WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DKH Retail Limited v. Domain Admin, Whoisprotection.cc and 谢阿军 (Xie A Jun)
Case No. D2021-2552
1. The Parties
The Complainant is DKH Retail Limited, United Kingdom (“UK”), internally represented.
The Respondents are Domain Admin, Whoisprotection.cc, Malaysia, and 谢阿军 (Xie A Jun), China.
2. The Domain Names and Registrars
The disputed domain name <superdryshoponline.com> is registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”).
The disputed domain name <superdryshopping.online> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
The disputed domain names are referred to collectively as the “Disputed Domain Names” hereafter, unless it is otherwise appropriate to refer to a specific domain name.
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2021. On August 6, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On August 10, 2021, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants and providing the contact details.
On September 17, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On September 17, 2021, the Complainant submitted a 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 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 September 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on October 22, 2021.
The Center appointed Joseph Simone as the sole panelist in this matter on October 29, 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, DKH Retail Limited, is the in-house resource at Superdry PLC and its group companies, including its wholly-owned subsidiaries DKH Retail Limited and Supergroup Internet Limited, and is the owner of the SUPERDRY brand.
The SUPERDRY brand has over 768 SUPERDRY-branded locations in 65 countries, including 245 owned stores across the UK and mainland Europe, 497 franchised and licensed stores and 26 concessions. The Complainant offers its goods in over 100 countries worldwide, operating from the domain name <superdry.com> and 21 international websites.
The Complainant has an extensive global portfolio of trade marks containing SUPERDRY, including the following:
- China Trade Mark for 极度乾燥;SUPERDRY, Registration No. 7017862, in Class 25, registered on October 7, 2015;
- United Kingdom Trade Mark for SUPERDRY, Registration No. UK00002430291, in Classes 18 and 25, registered on April 17, 2009;
- European Union Trade Mark for SUPERDRY, Registration No. 003528403, in Class 25, registered on June 22, 2005.
The Complainant owns the domain name <superdry.com>.
The Disputed Domain Names <superdryshoponline.com> and <superdryshopping.online> were registered on December 5, 2020, and March 21, 2020, respectively.
According to screenshots provided by the Complainant, at the time of filing the Complaint, the two Disputed Domain Names resolved to two websites that purport to be the Complainant’s official website.
5. Parties’ Contentions
The Complainant asserts that it has prior rights in the SUPERDRY trade marks and that it is a leading player in its fields of business.
The Complainant further asserts that the Disputed Domain Names are identical or confusingly similar to the Complainant’s SUPERDRY trade marks, and the addition of the terms “shopping” or “shoponline” do not affect the analysis of whether the Disputed Domain Names are identical or confusingly similar to the Complainant’s trade marks.
The Complainant also asserts that it has not authorized the Respondents to use the SUPERDRY mark and/or the “Superdry” name, and there is no evidence to suggest that the Respondents have used, or undertaken any demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services.
The Complainant further asserts that there is no evidence suggesting that the Respondents have any connection to the SUPERDRY mark in any way, and that there is no plausible good faith reason for the Respondents to have registered the Disputed Domain Names, especially after considering the relevant circumstances. The Complainant therefore concludes that the registration and any use of the Disputed Domain Names whatsoever must be in bad faith.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Consolidation of Multiple Respondents
The Complaint initiates disputes in relation to two nominally different domain name registrants, but argues that the two named Respondents are, in fact, the same entity and/or that the two Disputed Domain Names are under common control:
- The two Disputed Domain Names are managed by the same service – Alibaba with the same domain abuse email and number;
- The two Disputed Domain Names have the same Name Server Provider, i.e., Cloudfare;
- The two Disputed Domain Names are almost identical in name with “superdry”, “online”, and “shop” all present; and
- The associated websites to the two Disputed Domain Names have almost identical content layout mimicking the Complainant’s brand and images.
The Respondents did not comment on the Complainant’s request.
Paragraph 4(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281, reviewed the relevant UDRP decisions in relation to consolidation in multiple respondent’s cases and extracted the following general principles:
“Paragraph 10(e) of the Rules grants the Panel authority to “decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”. Similarly, paragraph 3(c) of the Rules provides that a complaint “may relate to more than one domain name, provided that the names are registered by the same domain name holder”. Prior UDRP panels have treated multiple registrants controlled by a single person as one single respondent for the purposes of the Policy. See, e.g., Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281; Archipelago Holdings LLC. v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales, WIPO Case No. D2001-0729. Absent common control, “[n]either the Policy nor the Rules otherwise make explicit provision for proceedings against legally separate respondents to be combined”. See, General Electric Company v. Marketing Total S.A., WIPO Case No. D2007-1834.”
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2:
“Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names, (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).”
The Complaint documents that the two Disputed Domain Names target the Complainant’s trade marks in combinations with highly similar elements, use a same registrar abuse email and phone number, and resolve to an associated website that purports to be the Complainant’s official website. The Panel also notes that the registrant details of the Disputed Domain Name <superdryshoponline.com> correspond to a privacy service obscuring underlying registrant details.
The use of the same registrar service is, by itself, insufficient to demonstrate common control. However, the fact that both Disputed Domain Names resolve to a website that purports to be the Complainant’s official website and are registered with nearly identical elements, along with other factors highlighted by the Complainant, tends to suggest that the Disputed Domain Names are under common control and thus that consolidation is justified. Furthermore, the Panel notes that the Respondents did not object to the consolidation request or otherwise participate in the present proceedings. The Panel does not consider there would be any prejudice to either Party should consolidation be granted.
Accordingly, the Panel finds that the Disputed Domain Names or corresponding websites are, more likely than not, subject to common control, and the consolidation would be fair and equitable to all Parties. The Panel also finds that it would be more procedurally efficient to deal with all of the Disputed Domain Names in a single proceeding.
The Panel notes the Respondents may be referred to collectively as the “Respondent” hereafter, unless it is otherwise appropriate to refer to a relevant individual.
B. Language of the Proceeding
In accordance with paragraph 11(a) of the Rules:
“[…] 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.”
In this case, the language of the Registration Agreement for the Disputed Domain Name <superdryshopping.online> is Chinese. The language of the Registration Agreement for the Disputed Domain Name <superdryshoponline.com> is English.
The Complainant filed the Complaint in English, and requested that English be the language of the proceeding, asserting inter alia that the Complainant is of UK nationality, and that:
- the content on the website resolving from the Disputed Domain Names is in English;
- the evidence contained in the Annexes are in English;
- the Complainant is incorporated and domiciled in the UK; and
- the Complainant has its headquarters and main place of business in the UK.
The Respondent was notified in both Chinese and English of the language of the proceeding and the Complaint, and did not comment on the language of the proceeding or submit any response on the merits of these proceedings.
The Panel has also considered the fact that the Disputed Domain Names are in English and written in Latin letters and not in Chinese characters, and the fact that adopting Chinese as the language of these proceedings could lead to unwarranted delays and costs for the Complainant.
Considering the circumstances in this case, the Panel has determined that the language of the proceeding shall be English, and the Panel has issued this decision in English. The Panel further finds that such determination would not cause any prejudice to either Party and would ensure that the proceeding takes place with due expedition.
C. Identical or Confusingly Similar
The Panel acknowledges that the Complainant has established rights in the SUPERDRY trade marks in many jurisdictions around the world.
Disregarding the Top-Level Domains (“TLDs”) “.online” and “.com”, the Disputed Domain Names incorporate SUPERDRY – the Complainant’s trade mark in its entirety. The Panel further notes that the addition of the terms “shopping” or “shoponline”, do not prevent a finding of confusing similarity.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the SUPERDRY trade marks and in demonstrating that the Disputed Domain Names are identical or confusingly similar to its marks.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of producing evidence in support of its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
The Complainant asserts that it has not authorized the Respondent to use its trade mark and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services.
Thus, the Complainant has established its prima facie case with satisfactory evidence.
The Respondent did not file a response and has therefore failed to assert factors or put forth evidence to establish that it enjoys rights or legitimate interests in the Disputed Domain Names. As such, the Panel concludes that the Respondent has failed to rebut the Complainant’s prima facie showing of the Respondent’s lack of rights or legitimate interests in the Disputed Domain Names, and that none of the circumstances of paragraph 4(c) of the Policy is applicable in this case.
As previously noted above, the Disputed Domain Names incorporate dominant features of the Complainant’s SUPERDRY trade marks. Such composition carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to paragraph 4(a)(ii) of the Policy.
E. 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 trade mark 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 to prevent the owner of the trade mark 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 in which 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 trade mark of another party. See 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 believes that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iii) and (iv) of the Policy.
When the Respondent registered the Disputed Domain Names in 2020, the SUPERDRY trade marks were already widely known and directly associated with the Complainant’s activities.
Given the extensive prior use and fame of these marks and the similarity between the Disputed Domain Names and these marks, in the Panel’s view, the Respondent should have been aware of the Complainant’s marks when registering the Disputed Domain Names.
The Respondent has provided no evidence to justify his registration of the Disputed Domain Names. Given the foregoing, it would be unreasonable to conclude that the Respondent – at the time of the registration of the Disputed Domain Names – was unaware of the Complainant’s trade marks, or that the incorporation of dominant features of the Complainant’s SUPERDRY trade mark, was a mere coincidence.
The Panel is therefore of the view that the Respondent registered the Disputed Domain Names with full knowledge of the Complainant’s trade mark rights, a finding which is reinforced considering the addition of the terms “shopping” and “shoponline” that illustrates the intention of the Respondent to target the Complainant.
Furthermore, the Respondent has used the Disputed Domain Names to resolve to a website passing itself off as being the Complainant or related to the Complainant, which is not the case; such use supports a finding of bad faith under paragraphs 4(b)(iii) and (iv) of the Policy.
Accordingly, the Panel finds that the Disputed Domain Names were registered and are being used in bad faith pursuant to paragraph 4(a)(iii) 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 Disputed Domain Names, <superdryshopping.online> and <superdryshoponline.com>, be transferred to the Complainant.
Date: November 16, 2021