aware of the Complainant, its trademark and activity.

The Panel also notes that, in view of the use of the disputed domain name to divert users to the website described above, promoting the sale of purported Superdry clothing products and publishing the Complainant’s trademarks and images without providing any disclaimer as to the lack of affiliation with the Complainant, the Respondent intentionally attempted to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves according to paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the Complainant has also proven the requirement prescribed by paragraph 4(a)(iii) of the Policy.

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 <superdrysklep.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: November 30, 2018