WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kurt Geiger Limited v. Jia Qi Yuan, Yi Wu Shi Yi Yun Dian Zi Shang Wu You Xian Gong Si and Jia Qi Yuan

Case No. D2019-2571

1. The Parties

The Complainant is Kurt Geiger Limited, United Kingdom, represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.

The Respondent is Jia Qi Yuan, Yi Wu Shi Yi Yun Dian Zi Shang Wu You Xian Gong Si and Jia Qi Yuan, China.

2. The Domain Name and Registrar

The disputed domain names <kurtgeigershop.store> and <kurtgeiger.store> are registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2019. On October 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 23, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 23, 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 amendment to the Complaint on October 25, 2019.

On October 23, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on October 26, 2019. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amendment to 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 in English and Chinese of the Complaint, and the proceedings commenced on November 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2019.

The Center appointed Rachel Tan as the sole panelist in this matter on December 6, 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 premium footwear brand from the United Kingdom. The Complainant opened its doors on Bond Street, London, in 1963. Since the 1960s, the Complainant has been continuously devoted to creating and retailing fashion-forward footwear and accessories. The Complainant claims that it has over 70 stores worldwide and operates an online business selling more than four million pairs of shoes a year, making it the largest luxury footwear retailer in Europe.

The Complainant owns numerous worldwide registrations for the KURT GEIGER trade mark, including Denmark Registration No. VR 19001984, registered on March 30, 1990; United Kingdom Registration No. 00001481898, registered on November 13, 1992; European Union Registration No. 001996511, registered on March 20, 2002 and United States of America Registration No. 3554312, registered on December 30, 2008. In addition, the Complainant owns a domain name incorporating its KURT GEIGER trade mark, <kurtgeiger.com> registered on May 19, 1999.

The Respondent is Jia Qi Yuan, Yi Wu Shi Yi Yun Dian Zi Shang Wu You Xian Gong Si and Jia Qi Yuan, China.

The disputed domain names <kurtgeiger.store> and <kurtgeigershop.store> were registered on August 17, 2019. The disputed domain names currently resolve to invalid websites.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to its KURT GEIGER trade mark. The disputed domain names incorporate the Complainant’s KURT GEIGER trade mark in its entirety. In respect of <kurtgeigershop.store>, the addition of “shop” does not eliminate the confusing similarity between the disputed domain name and the Complainant’s KURT GEIGER trade mark. The term “store” as a generic Top-Level Domain (“gTLD”) suffix should be disregarded under the first element of the Policy.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has never licensed or permitted the Respondent to use its KURT GEIGER trade mark or to register domain names incorporating its KURT GEIGER trade mark. Furthermore, the Respondent’s use of the disputed domain names is neither a bona fide offering of goods or services nor an example of a legitimate noncommercial or fair use. Moreover, the Respondent has never been commonly known by the disputed domain names.

The Complainant finally contends that its KURT GEIGER trade mark was registered long before the disputed domain names and it is inconceivable that the Respondent was unaware of the Complainant and its KURT GEIGER trade mark when registering the disputed domain names. Further, the Respondent’s previous use of the disputed domain names was an intentional attempt to attract, for commercial gain, Internet users to the associated websites and the current passive holding of the disputed domain names is also in bad faith. In addition, the Respondent’s conduct constitutes a pattern of registering domain names to prevent the owner of a trade mark from reflecting the mark in a corresponding domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Procedural Issues

A. Language of the Proceeding

The Panel must first address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regarded to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.

In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement for each disputed domain name is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center proceeded to issue its case-related communication to the Parties in both English and Chinese. The Center decided to accept the Complaint as filed in English, accept a Respondent in either English or Chinese, and appoint a Panel familiar with both languages.

The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below:

(a) The Respondent’s choice of Latin characters for the disputed domain names and the previous content of the associated websites indicate some understanding of the English language;

(b) Even if the Respondent does not possess a sufficient command of English to understand the Compliant, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; and

(c) The Respondent has failed to reply the Complainant’s contentions. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.

6.2 Substantive Issues

A. Identical or Confusingly Similar

In respect of the disputed domain name <kurtgeiger.store>, the Panel finds that the second level component of the domain name, i.e., “kurtgeiger”, is identical to the Complainant’s KURT GEIGER trade mark.

With regard to the disputed domain name <kurtgeigershop.store>, its dominant component encompasses the Complainant’s KURT GEIGER trade mark in its entirety. The additional word “shop” is wholly descriptive of, and directly relevant to, the Complainant’s retail business. The addition of “shop” does not eliminate the confusing similarity between the disputed domain name and the Complainant’s KURT GEIGER trade mark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition(“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”

The “.store” gTLD suffix is disregarded when assessing the similarity between the disputed domain names and the Complainant’s KURT GEIGER trade mark.

Therefore, the Panel finds that <kurtgeiger.store> is identical to the Complainant’s KURT GEIGER trade mark, and <kurtgeigershop.store> is confusingly similar to the Complainant’s KURT GEIGER trade mark. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Complainant contends that the Respondent has no rights or legitimate interests as it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to use its KURT GEIGER trade mark in any manner. The Respondent’s current failure to use the disputed domain names with active websites shows the absence of a bona fide offering of goods or services. The previous use of <kurtgeigershop.store> to access a website selling goods bearing the KURT GEIGER trade mark, without permission from the Complainant, clearly did not constitute use in good faith. Moreover, the Respondent has never been commonly known by the disputed domain names.

Pursuant to the Policy, the Panel is satisfied that the Complainant has made out a prima facie casethat the Respondent has no rights or legitimate interests in respect of the disputed domain names. Thus, the burden of production shifts to the Respondent. However, the Respondent failed to submit a response to rebut the Complainant’s contentions.

The Complainant’s contentions remain unchallenged. Furthermore, there is no evidence before the Panel to show that the Respondent has rights or legitimate interests in the disputed domain names.

Accordingly, the Panel finds that the Complainant has satisfied the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Complainant owns numerous trade mark registrations worldwide for KURT GEIGER which predate the registration date of the disputed domain names by a considerable length of time. The Panel notes that “kurt geiger” is not a generic term or a common combination of words. Based on the Complainant’s evidence, the Panel accepts that through extensive use and advertising, the Complainant’s KURT GEIGER trade mark has gained a high reputation around the world. Thus, it is implausible that the Respondent registered the disputed domain names, which entirely incorporate the Complainant’s distinctive trade mark, by sheer coincidence without any awareness of the Complainant and its KURT GEIGER trade mark.

The Panel further observes that the disputed domain name <kurtgeigershop.store> previously directed Internet users to a website selling footwear on September 12, 2019. These are the same goods claimed under the Complainant’s trade mark registrations and for which the Complainant has acquired a reputation. It is also noted that the Complainant’s KURT GEIGER trade mark appears in the content of the webpages and as a trade name at the bottom of the webpage. These facts prove that the Respondent knew or must have known of the Complainant and its KURT GEIGER trade mark when registering the disputed domain names.

The disputed domain names wholly encompass the Complainant’s distinctive KURT GEIGER trade mark evidencing the fact that the Respondent is purposely attempting to attract, for commercial gain, Internet users to the associated websites, by creating a likelihood of confusion with the Complainant’s KURT GEIGER trade mark. Although the disputed domain names are currently passively held by the Respondent, given the reputation of the Complainant and its KURT GEIGER trade mark, the Panel finds that such conduct constitutes bad faith use. In addition, the Respondent owns many other domain names incorporating the trade mark or service mark of different brand owners, which proves that the Respondent is engaged in a pattern of registering domain names to prevent the owner of a trade mark from reflecting its mark in a corresponding domain name. All these facts lead the Panel to conclude that the present use of the disputed domain names by the Respondent is in bad faith.

The Complainant has put forward a compelling and well-reasoned case. The Respondent has failed to answer the Complainant’s contentions.

In the circumstances, the Panel finds that the disputed domain names were registered and are being used in bad faith. Accordingly, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) of the Policy.

7. Decision

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 <kurtgeigershop.store> and <kurtgeiger.store> be transferred to the Complainant.

Rachel Tan
Sole Panelist
Date: December 20, 2019