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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Coastlondon.com Limited v. 陈晓梅 (Chen Xiao Mei)

Case No. D2020-3521

1. The Parties

The Complainant is Coastlondon.com Limited, United Kingdom (“UK”), represented by Wilson Gunn, UK.

The Respondent is 陈晓梅 (Chen Xiao Mei), China.

2. The Domain Name and Registrar

The disputed domain name <coast-estore.com> is registered with Xin Net Technology Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2020. On December 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 6, 2021, 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 January 6, 2021 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 in English on January 8, 2021. In response to the Center’s notification regarding the Mutual Jurisdiction, the Complainant clarified its selection of the Mutual Jurisdiction on January 8, 2021.

On January 6, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On January 8, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on January 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2021.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on March 17, 2021. 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 UK company active in the fashion industry. The Coast fashion and retail business was established in the UK in 1996 and the COAST trademark has been in use continuously since then. The Complainant claims that on October 11, 2018, the then owner of the Coast business, Coast Fashions Limited, assigned in full its intellectual property (IP) Assets (including all trademarks) to Karen Millen Fashions Limited. The Complainant claims IP Assets were later assigned in full from Karen Millen Fashions Limited to the Complainant on August 6, 2019. The recordal of some of the title transfers have yet to be completed.

According to the Australian IP official database, the Complainant currently owns the COAST trademark registration number 1079074, which was registered on February 27, 2008 and fully completed the assignment to the Complainant later in 2020. The Complainant, through assignment, is also the owner of the European Union trademark registration number 004382339 for COAST, which was registered on August 4, 2010. The Complainant also operates a website at “www.coastfashion.com”.

The disputed domain name was created on March 30, 2017. The Complainant submits evidence that the disputed domain name directed to a website promoting and selling women’s apparels. On the date of this decision, this website is still accessible.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is confusingly similar to its registered trademarks for COAST, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Issue: Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The language of the Registration Agreement is Chinese, and the Complaint is filed in English. On January 6, 2021, the Center notified the Parties that the language of the Registration Agreement is Chinese, and invited the Parties to comment on the language of the proceeding. The Complainant confirmed its request that the language of the proceeding be English on January 8, 2021. The Respondent did not make any comments on the language of the proceeding and did not submit any arguments on the merits.

The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of the proceeding be English; the fact that the disputed domain name consists of Latin scripts; the fact that the Respondent has been notified in English and Chinese of the language of the proceeding and the Complaint, and the Respondent did not comment on the language of the proceeding and did not submit arguments on the merits (while it had the right to do so in Chinese or English); the fact that the Respondent has used the disputed domain name to direct to an English website, which indicates the Respondent can understand and use English; and the fact that Chinese as the language of the proceeding could lead to unwarranted delay and costs for the Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English.

6.2. Discussion and Findings on the Merits

The Policy requires the Complainant to prove three elements:

(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.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has valid rights in the mark COAST based on its use as a trademark and acquisition of title of the same.

As to confusing similarity, the disputed domain name consists of the Complainant’s registered trademark COAST in its entirety, followed by the descriptive part “-estore”. The applicable generic Top-Level Domain (“gTLD”) “.com” in this case is viewed as a standard registration requirement and may as such be disregarded by the Panel. See in this regard the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.11.1. Moreover, the WIPO Overview 3.0, section 1.7, states: “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing” (see also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

The Panel concludes that the disputed domain name contains the entirety of the Complainant’s registered trademark COAST, as its only distinctive feature. It is the Panel’s view that the addition of the descriptive part “-estore” after the Complainant’s registered trademark does not avert the confusing similarity between the disputed domain name and the trademark COAST. Moreover, the Panel notes that the added part is related to the Complainant’s online store. Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s registered trademark COAST. The Complainant has satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel holds that the Complainant has made out a prima facie case that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, and is not making legitimate noncommercial use or fair use of the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply.

Furthermore, the Panel notes that the nature of the disputed domain name, being confusingly similar to the Complainant’s trademark, carries a risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1), and that the Respondent is not commonly known by the disputed domain name.

On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The Panel holds that the registration of the disputed domain name was clearly intended to take unfair advantage of the COAST trademark, by using such trademark to mislead and divert consumers to the disputed domain name. Given the fame and prior registration of the COAST trademark, and the additional term “-estore” in the disputed domain name related to the Coast online store and its service, the Panel holds that the registration of the disputed domain name, clearly targeting the COAST trademark, was obtained in bad faith.

Moreover, the Complainant submits evidence that the COAST trademark has been used frequently and predominantly across the website the disputed domain name directs to for promoting and selling women’s apparels. The COAST trademark is presented in exactly the same style and font as the Complainant’s logo. Moreover, on the “FAQs” page, it displays information about the Boohoo Group, the owner of the Complainant, which is falsely presented as being connected with the Respondent. Further, on the “Privacy & Security” page, it falsely states that the Respondent is “CoastLondon.com Limited (‘Coast’)”. The above evidence shows the Respondent knows the Complainant, its products / services and its trademark, and the Respondent intends to mislead consumers for commercial gain that the Respondent is exactly the Complainant, or at least somehow connected, associated with, authorized or endorsed by the Complainant, which is not the case.

Furthermore, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the COAST mark has been registered and used extensively on fashion clothes. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent.

The Panel has reviewed all elements of this case, and in particular: the confusing similarity of the disputed domain name to the Complainant’s trademark, the fame of the Complainant’s trademark, and the Respondent’s unauthorized use of the Complainant’s mark on its website which potentially infringes upon the Complainant’s registered trademark rights, and the fact that the Respondent attempted to pass itself off as being the Complainant. On the basis of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent has registered and is using the disputed domain name in bad faith.

Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 name <coast-estore.com> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: March 31, 2021

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