WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DKH Retail Limited v. Brian Young
Case No. D2019-2210
1. The Parties
The Complainant is DKH Retail Limited, United Kingdom, internally-represented.
The Respondent is Brian Young, United States of America.
2. The Domain Name and Registrar
The disputed domain name <superdrybrasil.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 September 11, 2019. On September 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 11, 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 September 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2019.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on October 24, 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 DKH Retail Limited, the parent company of Superdry PLC and its group of companies, owners of the SUPERDRY brand. The mark SUPERDRY originated in 2003 as a secondary brand, which fame and renown grew up very fast. The group now comprises several businesses with over 550 stores across 45 different countries worldwide.
The Complainant is the owner of the SUPERDRY trademark and company name, and owns an extensive number of trademark registrations granted worldwide for the SUPERDRY Mark, including in the United Kingdom, European Union and Brazil (i.e., Brazilian Reg. No. 827940335, registered on February 12, 2008), among other jurisdictions. The Complainant has been using the SUPERDRY Mark since the 2003 (Annex 3 to the Complaint).
As stated, the Complainant has a significant portfolio of trademark registrations, domain name registrations and a reputation in the SUPERDRY brand (Annexes 4 and 5 to the Complaint).
The disputed domain name was registered on June 10, 2019, and resolves to a webpage that offers for sale products bearing the SUPERDRY trademark.
5. Parties’ Contentions
The Complainant is the owner of the SUPERDRY Mark, which has a considerable number of registrations worldwide. Proof of these allegations was presented as Annexes 4 and 5 to the Complaint. Due to the Complainant’s operations, the SUPERDRY Mark has acquired international recognition and is necessarily linked to the Complainant.
The SUPERDRY Mark is associated with the Complainant’s core business. The Complainant enjoys high reputation for its products and brand recognition.
Further, as stated by the documents presented, the registration and use of the SUPERDRY Mark predates the registration of the disputed domain name, and the disputed domain name is confusingly similar to the SUPERDRY Mark.
The disputed domain name contains the SUPERDRY Mark in association with the country name Brasil, followed by the generic Top-Level Domain (“gTLD”) “.com”. The disputed domain name contains the SUPERDRY Mark in its entirety.
On the other hand, the word “Brasil” can be considered as misleading, as it refers to the country – and the mark is well known in South America.
The disputed domain name directs to a webpage that reproduces the Complainant’s SUPERDRY Mark, as well as several products from the Complainant (or copies), that are offered for sale. Further, the advertising and other wording in the webpage are written in Portuguese, the official language from Brazil. Apparently, it is possible to order the clothing articles displayed in the webpage – which prices are depicted in Brazilian Reais.
The Complainant alleges that the registration and use of the disputed domain name intentionally mislead Internet users, and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy, in its paragraph 4(a), determines that three elements must be presented and duly proven by a complainant to obtain relief. These elements are:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is, indeed, confusingly similar to the SUPERDRY Mark, as the latter is entirely incorporated in the disputed domain name with the addition of the country name “Brasil”.
The Complainant has presented consistent evidence of ownership of the SUPERDRY Mark in jurisdictions throughout the world – including in Brazil, by presenting trademark registrations certificates.
The use of the SUPERDRY Mark with the addition of the country name “Brasil” in the disputed domain name does not prevent a finding of confusing similarity.
Given the above, the Panel finds that the Complainant has met the requirements under the first element of the Policy.
B. Rights or Legitimate Interests
There is clear evidence that the SUPERDRY Mark is registered in the Complainant’s name and is widely known as identifying the Complainant’s activities, and that the Complainant has not licensed this trademark to the Respondent.
Hence, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of a Response, the Respondent has not rebutted such prima facie case.
It has also been shown that the Respondent is making questionable use of the disputed domain name, redirecting it to a webpage that reproduces the Complainant’s SUPERDRY Mark, as well as several products from the Complainant (or copies), that are offered for sale. Apparently, it is possible to order the clothing articles displayed and the prices are depicted in Brazilian Reais.
Hence, the Panel understands that the Respondent should have been aware of the Mark and its direct relation to the Complainant.
The Panel, thus, finds for the Complainant under the second element of the Policy.
C. Registered and Used in Bad Faith
Given the circumstances of this case, the facts evidence the Respondent’s bad faith in the registration and use of the disputed domain name.
The Respondent seeks to give an overall impression that the disputed domain name is associated with the Complainant’s business, and the Panel accepts that the disputed domain name may be intended for unlawful purposes. The Respondent’s website that reproduces the Complainant’s SUPERDRY Mark, as well as several products from the Complainant further shows that it is attempting to mislead Internet users into believing that the disputed domain name is associated with the Complainant, when it is not.
In addition, the country name “Brasil” together with the wording in Portuguese language and prices in Brazilian Reais leads to conclude that the Respondent intentionally conducts the consumers to confusion. Moreover, the image of several clothing articles bearing the SUPERDRY Mark offered in the website demonstrates the Respondent’s knowledge of the Complainant’s business and Mark.
All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainant and that the Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that the Complainant has also proved the third element 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 name <superdrybrasil.com> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Date: November 7, 2019