WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Top Shop/Top Man Ltd v. Name Redacted
Case No. D2019-2782
1. The Parties
The Complainant is Top Shop/Top Man Ltd, United Kingdom, represented by Sipara Limited, United Kingdom.
The Respondent is Name Redacted1 .
2. The Domain Name and Registrar
The disputed domain name <riverislandtopshop.com> (the “Disputed 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 November 13, 2019. On November 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 14, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 14, 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 November 18, 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 November 21, 2019. On November 22, 2019, a third party sent an email communication to the Center, stating that its contact details have been fraudulently used to register the Disputed Domain Name. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2019. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on December 13, 2019.
The Center appointed Nick J. Gardner as the sole panelist in this matter on January 3, 2020. 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 an English fashion retailer. It has 620 stores in the United Kingdom and stores in 40 other countries worldwide. lt fulfills sales online to over 80 countries. The first TOPSHOP store was opened in 1964.
The Complainant is the owner of a number of registered trademarks for TOPSHOP – for example, United Kingdom registration UK0002527368A registered on November 5, 2010. These trademarks are referred to collectively in this decision as the “TOPSHOP trademarks”.
The Complainant also trades via its principal website at “www.topshop.com”.
The Disputed Domain Name was registered on April 26, 2018. It is linked to a website (the “Respondent’s Website”) which prominently displays the Complainant’s trademarks. The pages also feature copyright images from the Complainant’s website as well as offering for sale a range of merchandise bearing the Complainant’s trademarks.
The Complainant has sent cease and desist correspondence to email addresses provided on the Respondent’s Website. No reply has been received.
5. Parties’ Contentions
The Complainant asserts that the Disputed Domain Name is confusingly similar to its TOPSHOP trademarks, in which the Complainant has rights. It is simply combined with the trademark of another well-known retailer in the UK.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. It says that the Respondent is not a licensee, distributor or authorized agent of the Complainant nor is it known by the Disputed Domain Name. There are no demonstrable preparations to use the Disputed Domain Name for a bona fide offering of goods or services. Rather, the Complainant says, the Respondent’s Website gives the impression that it is that of the Complainant or operated with the Complainant’s consent. The Complainant states this use is not a bona fide, fair use or noncommercial use of the Disputed Domain Name.
The Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith. It repeats its claim that the Respondent’s Website gives the impression that it is that of the Complainant or operated with the Complainant’s consent. Such conduct, says the Complainant, is misleading Internet users as to the source of the products offered for sale.
See below as to the Respondent’s identity. The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Preliminary Matters – Redaction of the Named Respondent’s Name
This case appears on the preponderance of the evidence to be a case of identity theft, the individual identified on the Registrar’s WhoIs database being an innocent party unaware of the activity being carried out in her name. In such cases, it is common practice for the Respondent’s name to be redacted from the published decision. The Panel proposes to follow the course of action adopted by the learned panel in Elkjøp Nordic A/S v. Name Redacted, WIPO Case No. D2013-1285 and set out as follows:
“As in Moncler S.r.l. v. Name Redacted, WIPO Case No. D2010-1677, Boehringer Ingelheim Pharma GmbH & Co. KG v. Name Redacted, WIPO Case No. D2012-0890 and Saudi Arabian Oil Company v. Name Redacted, WIPO Case No. D2013-0105, this is a case in which the Panel finds that the Disputed Domain Name was registered by a third-party without the involvement of the person identified in the WhoIs as the registrant of the Disputed Domain Name, against whom the Complaint was filed. The Panel has accordingly redacted the name of that person from the caption and body of this Decision. The Panel has attached as an Annexure to this Decision an instruction to the Registrar regarding transfer of the Disputed Domain Name that includes the name of that person so as to enable effect to be given to the Panel’s order. To this end, the Panel authorises the Center to transmit the Annexure to the Registrar and the parties but further directs the Center and Registrar, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that the Annex to this Decision shall not be published in this exceptional case.”
Accordingly, references in this Decision to the Respondent are, unless the context otherwise requires, to the unknown person who actually registered the Disputed Domain Name.
The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of the Disputed Domain Name that:
(i) the domain name is identical with 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the TOPSHOP trademarks.
The Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s TOPSHOP trademarks. The Respondent has simply taken the Complainant’s trademark and combined it with another well-known trademark in a manner which manifestly continues to include the Complainant’s trademark as an obvious reference within the Disputed Domain Name. As stated in section 1.12 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), it is a well-established principle that a domain name that wholly incorporates a trademark is found to be confusingly similar for purposes of the Policy, despite the fact that the disputed domain name may also contain another third-party’s distinctive mark: “Where the complainant’s trademark is recognizable within the disputed domain name, the addition of other third-party marks (i.e., <mark1+mark2.tld>), is insufficient in itself to avoid a finding of confusing similarity to the complainant’s mark under the first element”. See also for example Hoffmann-La Roche Inc. v. Charlie Kalopungi, WIPO Case No. D2010-1826, where the panel found that “the inclusion of the trademarks of other parties in the disputed domain name does not detract from the confusing similarity”.
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar to the Complainant’s trademark. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the TOPSHOP trademarks. The Complainant has prior rights in the TOPSHOP trademarks which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
The Complainant has established that its TOPSHOP trademarks are distinctive and well known within the retail fashion sector. The Disputed Domain Name contains the TOPSHOP trademarks in full and adds another retailer’s trademark. These features point clearly to an awareness by the Respondent of the Complainant and its TOPSHOP trademarks as at the date of registration of the Disputed Domain Name. Moreover, the website to which the Disputed Domain Name resolves contains the Complainant’s TOPSHOP trademarks together with copyrighted images taken from the Complainant’s website and offer for sale goods which claim to be those of the Complainant. The overall impression created by the website suggest that the Disputed Domain Name was registered by the Respondent in order to establish an online business which deceived Internet users into believing that the website was operated by, or with the authority of, the Complainant. The Respondent is plainly using the Disputed Domain Name to point to a website which masquerades as being that of the Complainant or being authorised by the Complainant.
The Respondent’s actions are clearly directly within paragraph 4(b)(iv) of the Policy: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
In addition, the Respondent has been given an opportunity to provide any legitimate explanation it may have as to its activities. Again, based on the evidence provided by the Complainant, the burden of production in this respect is shifted to the Respondent. The Panel finds that the Respondent has failed to produce any evidence to establish a good faith registration and use of the Disputed Domain Name.
The Panel accordingly finds that the Disputed Domain Name was both registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In coming to a decision, the Panel has considered whether the fact that a third party’s trademark, which is also contained within the Disputed Domain Name, means that the remedy available to the Complainant is limited. The Panel agrees with the approach taken in this regard in Philip Morris USA lnc. v. Whoisguard Protected, Whoisguard, lnc. / MARK JAYSON DAVID, WIPO Case No. D2016-2194 (<pallmall-marlboro.com>): “This Panel follows the approach taken in WhatsApp lnc. v. Private Whois whatsoppondroid.com, Private Whois, supra, that there is no basis in principle or in practice for denying a complainant the remedy of transfer merely because the disputed domain name contains, in addition to the complainant’s trademark, a trademark owned by a third party. Neither the Policy nor the Rules contain a provision that precludes the grant of the transfer remedy in this situation. Furthermore, neither the Policy nor the Rules contain a provision that precludes the third party from bringing an action under the Policy, or under any other applicable law, against the complainant in whose favor an order of transfer is made, in the event that the third party considers the complainant’s holding of the domain name to be in violation of the Policy”.
For the above reasons, this Panel sees no reason not to make the requested order of transfer of the disputed domain name to the Complainant given that its case under the three requirements of the Policy is established.
Accordingly and 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 <riverislandtopshop.com> be transferred to the Complainant.
Nick J. Gardner
Date: January 17, 2020
1 The Respondent appears to have used the name and contact details of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn.Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.