WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DKH Retail Limited v. Zuhal Topuz
Case No. D2021-0008
1. The Parties
The Complainant is DKH Retail Limited, United Kingdom, represented internally.
The Respondent is Zuhal Topuz, Turkey.
2. The Domain Names and Registrars
The disputed domain names <superdrycode.com>, <superdrystudios.com>, and <superdryx.com> are registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2021. On January 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 6, 2021, 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 January 14, 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 on January 15, 2021.
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 January 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2021.
The Center appointed William R. Towns as the sole panelist in this matter on March 3, 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 clothing retailer founded in the United Kingdom (“UK”). The Complainant trades under the SUPERDRY name and successfully launched its clothing brand in 2003. The Complainant’s success ultimately brought about the opening of over 200 SUPERDRY stores in the UK and Europe. In addition, the Complainant currently maintains more than 600 branded stores in over 60 countries and sells clothing and accessories online at the Complainant’s “www.superdry.com” website. The Complainant generated global revenues in the 2018 fiscal year of GBP 1.6 billion.
The Complainant is the owner of SUPERDRY and SUPERDRY-formative marks registered in the UK and the European Union (collectively the “SUPERDRY Marks”), including the following:
- European Union Trade Mark (EUTM) registration No. 003528403 for SUPERDRY registered June 22, 2005;
- UK registration No. UK00002430291 for SUPERDRY registered April, 17 2009;
- EUTM registration No. 009883372 for SUPERDRY registered February 2, 2012;
- EUTM registration No. 013360656 for SUPERDRY registered March 14, 2015;
- EUTM Registration No. 016974917 for SUPERDRY registered October 30; 2017;
- UK registration No. 00003160196 for SUPERDRY, registered August 19, 2016;
- UK registration No. -00003535611 for SUPERDRY CODE filed September 21, 2020 and registered January 15, 2021;
- EUTM registration No. 018311294 for SUPERDRY CODE filed September 22, 2020 and registered February 27, 2021;
- UK registration No. -00003535605 for SUPERDRY STUDIOS filed September 21, 2020 and registered January 15, 2021;
- EUTM registration No. 018311290 for SUPERDRY STUDIOS filed September 22, 2020 and registered February 27, 2021;
- UK registration No. UK00003535617 for SUPERDRY X filed September 21, 2020 and registered January 15, 2021;
- EUTM registration No. 018311297 for SUPERDRY X filed September 22, 2020 and registered February 27, 2021.
The Complainant launched a marketing campaign on September 6, 2020, featuring several new style choices including “Superdry Studios”, “Superdry Code”, and “Superdry X”. On September 18, 2020, the collection was featured on the Complainant’s website. The Respondent registered the disputed domain names <superdrycode.com>, <superdrystudios.com>, and <superdryx.com> on September 21, 2020, offering the disputed domain names for sale on the Sedo Domain Marketplace at the price of USD 988 each.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain names <superdrycode.com>, <superdrystudios.com> and <superdryx.com> are identical and confusingly similar to the Complainant’s SUPERDRY Marks. The Complainant emphasizes that its SUPERDRY registrations predate the Respondent’s registration of the disputed domain names, and notes that the Complainant’s SUPERDRY CODE, SUPERDRY STUDIOS, and SUPERDRY X marks each were filed on the same day the disputed domain names were registered by the Respondent. The Complainant emphasizes that the inclusion in the disputed domain names of descriptive or dictionary words such as “code” or “studios” or the letter “x” in the disputed domain name does not dispel the confusing similarity of the domain names to the Complainant’s SUPERDRY mark.
The Complainant maintains, given the extensive used of the SUPERDRY mark for 17 years, that the Complainant’s SUPERDRY Marks are recognizable and well known worldwide, particularly in the UK and Europe. According to the Complainant, the success of the Complainant’s SUPERDRY brand and its reputation as a premium retailer have been widely covered in the press, business news and industry, and in fashion publications.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant maintains that the Respondent has not been commonly known by the disputed domain names, and has not been licensed or otherwise authorized to use the Complainant’s SUPERDRY Marks in connection with the disputed domain name or any related content. The Complainant submits that the Respondent has not used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services, and is neither making a legitimate noncommercial or fair use of the disputed domain names. The Complainant contends that the Respondent has opportunistically registered the disputed domain names in order to diverting customers away from the Complainant’s website and sell the disputed domain names at an exorbitant price.
The Complainant concludes that the disputed domain names have been registered and used in bad faith by the Respondent. The Complainant submits that the Respondent clearly knew of the Complainant’s SUPERDRY Marks when registering multiple domain names three days after the Respondent’s launch of its style choices on Instagram. The Complainant maintains that the incorporation of a well-known trademark in a domain name by a registrant having no plausible explanation for doing so in and of itself may be indicative of bad faith. The Complainant further contends that the Respondent is using the disputed domain names to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s registered SUPERDRY brand.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation (“Milwaukee”) v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with relevant evidence of rights or legitimate interests in the domain name, once the complainant has made a prima facie showing See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain names <superdrycode.com>, <superdrystudios.com> and superdryx.com> are confusingly similar to the Complainant’s SUPERDRY mark. The Panel also finds that the disputed domain name <superdrycode.com> is identical to the Complainant’s SUPERDRY CODE mark; that the disputed domain name <superdrystudios.com> is identical to the Complainant’s SUPERDRY STUDIOS mark; and that the disputed domain name <superdryx.com> is identical to the Complainant’s SUPERDRY X mark.1 In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
In this case, the Complainant’s SUPERDRY Marks are clearly recognizable in the disputed domain names.3 The inclusion of the dictionary words “code”, “studios”, and the letter “x” in the respective disputed domain names does not serve to dispel the confusing similarity of the disputed domain names to the Complainant’s SUPERDRY mark. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.4 Top-Level Domains (“TLDs”), in this case “.com”, generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy.5
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The Respondent has registered multiple domain names that are confusingly similar and in some instances identical to the Complainant’s SUPERDRY Marks. It is undisputed that the Respondent has not been licensed or otherwise authorized to use the Complainant’s SUPERDRY Marks. The Respondent notwithstanding has registered the disputed domain names, in which the Complainant’s SUPERDRY Marks clearly are recognizable, and is actively offering the disputed domain names for sale on the Sedo Marketplace.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a 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 disputed domain names 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 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.
The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Panel concludes from the record that the Respondent clearly was aware of the Complainant and had the Complainant’s SUPERDRY Marks firmly in mind when registering the disputed domain names. The Panel finds that the Respondent has neither used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy. As previously noted the Respondent has not been authorized to use the Complainant’s mark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names within the meaning of paragraph 4(c)(iii) of the Policy, and the Panel concludes that the Respondent has not been commonly known by the disputed domain names within the contemplation of paragraph 4(c)(ii) of the Policy. The Panel concludes from the record that the Respondent registered the disputed domain names with the sole aim of exploiting and profiting from the Complainant’s SUPERDRY Marks.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004‑0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds that the Respondent was aware of the Complainant and had the Complainant’s SUPERDRY Marks firmly in mind when registering the disputed domain names. The record is clear beyond cavil that the Respondent registered of the disputed domain names in order to exploit or otherwise profit from the Complainant’s trademark rights by selling the disputed domain names to the Complainant or other potential buyers for an amount likely in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <superdrycode.com>, superdrystudios.com>, and <superdryx.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: March 18, 2021
1 When registering the disputed domain names <superdrycode.com>, <superdrystudios.com> and <superdryx.com> on September 21, 2020, the Respondent almost certainly would have been aware of Complainant’s well-known SUPERDRY mark. It strikes the Panel as more than mere coincidence that the Respondent chose to register the disputed domain names at issue on the same day the Complainant filed applications to register the SUPERDRY CODE, SUPERDRY STUDIO, and SUPERDRY X marks, each of which subsequently were registered on January 15, 2021. In the attendant circumstances the Panel considers it more likely than not that the Respondent’s intent in registering the disputed domain name was to unfairly capitalize on the Complainant’s nascent (i.e., unregistered) trademark rights. See WIPO Overview 3.0, section 3.8.2.
2 See WIPO Overview 3.0, section 1.7.
3 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
4 See WIPO Overview 3.0, section 1.8 and cases cited therein.
5 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.