WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Top Shop/Top Man Ltd v. martin rixon
Case No. D2019-0288
1. The Parties
The Complainant is Top Shop/Top Man Ltd of London, United Kingdom, represented by Sipara, United Kingdom.
The Respondent is martin rixon of Dartford, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <topshopfashion.org> (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 February 6, 2019. On February 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 6, 2019, 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 February 7, 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 February 11, 2019.
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 February 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2019.
The Center appointed Dawn Osborne as the sole panelist in this matter on March 18, 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 the owner of the trade mark TOP SHOP, registered, inter alia, in the United Kingdom for clothing and related goods and services (such as United Kingdom registration number 0002527368A, registered on November 5, 2010).
The Domain Name registered on February 16, 2018 has been used for a site competing with the Complainant using text and images from the Complainant’s web site.
5. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
The Complainant is the owner of the trade mark TOP SHOP, registered, inter alia, in the United Kingdom for clothing and related goods and services as of 2009. The TOP SHOP brand was established in 1964.
The Domain Name registered in 2018 is confusingly similar to the Complainant’s trade mark including that mark in its entirety and adding only the descriptive term “fashion” and the generic Top-Level-Domain (“gTLD”) “.org” which do not prevent confusing similarity between the Domain Name and the Complainant’s mark.
The Respondent has no rights or legitimate interests in respect of the Domain Name. It is not commonly known by the Domain Name or authorised by the Complainant. The site attached to the Domain Name is selling goods identical to those covered by the Complainant’s TOP SHOP trade mark registrations. It has also copies text and images from the Complainant’s web site. This is not noncommercial legitimate or fair use and is seeking to attract consumers to its web site using the Complainant’s trade mark. The Respondent did not reply to a letter from the Complainant.
This use is registration and use in bad faith using a well-known trade mark intending to divert Internet traffic by creating a likelihood of confusion for commercial gain. The use of text and images from the Complainant’s web site and sale of the Complainant’s products on the Respondent’s web site shows that the Respondent is aware of the Complainant and its business.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name consists of the Complainant’s TOP SHOP mark (which is registered in, inter alia, the United Kingdom for clothing and related services), the term “fashion” and the gTLD “.org” which do not prevent confusing similarity between the Domain Name and the Complainant’s mark.
The Panel agrees with the Complainant that the addition of the term “fashion” and/or the gTLD “.org” to the Complainant’s mark does not prevent confusing similarity between the Domain Name and the Complainant’s trade mark pursuant to the Policy.
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s TOP SHOP registered mark for the purposes of the Policy.
As such the Panel holds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name.
It it is clear from the evidence that the Respondent has used the site attached to the Domain Name for competing fashion retail services which are not connected with the Complainant. The usage of the Complainant’s TOP SHOP mark which has a strong reputation for clothing and related services in relation to similar services not connected with the Complainant is not fair as the site does not make it clear that there is no commercial connection with the Complainant. As such, it cannot amount to a bona fide offering of services or a noncommercial legitimate or fair use.
The Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use the Complainant’s trade mark in this way. As such, the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
C. Registered and Used in Bad Faith
In the opinion of the Panel the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it uses the Complainant’s well-known name to offer competing fashion retail services without due cause or authorisation. The use of text and images from the Complainant’s site and the sale of some of the Complainant’s products shows the Respondent is aware of the Complainant and its business. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.
As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb 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 Domain Name <topshopfashion.org> be transferred to the Complainant.
Date: March 27, 2019