WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DKH Retail Limited v. Charles Martinez
Case No. D2019-0329
1. The Parties
The Complainant is DKH Retail Limited of Cheltenham, United Kingdom, internally represented.
The Respondent is Charles Martinez of Houston, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <superdryjacketireland.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2019. On February 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 12, 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 13, 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 14, 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 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2019.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on March 20, 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 Superdry brand was created by Julian Dunkerton and James Holder in Cheltenham, and launched as a clothing brand in 2003. Following the successful introduction of Superdry branded products to the retail stores, the business decided to open Superdry branded retail stores dedicated to selling Superdry branded products. The business floated on the London Stock Exchange in March 2010. The global brand revenue for the financial year ending 2018 was around GPB 1.6 billion. At present the Complainant has over 550 branded stores selling branded clothing and accessories across 45 different countries. The “www.superdry.com” website sells to over 100 countries worldwide operating from 21 international websites.
The Complainant is the owner of a large number of domain names including <superdrystore.com>, <superdry.com> and <superdry.ie>. Over the past 12 months the “www.superdry.com” website has seen an average of GPB 1.7 million users per month.
The Complainant is the proprietor of a number of registered trademarks, such as United Kingdom trademark registration no. 2430291 SUPERDRY granted on April 17, 2009, and European Union trade mark registration no. 9883372 SUPERDRY granted on February 2, 2012.
According to the Registrar, the Domain Name was registered on September 13, 2018. At the time of filing the Complaint, and at the time of drafting the Decision, the Domain Name resolves to a web page pretending to be a genuine web page for the Complainant.
5. Parties’ Contentions
The Complainant provides evidence of trademark registrations. The Complainant argues its trademark is well known and a highly recognizable mark worldwide, due to the Complainant’s extensive use of SUPERDRY in relation to clothing and accessories. The Domain Name begins with the Complainant’s brand name “Superdry” with the additions “jacket” and “ireland”. The additional words are generic. Internet users visiting the Domain Name will be confused as to the source of the website. This is exacerbated by the content on the Respondent’s website.
The Complainant argues that the Complainant has not given the Respondent the authorization or consent to use its trademarks in any manner. The Respondent is not commonly known by the Domain Name, and there is no evidence of use in connection with a bona fide offering of goods or services. The Respondent’s use of the Domain Name is not bona fide. The Respondent is displaying Superdry branded clothing goods for sale on the Domain Name using the Complainant’s trademarks and logos without permission, in order to pass himself off as the Complainant. The Respondent intends to misleadingly divert customers and/or tarnish the Complainant’s trademark.
The Complainant argues that the Respondent is attempting to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Domain Name incorporates a well-known trademark with no plausible explanation for having done so and it is not possible to imagine any future bona fide use by the Respondent of the Domain Name. The Complainant owns the website “www.superdry.com” and the Irish website “www.superdry.ie”. The Respondent’s website is almost identical and has the same look and feel as the Complainant’s websites. The Respondent clearly knew of the Complainant’s trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark SUPERDRY. The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name incorporates in entirety the Complainant’s trademark. The addition of “jacket” and “ireland” does not avoid a finding of confusing similarity. For the purpose of assessing confusing similarity, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register domain names containing the Complainant’s trademark or otherwise make use of its mark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered rights. There is no evidence of the Respondent’s use of, or preparations to use, the Domain Names or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. On the contrary, the Respondent’s passing himself off as the Complainant is not bona fide.
The Panel finds the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Taking into account the Complainant’s fame and the Respondent’s use of the Domain Name, the Panel concludes that the Respondent knew of the Complainant and its business when he registered the Domain Name.
The Domain Name incorporates a well-known trademark with no plausible explanation for having done so. As the Respondent seems to try to pass himself off as the Complainant, the Panel concludes the Respondent has attempted to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Moreover, the Respondent has not replied to the Complainant’s contentions.
The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of 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 Domain Name <superdryjacketireland.com> be transferred to the Complainant.
Date: March 29, 2019