WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DKH Retail Limited v. 陈佳进 (Joyce Cheadle)
Case No. D2021-1179
1. The Parties
Complainant is DKH Retail Limited, United Kingdom (“UK”), represented internally.
Respondent is 陈佳进 (Chen Jiajin), Joyce Cheadle, China.
2. The Domain Name and Registrar
The disputed domain name <superdrywuk.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 April 16, 2021. On April 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 19, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On April 21, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. Complainant confirmed the request that English be the language of the proceeding on April 23, 2021. Respondent did not comment on the language of the proceeding.
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 Respondent of the Complaint in English and Chinese, and the proceedings commenced on May 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 8, 2021.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on June 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
Complainant, DKH Retail Limited, is the owner of the SUPERDRY brand, which was created in Cheltenham, England towards the end of 2002 and launched as a clothing brand in 2003. The business was listed on the London Stock Exchange in March 2010 and the global brand revenue for the financial year ending 2018 was around GBP 1.6 billion, with the current market capitalization over GBP 1 billion.
Complainant’s head office is in Cheltenham, England and it has over 635 stores selling clothing and accessories across 62 different countries, with 239 owned stores across the UK and European Union. The “www.superdry.com” website sells to over 215 countries worldwide operating from several international websites.
Complainant owns a number of registered trademarks and trademark applications for the brand SUPERDRY, including:
UK trademark registration No. 2430291 for SUPERDRY, registered on April 17, 2009;
European Union trademark registration No. 3528403 for SUPERDRY, registered on June 22, 2005;
United States trademark registration No. 77571765, for SUPERDRY, registered on April 30, 2013; and
United States trademark registration No. 77571749 for SUPERDRY, registered on December 21, 2010.
Complainant is also the owner of and operates a large number of domain names with the SUPERDRY mark, including <superdry.com>, <superdrystore.com>, and <superdry-sport.com>. The SUPERDRY business also features celebrities promoted on mass media, for example, the Superdry Facebook page “www.facebook.com/Superdry” wearing Superdry clothes.
Respondent registered the Domain Name on December 26, 2018. At the time of the filing of the Complaint, the Domain Name resolved to a website that displayed clothing for sale, and prominently featured Complainant’s trademarks, logos and related SUPERDRY content.
5. Parties’ Contentions
Complainant contends that (i) the Domain Name is identical and confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.
In particular, Complainant contends that it has trademark registrations for the SUPERDRY marks and own Domain Name incorporating the SUPERDRY marks. Complainant contend Respondent registered and is using the Domain Name to confuse Internet users looking for bona fide and well-known SUPERDRY products and services.
Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s marks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Procedural Issue – Language of the Proceeding
The Rules, in 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.
Complainant submits in its communication to the Center on April 23, 2021 and in the Complaint that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreement is in Chinese.
Complainant contends that the Domain Name resolved to a website with links to other websites with advertisements in English, which features Complainant’s SUPERDRY trademarks, logos and content, which indicates Respondent’s ability to understand and use English. Complainant also contends that it is incorporated and domiciled in the UK, and its headquarters and main place of business is in the UK.
In exercising its discretion to use a language other than that of the outstanding subject 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 Complainant’s submissions regarding the language of the proceeding. The Panel notes that in any case, all of the communications from the Center to the Parties were transmitted in both Chinese and English. Respondent chose not to comment on the language of the proceeding nor did Respondent choose to file a response. The Panel also notes that the Domain Name was registered in characters using Latin characters.
The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-effective manner. Complainant may be unduly disadvantaged by having to translate all case relevant documents into Chinese and to conduct the proceeding in Chinese. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
6.2. Substantive Issues
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of their rights in the SUPERDRY marks, which have been registered since at least as early as 2005, well before Respondent registered the Domain Name on December 26, 2018, as noted above. Complainant has also submitted evidence, which supports that the SUPERDRY marks are widely known trademarks and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the SUPERDRY marks.
With Complainant’s rights in the SUPERDRY mark established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
Here, the Domain Name is confusingly similar to Complainant’s SUPERDRY marks. These marks, which are fanciful and inherently distinctive, are recognizable in the Domain Name. The incorporation of the SUPERDRY mark with the voluntary addition of the term “wuk” after “superdry”, in the Domain Name <superdrywuk.com> does not prevent a finding of confusing similarity between Complainant’s trademarks and the Domain Name registered by Respondent.
Thus, the Panel finds that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the SUPERDRY marks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the SUPERDRY trademarks or to seek registration of any domain name incorporating the trademarks. Respondent is also not known to be associated with or commonly known by the SUPERDRY marks.
In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that the Domain Name resolved to a website that displayed clothing for sale, and prominently featured Complainant’s trademarks, logos and related SUPERDRY content. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name.
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant have met their burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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.”
The Panel finds that Complainant provided ample evidence to show that registration and use of the SUPERDRY marks long predate the registration of the Domain Name by Respondent. Complainant is also well established and known. Indeed, the record shows that Complainant’s SUPERDRY marks and related services are widely known and recognized. Therefore, and also noting the composition of the Domain Name itself, Respondent was likely aware of the SUPERDRY marks when it registered the Domain Name, or knew or should have known that the Domain Name was identical or confusingly similar to Complainant’s marks. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.
The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007.
Further, the Domain Name not only incorporates Complainant’s SUPERDRY mark, with the addition of the term “wuk” after “superdry”, in the Domain Name, <superdrywuk.com>, which suggests Respondent’s actual knowledge of Complainant’s rights in the SUPERDRY mark at the time of registration of the Domain Name and its effort to opportunistically capitalize on the registration and use of the Domain Name. In particular, at the time of the filing of the Complaint, the Domain Name resolved to a website that displayed clothing for sale, and prominently featured Complainant’s trademarks, logos and related SUPERDRY content. Such use is misleading to Internet users, creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website. It is also potentially disruptive to Complainant’s business activities and may result in tarnishing Complainant’s reputation and good will.
Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) 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 <superdrywuk.com> be transferred to Complainant.
Kimberley Chen Nobles
Date: July 5, 2021