WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DKH Retail Limited v. 王耀 (wang yao) and 刘兵 (liu bing)

Case No. D2021-2327

1. The Parties

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

The Respondents are 王耀 (wang yao), China and 刘兵 (liu bing), China.

2. The Domain Names and Registrar

The disputed domain names <superdryclothinguksale.com> and <superdryukoutlet.com> are registered with Xin Net Technology Corp. (the “Registrar”).

3. Procedural History

The Complaint¹ was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 19, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrants 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 July 24, 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 July 28, 2021.

On July 30, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondents 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 Respondents in English and Chinese of the Complaint, and the proceedings commenced on August 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 19, 2021.

The Center appointed Matthew Kennedy as the sole panelist in this matter on September 22, 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 and accessories company and a wholly owned subsidiary of Superdry PLC. It holds multiple trademarks in multiple jurisdictions, including

- International trademark registration number 899643 for SUPERDRY, registered on August 18, 2006, designating multiple jurisdictions, including China, and specifying clothing and other goods in classes 18 and 25; and

- United Kingdom trademark registration number UK00913360656 for SUPERDRY and device (the “Superdry logo”), registered on March 14, 2015, and specifying clothing and other goods in classes 3, 4, 8, 9, 14, 16, 18, 20, 21, 24, 25 and 28.

The above trademark registrations remain current. The Complainant has also registered the domain name <superdry.com> that it uses in connection with an online store.

The Respondents are named as two individuals, both resident in China.

The disputed domain names were registered on June 14, 2021. They resolve to websites in English that prominently display the Superdry logo and offer for sale men’s and women’s clothing. The website to which the disputed domain name <superdryclothinguksale.com> resolves features an image of the Complainant’s clothing. Prices are displayed in GBP.

5. Parties’ Contentions

A. Complainant

The disputed domain names are confusingly similar to the Complainant’s SUPERDRY mark.

The Respondents have no rights or legitimate interests in respect of the disputed domain names. The websites associated with the disputed domain names display clothing for sale using the Complainant’s trademarks and logos. The Respondents do not have permission, consent or authorisation to use the SUPERDRY mark as a domain name or to use content including the Complainant’s registered marks in relation to clothing and related goods. The Respondents are not commonly known by the disputed domain names.

The disputed domain names were registered and are being used in bad faith. The Respondents are using the disputed domain names to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant’s registered brand name as to the source of the websites.

B. Respondents

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

6. Discussion and Findings

6.1 Procedural Issues

A. Consolidation: Multiple Domain Name Registrants

The amended Complaint initiates disputes in relation to nominally different domain name registrants. The Complainant submits that the registrants of the disputed domain names are either the same person or under common control and requests consolidation of the disputes against them pursuant to paragraph 10(e) of the Rules. The disputed domain name registrants did not comment on the Complainant’s consolidation request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. However, the Panel does not consider that paragraph 3(c) was intended to enable a single person or entity to put a complainant to the unnecessary time, expense and effort of initiating multiple proceedings against technically different domain name registrants, particularly when each registration raises the same issues. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or associated websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.

As regards common control, the Panel notes that the disputed domain names both incorporate the same trademark as their respective initial elements and they were both registered at the same time on the same day. They resolve to websites that have the same layout and display the same logo, menus and footers. In these circumstances, the Panel finds that the disputed domain names are under common control.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as the “Respondent”) in a single proceeding.

B. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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 Registrar confirmed that the Registration Agreements for the disputed domain names are in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the content of the websites to which the disputed domain names resolve is in English and the evidence contained in the Annexes is in English.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in this proceeding the Complaint was filed in English. The websites to which the disputed domain names resolve are in English from which it is reasonable to infer that the Respondent is able to communicate in that language. Further, despite the Center having sent the Parties an email communication regarding the language of the proceeding, and written notification of the Complaint, each one in both English and Chinese, the Respondent has not replied or expressed any interest in responding to the Complaint or participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay whereas accepting it in English does not create unfairness to either Party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements with respect to each disputed domain name:

(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.

A. Identical or Confusingly Similar

Based on the evidence presented, the Panel finds that the Complainant has rights in the SUPERDRY mark.

The disputed domain names wholly incorporate the SUPERDRY mark as their respective initial elements. They include additional words (“clothing” and “sale”, or “outlet”) and a geographical term (“uk”, being an abbreviation for “United Kingdom”). Given that the mark remains clearly recognizable within the disputed domain names, the Panel does not consider that these other elements avoid a finding of confusing similarity. See WIPO Overview 3.0, section 1.8.

The disputed domain names also include a generic Top-Level Domain (“gTLD”) suffix (“.com”). As a mere technical requirement of domain name registration, a gTLD suffix is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy.

Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As regards the first circumstance set out above, the disputed domain names resolve to websites that offer clothing for sale. The disputed domain names are confusingly similar to the Complainant’s SUPERDRY mark and the websites prominently display the Superdry logo. One of the websites displays an image of the Complainant’s clothing. The Complainant submits that the Respondent does not have permission, consent or authorisation to use the SUPERDRY mark as a domain name or to use content including the Complainant’s registered marks in relation to clothing and related goods. Regardless of whether the clothing that they offer for sale is genuine or counterfeit, the Respondent’s websites display no disclaimer that he lacks any relationship to the Complainant; on the contrary, the websites give the false impression that they are operated or endorsed by, or affiliated with, the Complainant. Moreover, the bottom of both websites display brands of third parties. In view of these circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy.

As regards the second circumstance, the Respondent is variously identified in the Registrar’s WhoIs database as “王耀 (wang yao)” and “刘兵 (liu bing)”, not either of the disputed domain names. There is no evidence indicating that the Respondent has been commonly known by the disputed domain names as envisaged by paragraph 4(c)(ii) of the Policy.

As regards the third circumstance, the disputed domain names resolve to websites offering goods for sale. This is not a legitimate noncommercial or fair use of the disputed domain names within the circumstances of paragraph 4(c)(iii) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that prima facie case because he did not respond to the Complainant’s contentions.

Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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] web site or location or of a product or service on [the respondent’s] web site or location.”

The disputed domain names were registered in 2021, after the Complainant obtained its trademark registrations for SUPERDRY, including in China, where the Respondent is resident. The disputed domain names wholly incorporate the SUPERDRY mark, combined with a dictionary word or words and a geographical term. The websites to which the disputed domain names resolve prominently display the Superdry logo. These facts indicate to the Panel that the Respondent was aware of the Complainant and targeted its SUPERDRY trademark at the times at which he registered the disputed domain names.

The Respondent uses the disputed domain names to resolve to websites that offer clothing for sale. Both websites prominently display the Superdry logo while one of them also displays an image of the Complainant’s clothing. In view of these circumstances and the findings in Section 6.2B above, the Panel finds that the disputed domain names are intended to attract Internet users by creating a likelihood of confusion with the Complainant’s SUPERDRY trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of a product on those websites, within the terms of paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 <superdryclothinguksale.com> and <superdryukoutlet.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: October 6, 2021

¹ The Complaint originally included four domain names, two of which were removed from the current proceeding through the amended Complaint submitted by the Complainant on July 28, 2021. On July 30, 2021, the Center notified the Parties and Registrar of withdrawal of the two removed domain names.