WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boohoo.com UK Limited v. 王东岳 (Wang Dong Yue)
Case No. D2020-3526
1. The Parties
The Complainant is Boohoo.com UK Limited, United Kingdom (“UK”), represented by Wilson Gunn, UK.
The Respondent is 王东岳 (Wang Dong Yue), China.
2. The Domain Name and Registrar
The disputed domain name <boohooco.com> (the “Domain Name”) is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (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 Domain Name. On December 25, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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.
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 Karen Fong as the sole panelist in this matter on March 28, 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 the owner of the trade mark BOOHOO which it uses globally in relation to clothing, fashion accessories and retails services. It operates its online store under the domain name <boohoo.com>. The Complainant has used the BOOHOO trade mark continuously since its business was established in 2006.
The BOOHOO trade mark is registered all over the world (the “Trade Mark”). The UK trade mark submitted in evidence, UK Trade Mark Registration No. UK00002561067, has an effective registration date of March 2, 2012.
The Domain Name was registered on May 7, 2020 by the Respondent who is based in China. The Domain Name resolved to an online shop using the Complainant’s Trade Mark (the “Website”).
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Language of Proceeding
The Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should be English for the following reasons:
- The Complainant is a company based and primarily operating from the UK and so its business is conducted in English;
- The Domain Name is in Latin script and the website connected to the Domain Name is in English.
- The Complainant would be put to great expense and inconvenience to have to translate the Complaint and its evidence which would cause undue delay.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a Response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that the Notification of Complaint from the Center to the Parties was transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Domain Name contains the Trade Mark in its entirety together with the term “co”. The addition of this term does not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Mark in the Domain Name.
For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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 it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name and that the use of the Domain Name as a pay-per-click site is not a legitimate, non-commercial or fair use of the Domain Name. According to the evidence submitted by the Complainant, the Domain Name used to resolve to an online shop using the Complainant’s Trade Mark. When the Panel attempted to access the website connected to the Domain Name, the web browser produced an error message warning that the connection is not private, the website does not have a valid certificate and there is a risk that personal information may be stolen. The website is not archived on the Wayback machine.
It would appear that the Complainant has not authorised, licensed or otherwise permitted the Respondent to use the Trade Mark in the Domain Name or for any other purpose otherwise it would not have filed the Complaint. From the Respondent’s name, it would also appear that it is not commonly known by a name corresponding to the Domain Name. It would also appear from the message from the web browser that the Respondent is not using Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services, and is not making any legitimate noncommercial or fair use of the Domain Name.
The Respondent has failed to respond and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name. That being the case, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been registered and is being used in bad faith.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Name given the Trade Mark was registered prior to registration of the Domain Name and the Domain Name consists of the Trade Mark together with the letters “co”. A Google search for the term “BOOHOO” shows the Complainant’s website at the top of the results which is evidence of its distinctiveness.
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is an absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The Website is a pay-per-click site which bears the Trade Mark. The registration and use of the Domain Name by the Respondent gives rise to a perceived authorisation, endorsement or some other connection with the Complainant when none exists. It is highly likely that web users when typing the Domain Name into their browsers or finding it through a search engine would have been looking for a site operated by the Complainant rather than the Respondent.
The Domain Name is likely to confuse Internet users trying to find the Complainant’s official website. Such confusion will inevitably result due to the incorporation of the Trade Mark in its entirety in the Domain Name. The Respondent employs the fame of the Trade Mark to mislead users into visiting its website instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s website is authorised or somehow connected to the Complainant. The Panel therefore also concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) 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 Domain Name <boohooco.com> be transferred to the Complainant.
Date: April 29, 2021