WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
River Island Clothing Co. Limited v. Dan Anderson
Case No. D2018-2479
1. The Parties
The Complainant is River Island Clothing Co. Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Raj Manral, Singapore.
The Respondent is Dan Anderson of Witham, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <riverislandsaleuk.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2018. On October 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 1, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 2, 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 November 5, 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 November 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2018.
The Center appointed Ian Lowe as the sole panelist in this matter on December 4, 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 fashion brand based in London and founded over 60 years ago. It adopted the business name River Island Clothing Co. Limited in 1992 and has carried on business under that name ever since. The Complainant has used the RIVER ISLAND trademark since 1988 and operates under that mark through 350 stores across the United Kingdom, Europe, Asia and the Middle East. It also promotes and markets its business through six dedicated websites.
The Complainant is the proprietor of a number of registered trademarks for RIVER ISLAND including United Kingdom trademark number 2606254 registered on January 6, 2012 and International trademark number 1140568 registered on May 3, 2012, designating over 30 countries.
The Domain Name was registered on September 21, 2017 and resolves to a website whose Home page is headed “RIVER ISLAND” and features a photograph of one of the Complainant’s RIVER ISLAND high street stores (the “Website”). The Website offers for sale a substantial number of what purport to be the Complainant’s products at heavily discounted prices.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its RIVER ISLAND trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has uncontested rights in the RIVER ISLAND trademark (the “Mark”), both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the Mark over many years. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name comprises the entirety of the Mark, together with the word “sale” and the geographic term “uk”. In the view of the Panel, the addition of these terms does not detract from the confusing similarity of the Domain Name to the Mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Respondent has used the Domain Name not in connection with a bona fide offering of goods or services, but for a website offering what the Complainant claims to be counterfeit products of the Complainant. The Panel notes that the Website is offering products for sale at what purport to be very substantially discounted prices, which is consistent with the products in question being counterfeit. There is no suggestion that the Respondent has ever been known by the Domain Name. The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Since the Respondent has used the Domain Name for a website selling what purport to be the Complainant’s goods, the Panel is in no doubt that the Respondent had the Complainant and its rights in the RIVER ISLAND mark in mind when it registered the Domain Name. The home page of the Website incorporates the Complainant’s Mark and a photograph taken from the Complainant’s website of one of the Complainant’s high street stores. The Website also features numerous photographs of the Complainant’s products that the Complainant states have been copied from its website without its authority. The Complainant further alleges that the way in which the Website operates does not appear to result in purchase orders being processed and that the strong likelihood is that the Website may also be designed to phish for personal information and credit card details. The Panel notes that the “Checkout” pages of the Website do not invoke a secure server.
In the absence of any response by the Respondent, the Panel has no reason to doubt that the Respondent is offering counterfeit goods of the Complainant on the Website, particularly given the very substantially discounted prices at which the Website is purporting to sell the goods. In the Panel’s view, the use of a domain name for such activity, clearly with a view to commercial gain, amounts to paradigm bad faith registration and use for the purposes of the Policy.
Accordingly, the Panel finds that the Domain Name has been 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 Domain Name, <riverislandsaleuk.com> be transferred to the Complainant.
Date: December 17, 2018