WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DKH Retail Limited v. Domain Admin, Whoisprotection.cc

Case No. D2021-1462

1. The Parties

The Complainant is DKH Retail Limited, United Kingdom, internally represented.

The Respondent is Domain Admin, Whoisprotection.cc, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <superdryoutletaustralia.com> is registered with Alibaba.com Singapore
E-Commerce Private Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2021. On May 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 2021, 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 May 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 22, 2021.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 9, 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 in the clothing and accessories business, being the owner of the SUPERDRY trademark created by Julian Dunkerton and James Holder in 2003. The Complainant owns, amongst hundreds of others the following trademark registrations (Annexes 2 and 3 to the Complaint):

- United States trademark registration No. 77571760 for SUPERDRY and device, filed on September 17, 2008, registered on December 4, 2012, and valid until December 4, 2022, in class18;

- United States trademark registration No. 77571765 for SUPERDRY and device, filed on September 17, 2008, registered on April 30, 2013, and valid until April 30, 2023, in class 25;

- European Union trademark registration No. 3528403 for SUPERDRY, filed on October 31, 2003, registered on June 22, 2005, and valid until October 31, 2023, in class 25;

- European Union trademark registration No. 9883372 for SUPERDRY, filed on April 11, 2011, registered on February 2, 2012, and valid until April 4, 2031, in classes 9, 16, and 35;

- United Kingdom trademark registration No. UK00002430291 for SUPERDRY, filed on August 16, 2006, registered on April 17, 2009, and valid until August 18, 2026, in classes 18 and 25;

- United Kingdom trademark registration No. UK00907339997 for SUPERDRY and device, filed on October 14, 2008, registered on December 18, 2019, and valid until October 14, 2028, in class 25.

The disputed domain name <superdryoutletaustralia.com> was registered on November 25, 2020. Currently an online shop selling clothes and reproducing the Complainant’s logo and Complainant’s official website look-and-feel is available from the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant asserts to be the owner of the well-known and highly recognizable SUPERDRY. trademark, largely featured in mass media and worn by celebrities and world-famous athletes including David Beckham, Bradley Cooper, Zac Efron, Kylie Jenner, Idris Elba, Kate Winslet, Justin Bieber, Leonardo Dicaprio, amongst many others.

Having over 635 branded stores selling branded clothes and accessories across 62 different countries, the Complainant further asserts that its <superdry.com> website sells to over 215 countries worldwide, having the SUPERDRY. trademark achieved a well-known status.

The disputed domain name is, according to the Complainant, confusingly similar to the Complainant’s well‑known trademark, only serving the addition of “outletaustralia” to strengthen the likelihood of confusion thereof.

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name given that:

(a) the Respondent is using the Complainant’s trademark without consent or authorization, not holding any rights or legitimate interests in the disputed domain name;

(b) the Respondent is not commonly known by the disputed domain name, not having had permission, consent or authorization to use SUPERDRY as a domain name or use content in relation to clothing and related goods; and

(c) the Respondent is using the disputed domain name in a clear attempt to pass off as the Complainant, misleadingly diverting the Complainant’s customers, what cannot be considered as a bona fide offering of goods or services in accordance with Paragraph 4(c)(i) of the Policy.

As to the registration of the disputed domain name in bad faith, the Complainant asserts that the Respondent knew or should have known of the Complainant’s trademark rights at the time of the registration given the reproduction of the Complainant’s logo in the online shop available at the disputed domain name. The Complainant further states that the Respondent is deliberately using the disputed domain name in connection with a competing online shop to sell clothing and accessories, trying to pass off as the Complainant or to create a misleading impression of association with the Complainant. Thus, according to the Complainant, the Respondent is unfairly seeking to capitalize on the goodwill and fame of the Complainant’s trademark by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its website, making Internet users believe that the website is associated, endorsed or recommended by the Complainant, which is not true.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:

(i) the disputed 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 in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Complainant has established rights in the SUPERDRY trademark duly registered in several countries around the world (Annexes 2 and 3 to the Complaint).

The Panel finds that the disputed domain name reproduces the Complainant’s mark in its entirety. Further, the Panel finds that the terms “outlet” and “australia” do not prevent a finding of confusing similarity. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.8.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The first element of the Policy has been established.

B. Rights or Legitimate Interests

The Panel notes that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production has therefore shifted to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests.

The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from default as it considers appropriate pursuant to paragraph 14(b) of the Rules.

Indeed the Respondent is using the disputed domain name, which is confusingly similar with the Complainant’s well-known trademark, to resolve to an online shop depicting the Complainant’s logo and offering identical or similar products to those offered by the Complainant. Such cannot be considered a bona fide offering of goods or services under the Policy.

Therefore, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name. The second element of the Policy has also been met.

C. Registered and Used in Bad Faith

This case presents the following circumstances which indicate bad faith registration and use of the disputed domain name:

a) the Complainant’s trademark is registered worldwide and is well known;

b) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by him of the disputed domain name;

c) the Respondent evidently was aware of the Complainant and its trademarks in view of the contents of the website that resolves from the disputed domain name;

d) the Respondent gave a false physical address to which the Center’s communications could not be delivered;

e) the reproduction of the Complainant’s website’s look-and-feel enhances the likelihood of confusion as to the source, sponsorship, affiliation or endorsement of such website, making Internet users believe that the website is associated, endorsed or recommended by the Complainant, which is not true.

For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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 name <superdryoutletaustralia.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: July 20, 2021