WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
C. & J. Clark International Ltd v. Super Privacy Service LTD c/o Dynadot
Case No. D2020-0641
1. The Parties
The Complainant is C. & J. Clark International Ltd, United Kingdom, represented by SafeNames Ltd., United Kingdom.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America.
2. The Domain Name and Registrar
The disputed domain name <shopsclarksjp.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2020. On March 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2020, 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 March 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2020.
The Center appointed Leon Trakman as the sole panelist in this matter on May 5, 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 has provided documentation confirming its registrations for the CLARKS trademark, inter alia, in the European Union (Registrations No. 000167940 and No. 000167916, both registered on July 16, 1998), in the United States of America (Registration No. 0691307, registered on January 12, 1960), in Japan (Registration No. 4450994, registered on February 2, 2001), and an International Trademark (Registration No. 1278277, registered on August 10, 2015). The Complainant’s trademark rights have also been recognized internationally and upheld in past UDRP decisions (see, e.g., C & J Clark International Limited v. Karen Brand, WIPO Case No. DCO2015-0035; C. & J. Clark International Ltd v. Gene Bishop, WIPO Case No. D2019-3028; C & J Clark International Limited v. Ludwig Rhys, WIPO Case No. D2017-0260; C & J Clark International Limited v. Friendly Booking – Tran Ngoc Dat, WIPO Case No. D2015-1274). It has registered various domain names, such as <clarks.co.jp>. The Complainant has also used a visual word mark, CLARKS, which identifies its services. It has advertised its trademark and services on social media, most extensively on Facebook.
There is no material information provided about the Respondent’s business dealings, including intellectual property rights, other than as identified in Section 1 and Section 6 of this Decision.
The disputed domain name was registered on October 6, 2019 and resolves to a website displaying the Complainant’s CLARKS trademark and purporting to offer for sale various footwear products of the Complainant at discounted prices.
5. Parties’ Contentions
The Complainant is C. & J. Clark International Ltd, a British-based international shoe manufacturer and retailer, founded in 1825. The Complainant adduces evidence of its worldwide sale of shoes for multiple purposes, including different terrains, divergent cultures, and for adults and children. It has 1,500 branded stores and franchises worldwide, and operations in the Americas, Europe and Asia Pacific. It has mounted campaigns for selling its shoes, such as “Back to School” campaigns in the United Kingdom. It has been identified with major brands, such as Disney and Marvel, and has featured in internationally recognized publications, such as GQ, Esquire, Complex and Vogue.
The Complainant alleges that the disputed domain name registered by the Respondent is identical or confusingly similar to the Complainant’s trademark; that the Respondent does not have rights or legitimate interests in the disputed domain name, and that it registered and used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel determines that the disputed domain name is confusingly similar to the Complainant’s trademark, as required by paragraph 4(a)(i) of the Policy.
In particular, the disputed domain name incorporates the Complainant’s trademark, CLARKS, in its entirety, subject only to the addition of the prefix “shops” and the suffix “jp”. The confusing similarity arises because the Complainant’s trademark is readily recognizable, in the use of that mark in full, coupled with a word commonly identified with a place of business, namely, “shops” and the abbreviated country code of Japan, namely, “jp”. The Panel also notes that the Complainant conducts international business including in Japan where it has registered its trademark as well. It is well recognized in UDRP decisions that domain name descriptors, such along geographic lines, do not negate the “confusing similarity” between a disputed domain name and the Complainant’s trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. This widely held view is also reflected in the use of the suffix “.com”, such as in the WIPO Overview 3.0, section 1.11 and in prior UDRP decisions (e.g., Facebook, Inc. v. S. Demir Cilingir, WIPO Case No. D2018-2746, holding that the use of the generic Top-Level Domain (“gTLD”) “.com” “may be disregarded for the purposes of assessment under the first element [confusingly similar], as it is viewed as a standard registration requirement”). For a UDRP decision reaching a comparable determination on the use of the suffix “.com”, see Horten Advokatpartnerselskab v. Domain ID Shield Service CO., Limited / Krutikov Valeriy Nikolaevich, WIPO Case No. D2016-0205.
B. Rights or Legitimate Interests
The Panel determines that the Respondent does not have rights or legitimate interests in the disputed domain name, as required by paragraph 4(a)(ii) of the Policy. Registration of a domain name does not, in and of itself, accord the Respondent with rights to or legitimate interests in that domain name. Such registration does not constitute, nor approximate, unconditional ownership. (See National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118).
There is no evidence adduced in this case that the Respondent has registered any trademarks in the name CLARKS, nor any unregistered rights in such a mark, or any license or other intellectual property legal rights in it. The Respondent has also not been authorized to use that mark. The Complainant did not consent to or otherwise authorize that use, whether expressly, impliedly, ostensibly or by ratification. Nor is there any evidence that a third party with a right in that name provided such authorization.
The Respondent also has no rights or legitimate interests in Clarks. Based on the record, the Respondent is not connected in fact or in law, such as through a family link to, or business association, with that name. Nor is the Respondent commonly known by the name “Clarks”, or otherwise associated or affiliated with it, whether personally, commercially, or specifically.
In addition, based on the Panel’s discussion below, the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, nor has the Respondent made a legitimate noncommercial of fair use of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel determines that the Respondent has registered and used the disputed domain name in bad faith, as required by paragraph 4(a)(iii) of the Policy.
The Respondent has not made a legitimate noncommercial or fair use of the disputed domain name. Rather, it has acted willfully to mislead and divert consumers to its website and away from the products which are legitimately offered by the Complainant. In addition to knowingly seeking to profit from the confusion the Respondent has created in the minds of consumers, its registration and use of the disputed domain name for commercial gain, is at the expense of the Complainant, in the actual or prospective loss of customers, profits and reputation. It may be that the Respondent did not intend to diminish the Complainant’s good standing as a shoe manufacturer and supplier, nor to tarnish its trademark or service mark. However, that observation in no way diminishes the fact that the Respondent acted recklessly and must reasonably be assumed to have anticipated the actual or prospective loss the Complainant might suffer as result. Moreover, the Respondent’s action has disrupted the Complainant’s business, a result that is likely to eventuate (see RuggedCom, Inc. v. LANstore, Inc., WIPO Case No. D2005-0760).
It is probable, on the facts, that the Respondent acted in bad faith from the moment of registering and then subsequently in using the disputed domain name. Firstly, it was improbable that the Respondent did not know that the Complainant was engaged in the worldwide manufacture and sale of shoes, and that these shoes were sold internationally under the trademark CLARKS. The Complainant’s shoes are widely available and have been so for almost 200 years. They are both legally protected within and across state jurisdictions. They are also marketed extensively, including on social media. It is not reasonable to hold that the Respondent, would register and use a domain name to sell shoes marketed on its website as products of the Complainant, without realizing that at least some consumers would access its website on the false assumption that they were accessing a website that was legally authorized to sell the Complainant’s shoes. The most reasonable conclusion to draw is that the Respondent was“creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location”, as required by paragraph 4(b)(iv) of the Policy.
Secondly, there is explicit evidence which affirms the Respondent’s bad faith use of the disputed domain name. Notably, the disputed domain name resolves to a website that claims to offer footwear being marketed with the same details as those advertised by the Complainant, but at discounted prices. The fact that the Respondent purported to sell shoes in that manner, confirms the likelihood that it acted knowingly in so representing itself as the Complainant or its authorized agent. In reality, the Respondent’s intention was to take “unfair advantage of or otherwise abuse a [the] Complainant’s mark” (see WIPO Overview 3.0, section 3.1) and to engage in unfair competition with the Complainant.
Thirdly, the evidence on record reinforces that the Respondent intended to induce and deceive consumers into believing that it was affiliated with the Complainant, in marketing shoes on a website that replicated the Complainant’s trademark and logo. As a prior UDRP panel held: “[T]he display of the Complainant’s LEGO logo gave the misleading impression that the website was affiliated with, or approved by, the Complainant.” See LEGO Juris A/S v. Domain Administrator, See PrivacyGuardian.org and Sun Chong, WIPO Case No. D2019-2263. As such, it is reasonable to conclude that the Respondent was, deliberately presenting itself as the Complainant for profit. See Intellectual Property Holdings AS v. Sunny Nathan, WIPO Case No. D2012-1199. Moreover, at the bottom of the website, the disputed domain name identifies Clarks Official Site.
As a prior UDRP panel maintained “the CLARKS Mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant.” See C & J Clark International Limited v. Carlos Cessna, WIPO Case No. D2014-1487.
Fourthly, the Respondent has ignored two cease and desist letters from the Complainant. These letters specifically indicated that the disputed domain name violated the Complainant’s trademark and demanded that the Respondent cease using the disputed domain name. The Panel finds this is further evidence of bad faith. For a comparable determination by a UDRP panel, see Sanofi v. Domain Administrator, See PrivacyGuardian.org / onlinestore, willam jhonson, WIPO Case No. D2019-2846.
Accordingly, the Panel finds the Respondent has registered and used 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 <shopsclarksjp.com> be transferred to the Complainant.
Date: May 7, 2020