WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DKH Retail Limited v. Charles Martinez
Case No. D2019-0383
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 <superdrygreece.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 February 19, 2019. On February 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2019, the Registrar 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 verified that the 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 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2019.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on March 27, 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 company registered in the United Kingdom and is a wholly-owned subsidiary of the owners of the SUPERDRY mark, according to the uncontested allegations of the Complainant.
The SUPERDRY mark was created in 2002 and was launched in 2003, as a clothing brand.
The brand was sold through retail stores. The business progressed and the global revenue in the financial year ending 2018 was around GBP 1.6 billion, according to the uncontested allegations of the Complainant.
Nowadays the Complainant has over 550 branded/stores selling branded clothing in 45 different countries.
The “www.superdry.com” website sells to over hundred countries worldwide, according to the uncontested allegations of the Complainant.
The Complainant is the owner of several domain names including <superdrystore.com>, <superdry.com> and <superdry.ie>. The Complainant also owns the Greek country code Top-Level Domain (“ccTLD”) “superdry.gr”, according to the uncontested allegations of the Complainant.
The Complainant is also the proprietor of many registered trademarks of the marks SUPERDRY covering clothing and accessories plus retail services in relation to these goods. Some of these registrations are:
- United Kingdom trademark registration no. 00002430291 SUPERDRY in classes 18 and 25 registered on April, 17 2009;
- European Union (“EU”) Trade Mark registration no. 003528403 SUPERDRY in class 25 registered on June 22, 2005;
- EU Trade Mark registration no. 009883372 SUPERDRY stylised in classes 9, 16 and 35 registered on February 2, 2012;
- EU Trade Mark registration no. 013360656 SUPERDRY stylised in classes 3, 4, 8, 9, 14, 16, 18, 20, 21, 24, 25, and 28 registered on March 14, 2015.
- EU Trademark Registration no. 016974917 SUPERDRY stylised in class 35 registered on October, 30 2017.
The disputed domain name was registered on September 13, 2018 long after the trademark and the domain name registrations of the Complainant. The disputed domain name resolves to a webpage offering the Complainant’s products for sale.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue relating to the default of the Respondent. The implications of a default in this case are telling since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the complainant must prove that each of these three elements are present”). As such, the Panel cannot merely grant the Complainant’s request automatically due to the default, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic, WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd, WIPO Case No. D2009‑1028.
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has presented evidence to demonstrate that it owns registered trademark rights in SUPERDRY.
The mere fact that the Respondent has added the generic country name “greece” and the generic Top-Level Domain (“gTLD”) “.com” does not affect the essence of the matter: the disputed domain name is identical or confusingly similar to the trademark of the Complainant and, in the circumstances of this case, is by itself sufficient to establish the criterion of identity or confusing similarity for purposes of the Policy, as many previous UDRP panels have found. See e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001‑0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Ltd., WIPO Case No. D2002-1021; DFDS A/S v. NOLDC INC, WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006-0252.
In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name is confusingly similar to the Complainant’s trademark SUPERDRY.
B. Rights or Legitimate Interests
The Respondent is Charles Martinez. However, it does not seem that anyone else but the Complainant and its subsidiaries own rights in the trademark SUPERDRY, according to the uncontested allegations of the Complainant.
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate registrant’s rights or legitimate interests in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case:
(i) Use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute:
The Respondent is not making a bona fide offering of goods.
(ii) An indication that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark rights:
In this case, there is no such indication from the present record.
(iii) Legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue:
Again, in this case there is no such indication from the record.
Moreover, the Respondent does not seem to have any trademark registrations including the term “superdry”. Additionally, it is to be noted that the Respondent did not present evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever.
The Panel also notes the nature of the disputed domain name consisting of the Complainant’s trademark and the term “greece” which suggests an affiliation or association with the Complainant. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
As a conclusion on this point, the Panel finds that the Complainant has established an uncontested, prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraphs 4(b)(i) to 4(b)(iv) of the Policy mention circumstances in order to demonstrate bad faith registration and use of a disputed domain name.
According to the uncontested allegations of the Complainant, the Respondent registered the disputed domain name in bad faith, in order to capitalize on the goodwill of the trademark of the Complainant and attract commercial gain. The Respondent seems to want to create an impression of association with the Complainant without permission from the latter (paragraph 4(b)(iv) of the Policy).
Furthermore, the Respondent must have known of the existence of the mark because of inter alia, the use by it of the Complainant’s website, according to the uncontested allegations of the Complainant.
Finally, the default of the Respondent in the present circumstances seems to “reinforce the inference of bad faith registration and bad faith use” (The Hong Kong and Shanghai Banking Corporation Limited v. Bill Lynn, WIPO Case No. D2001-0915).
As a consequence of the above, the Panel finds that the Respondent registered and is using the disputed domain name 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 disputed domain name <superdrygreece.com> be transferred to the Complainant.
Christos A. Theodoulou
Date: April 2, 2019