WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DKH Retail Limited v. 王永铭 (wang yong ming)

Case No. D2021-3394

1. The Parties

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

The Respondent is 王永铭 (wang yong ming), China.

2. The Domain Names and Registrar

The disputed domain names <superdrynz.com> and <superdryukstore.com> are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2021. On October 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 15, 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 October 19, 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 October 22, 2021.

On October 19, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on October 19, 2021. The Respondent 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 Respondent of the Complaint in English and Chinese, and the proceedings commenced on November 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2021.

The Center appointed Rachel Tan as the sole panelist in this matter on December 7, 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 an English company and is a subsidiary of Superdry PLC, which is primarily engaged in the fashion industry. The Complainant and its group companies created the SUPERDRY brand towards the end of 2002 and was launched as a clothing brand in 2003.

Over the years, the SUPERDRY brand has expanded to include over 740 SUPERDRY branded locations in 61 countries, including 241 stores in the United Kingdom and mainland Europe, and 499 franchised and licensed stores. The Complainant also sells to over 100 countries worldwide through its official website <superdry.com>, operating from 21 international websites.

The Complainant is the owner of a number of generic Top-Level Domains (“gTLDs”) which include the term “superdry”, including <superdry.com>, <superdry.nz> and <superdrystore.com>.

The Complainant is also the owner of several trade mark registrations for SUPERDRY, including the following:

The disputed domain names <superdrynz.com> and <superdryukstore.com> were both registered on August 30, 2021. At the date of this Complaint, both disputed domain names resolve to websites offering SUPERDRY-branded clothing.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The disputed domain names are confusingly similar to its trade mark. The disputed domain names wholly incorporate the SUPERDRY trade mark and the addition of the terms “nz”, “uk”, “store”, and “.com” in the disputed domain names do not eliminate the overall notion that the designations are connected to the trade mark and the likelihood of confusion that the disputed domain names and the trade mark are associated;

(b) The Respondent has no rights or legitimate interests in the disputed domain names. The SUPERDRY trade mark is not affiliated with the Complainant in any way and the Complainant has never granted any authorisation or license to use the Complainant’s trade mark. The Respondent is not commonly known by the disputed domain names, and has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names; and

(c) The disputed domain names were registered and are being used in bad faith. The mere fact that the Respondent has registered domain names incorporating the trade mark of a well-known company gives rise to an inference of bad faith. Based on the use of the disputed domain names, the Respondent registered and are using the disputed domain names to attract Internet users for commercial gain, creating a likelihood of confusion with the Complainant’s trade marks.

The Complainant requests the transfer of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Issues – Language of the Proceeding

According to paragraph 11(a) of the Rules, 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.

In this case, the language of the Registration Agreements for the disputed domain names is Chinese. There is no agreement between the Complainant and the Respondent regarding the language of the proceeding. The Complainant has filed its Complaint in English and has requested that English be the language for the proceeding under the following grounds:

(a) The content on the websites in <superdrynz.com> and <superdryukstore.com> is in English;

(b) The evidence contained in the Annexes of the Complaint is in English;

(c) The Complainant is incorporated and domiciled in the United Kingdom; and

(d) The Complainant has its headquarters and main place of business in the United Kingdom.

In accordance with paragraph 11(a) of the Rules and taking into consideration paragraphs 10(b) and (c) of the Rules, the Panel hereby determines that the language of the proceeding shall be in English after considering the following circumstances:

(a) The disputed domain names are composed of Latin characters and the content on the websites of the disputed domain names is in English;

(b) The Center has notified the Respondent of the proceeding in both English and Chinese, but the Respondent has not commented on the language of the proceeding; and

(c) An order for the translation of the Complaint and other supporting documents will result in significant expenses for the Complainant and a delay in the proceeding.

Further, a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint” (Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191).

6.2 Preliminary Issues – Multiple Domain Names

The Panel notes that the present Complaint has consolidated multiple domain name disputes. At the time of filing, it was not aware who the registrant of each domain name was. This was provided by the Registrar after the complaint was filed.

According to paragraph 10(e) of the Rules, the Panel has the power to consolidate multiple domain name disputes. Paragraph 3(c) of the Rules also provides that a complaint may relate to more than one domain name, provided that the domain names are arguably registered by the same domain-name holder.

As the disputed domain names are all registered by the Respondent, the Panel accepts the Complainant’s application to consolidate the disputed domain names in the Complaint.

6.3 Substantive Issues

The Complainant must satisfy all three elements of paragraph 4(a) of the Policy in order to succeed in its action:

(i) the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights to;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain names <superdrynz.com> and <superdryukstore.com> are confusingly similar to the Complainant’s trade mark.

Both the disputed domain names incorporate the SUPERDRY trade mark in full. The positioning of the SUPERDRY mark makes it instantly recognisable as the most distinctive element of the disputed domain names. Further, it is accepted by previous UDRP panels that the addition to the complainant’s trade marks of words or terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not affect the finding of confusing similarity of the disputed domain name from the trade mark under the first element of the Policy. The disputed domain name <superdrynz.com> is then accompanied with the term “nz”, which is the abbreviation for New Zealand. The disputed domain name <superdryukstore.com> is accompanied with “uk”, the abbreviation for the United Kingdom, and the word “store”. These additional elements do not affect the confusing similarity between the disputed domain names and the Complainant’s mark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Both disputed domain names are then accompanied with the generic Top-Level Domain (“gTLD”) “.com”. The gTLD is generally disregarded when considering the first element. (See section 11.1 of the WIPO Overview 3.0)

The Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Respondent has not asserted any rights or legitimate interests in relation to the disputed domain names.

Section 2.1 of the WIPO Overview 3.0 provides:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Complainant has asserted that the Respondent has no business with and is in no way affiliated with the Complainant. The Respondent does not have permission, consent or authorisation to use the Complainant’s SUPERDRY trade mark or to apply for registration of the disputed domain names. There is no evidence that the Respondent has used or is planning to use the disputed domain names for a bona fide offering of goods or services. In addition, the Respondent has not responded to any of the Complainant’s contentions.

The Respondent appears to offer for sale the Complainant’s products on the website under the disputed domain names. UDRP panels have recognized that resellers using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. As set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the UDRP panel in that case held that to be “bona fide” within the meaning paragraph 4(c)(i) of the Policy, the offering should meet the following requirements:

(a) The respondent must actually be offering the goods or services at issue;

(b) The respondent must use the site to sell only the trade marked goods; otherwise, it could be using the trade mark to bait Internet users and then switch them to other goods;

(c) The site must accurately and prominently disclose the registrant’s relationship with the trade mark owners; it may not, for example, falsely suggest that it is the trade mark owner, or that the website is the official site; and

(d) The respondent must not try to corner the market in all domain names, thus depriving the trade mark owner of reflecting its own mark in a domain name.

In this case, the Respondent does not meet, at least, the third requirement set out above. The websites under the disputed domain names do not accurately and prominently disclose the Respondent’s relationship with the Complainant. Moreover, the Respondent’s registration of domain names incorporating the entirety of the Complainant’s mark along with the geographic acronyms “uk” or “nz” can be seen as the Respondent’s attempt to preempt the Complainant’s reflection of its mark in similar domain names targeting these geographic markets. That being said, the construction of the disputed domain names themselves is such to carry a risk of implied affiliation that misleads Internet users as to the association with the Complainant, a confusion that is exacerbated by the content to which the disputed domain names resolve.

The second element of paragraph 4(a) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

Based on the given evidence, the disputed domain names were registered and are being used in bad faith.

The disputed domain names were registered long after the Complainant has registered the SUPERDRY mark and the use of the Complainant’s SUPERDRY trade mark cannot be a coincidence. The Complainant owns the domain name <superdry.com>, and the Respondent’s disputed domain names are almost identical to the Complainant’s domain name apart from the additions of “nz” and “ukstore”. The Panel is satisfied that the Respondent was aware of the Complainant and its SUPERDRY mark when he or she registered the disputed domain names.

The Respondent has registered the disputed domain names to attract Internet users to the website for commercial gain in accordance with paragraph 4(b)(iv) of the Policy. By displaying and reproducing the Complainant’s SUPERDRY trade mark on the website under the disputed domain names, along with the Complainant’s official product images and marketing materials, and offering SUPERDRY-branded products for sale, the Respondent is clearly seeking to attract users for commercial gain.

For the above reasons, the Panel finds that the disputed domain names were registered and are being used in bad faith.

The Complainant has therefore satisfied the third element under 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 <superdrynz.com> and <superdryukstore.com> be transferred to the Complainant.

Rachel Tan
Sole Panelist
Date: December 21, 2021