WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DKH Retail Limited v. ZhouXiaoJie
Case No. D2019-0040
1. The Parties
The Complainant is DKH Retail Limited of United Kingdom, internally represented, United Kingdom.
The Respondent is ZhouXiaoJie of GunagZhou, China.
2. The Domain Names and Registrar
The disputed domain name <superdryno1.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
Disputed domain name <superdryo-tp.com> is registered with Xin Net Technology Corp. (collectively, the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2019. On January 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 2019, the Registrar Xin Net Technology Corp 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. On January 10, 2019, the Registrar PDR Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to the Complainant on January 17, 2019 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 January 18, 2019.
On January 17, 2019, and on January 21, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On January 21, 2019, the Complainant requested English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 January 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2019.
The Center appointed Francine Tan as the sole panelist in this matter on February 25, 2019. 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 the owner of the SUPERDRY trade mark.
The SUPERDRY brand was created in the United Kingdom sometime towards the end of 2002 and was launched as a clothing brand in 2003. A flagship store was launched in Covent Garden, London in 2004. The business was floated on the London Stock Exchange in March 2010. The SUPERDRY trade mark has become a global brand with global revenue for the financial year ending 2018 standing at around GBP 1.6 billion.
The Complainant has over 550 Superdry-branded stores selling Superdry-branded clothing and accessories across 45 different countries. The Complainant’s “www.superdry.com” website sells clothing and accessories to over 100 countries worldwide. It is accessed by an average of 1.7 million users per month.
The Complainant has a strong social media presence with over 2 million “likes” on Facebook, 300,000 followers on Instagram and 90,000 followers on Twitter.
The Complainant has numerous registrations for the mark SUPERDRY in respect of clothing and accessories, as well as retail services, in many countries including in China where the Respondent is located (Registration Nos. 10979651 and 11576959, registered on September 7, 2015, and on March 14, 2014, respectively). The Complainant owns, inter alia, European Union registrations in Classes 9, 16, 18, 25 and 35 (Registration Nos.009883372 and 3528403, registered on February 2, 2012, and on June 22, 2005, respectively). The Complainant’s registrations for SUPERDRY date from as early as June 2005.
The disputed domain name <superdryno1.com> was registered on November 23, 2015. The disputed domain name <superdryo-tp.com> was registered on December 3, 2014. The disputed domain names resolve to websites selling clothing, footwear and bags bearing the “Superdry” brand as well as other brands, e.g., Puma, Vans, Nike, Adidas, New Balance, Timberland, Lacoste, Abercrombie & Fitch and Converse. The Complainant conducted a test purchase and identified the “Superdry” product purchased to be counterfeit.
5. Parties’ Contentions
The Complainant’s SUPERDRY trade mark is well known worldwide as a result of the Complainant’s extensive use of the mark, extensive publicity, as well as retail services provided under the SUPERDRY mark for over 10 years.
The disputed domain names are almost identical to the Complainant’s SUPERDRY mark, with the addition of the generic “no1” and “o-tp”. The word “superdry” is the dominant element in both disputed domain names. The additional terms in the disputed domain names do not remove the confusing similarity with the Complainant’s trade mark.
The Respondent has no rights or legitimate interests in the disputed domain names for these reasons:
(i) the Respondent has not been authorized to use the word SUPERDRY as a trade mark or in any way;
(ii) the Respondent is using, without the Complainant’s consent, the disputed domain names to offer clothing bearing the Complainant’s SUPERDRY trade mark;
(iii) the Respondent is not commonly known by the disputed domain names; and
(iv) the Respondent is intending to misleadingly divert customers looking for the Complainant’s SUPERDRY clothing or accessories or to tarnish the Complainant’s brand of clothing and accessories.
The disputed domain names were registered by the Respondent in bad faith. The Respondent is using the disputed domain names to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with the Complainant’s SUPERDRY trade mark as to the source of the websites. In this regard, the use of the disputed domain names is for the sale of counterfeit SUPERDRY products. The Respondent clearly knew of the Complainant’s SUPERDRY trade mark when it registered the disputed domain names. The incorporation of a well-known trade mark such as SUPERDRY in a domain name by a registrant having no plausible explanation for doing so is, of itself, an indication of bad faith. The Respondent is therefore blatantly attempting to mislead Internet users.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Procedural Issue: Language of the Proceeding
The Complainant requested that English be adopted as the language of the proceeding notwithstanding that the Registration Agreements are in Chinese. The basis put forward is that the wording in the disputed domain names is in English.
The Respondent did not respond on the issue of the language of the proceeding.
Paragraph 11(a) of the Rules provides that “[u]nless 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”. Paragraph 10(c) of the Rules stipulates that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”.
The Panel is of the view in this case that it would be appropriate for English to apply as the language of the proceeding, in view of:
(i) the nature and composition of the words making up the disputed domain names;
(ii) the content of the Respondent’s websites which reflect the copyright notice in English;
(iii) the selection of well-known western brands the Respondent shows as available on its websites;
(iv) the fact that the term “no1” is well known to English speakers to represent “number 1”; and
(v) as confirmed by the corresponding Registrar English was the language of the registration agreement for one of the disputed domain names (i.e., <superdryno1.com>).
The Panel is therefore persuaded that the Respondent is adequately comfortable with the English language. If the Respondent had any genuine difficulty with English, it could have raised this issue to the Center or requested for its Response to be filed in Chinese. The Respondent did neither. On the other hand, requiring the Complainant to have the Complaint and annexes translated into Chinese would lead to a delay in the proceeding. The Panel finds no justification for such a burden to be placed on the Complainant or for the proceeding to be delayed thereby.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Complainant has met the requirement of showing it has rights in the trade mark SUPERDRY. The trade mark is identifiable and has been incorporated in its entirety within the disputed domain names. The addition of the elements “no1”, “o-tp” and “.com” does not serve to remove the confusing similarity with the Complainant’s SUPERDRY trade mark.
The gTLD “.com” is a necessary technical feature of domain names and is not a relevant point for consideration when evaluating whether the disputed domain names are identical or confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names, which case has not been rebutted. The Complainant did not authorize the Respondent to use the SUPERDRY trade mark or to register the disputed domain names which incorporate its trade mark. The Respondent brought no evidence to show that it has been known by the name “superdry” or that its use of the disputed domain names has been in connection with a bona fide offering of goods or services.
One cannot envisage how the Respondent would be in a position to be able to support a claim of rights or legitimate interests in the disputed domain names when one considers the level of fame of the Complainant’s SUPERDRY trade mark and the use of the disputed domain names. Furthermore, it is rather inconceivable that the Respondent, being on the face of it Chinese and located in China, would have been able, by pure coincidence, to devise the term “superdry” without reference to the Complainant. The Respondent’s webpage to which the disputed domain names resolve provides no basis for believing that the Respondent has rights or legitimate interests in the disputed domain names.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
It is evident from the facts before the Panel that the Respondent was well aware of the Complainant and/or its SUPERDRY trade mark at the time it registered the disputed domain names. In fact, the Complainant’s famous trade mark (apart from those of other third parties) appears to have been specifically targeted by the Respondent. There is no conceivable reason why the Respondent chose the disputed domain names but for bad faith reasons, namely, to capture Internet traffic and to redirect Internet users looking for the Complainant’s SUPERDRY products to the Respondent’s website. The Respondent’s manner of use of the disputed domain names constitutes bad faith registration and use. As was stated by the panelist in Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, “‘VEUVECLICQUOT.ORG’ is so obviously connected with such a well-known product that its very use by someone with no connection with the products suggests opportunistic bad faith”, the same may be said of the disputed domain names, in relation to their use in connection with clothing, footwear and bags, which seems to be counterfeits.
The Complainant has therefore satisfied 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 <superdryno1.com> and <superdryo-tp.com> be transferred to the Complainant.
Date: February 26, 2019