WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DKH Retail Limited v. Lucas Goldschmidt
Case No. D2021-3548
1. The Parties
The Complainant is DKH Retail Limited, United Kingdom (“UK”), represented internally.
The Respondent is Lucas Goldschmidt, Germany.
2. The Domain Name and Registrar
The disputed domain name <superdrysaldi.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2021. On October 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 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 satisfy 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 November 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2021.
The Center appointed Zoltán Takács as the sole panelist in this matter on December 15, 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 SUPERDRY brand was launched in England, UK in 2003 as a clothing brand.
At present, the Complainant has over 740 Superdry branded locations in 61 countries and through international websites sells to over 100 countries.
The Complainant owns a number of trademarks consisting of or comprising the term Superdry, including the European Union Trademark Registration (“EUTM”) No. 003528403 for the word mark SUPERDRY registered on June 22, 2005, for clothing and related goods of International Class 25 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks.
The Complainant among others owns the disputed domain name <superdry.com>, registered on August 18, 1996, which links to its corporate website.
The disputed domain name was registered on August 24, 2021, and resolves to a website using the Complainant’s trademarks and brand name in relation to clothing and related goods.
5. Parties’ Contentions
The Complainant contends that the disputed domain name that fully incorporates its SUPERDRY trademark is confusingly similar to it.
The Complainant further alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy.
The Complainant claims that the Respondent registered the disputed domain name with actual knowledge of its SUPERDRY trademark and is using it to misleadingly divert customers away from its website and/or tarnish its brand.
The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A Complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the Complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced proper evidence of having registered rights in the SUPERDRY trademark and for the purpose of this proceeding the Panel establishes that the EUTM No. 003528403 satisfies the requirement of having trademark rights for the purpose of the Policy.
Having determined the presence of the Complainant’s trademark rights, the Panel next assesses whether the disputed domain name is identical or confusingly similar to its SUPERDRY trademark.
According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test.
Paragraph 5(f) of the Rules provides that the Panel shall decide the dispute based upon the facts and circumstances described in the Complaint.
The Complainant contends that the disputed domain name is composed of its SUPERDRY trademark and another well-known brand “Aldi”. The Panel disagrees with this contention.
However, it has been accepted by numerous UDRP panels that a panel may undertake limited factual research into matters of public record - including visiting the website linked to the disputed domain name in order to obtain more information about the Respondent or its use of the domain name – if it deems this useful to reach the right decision (see section 4.8 of the WIPO Overview 3.0).
The disputed domain name resolves to an Italian language website unconnected with the Complainant, from which the Respondent sells clothing goods at discounted prices using the Complainant’s trademarks and logos without consent or authorization.
On the basis of these facts and circumstances, the Panel finds that the disputed domain name comprises of the Complainant’s SUPERDRY trademark with the addition of the term “saldi” (“sale” in Italian), does not serve to prevent the disputed domain name from being confusingly similar to the Complainant’s mark.
Regardless of the interpretation of the added term, be it the Italian “saldi” or an added “s” to the Complainant’s mark along with “aldi”, the additions do not prevent the Complainant’s mark from being recognizable within the disputed domain name. See sections 1.9 and 1.12 of the WIPO Overview 3.0.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds prior rights in the SUPERDRY trademark.
The Complainant has never authorized the Respondent to use its trademark in any way, and its rights in the trademark precede the date of registration of the disputed domain name.
According to section 2.1 of the WIPO Overview 3.0, 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 the 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.
Considering the use of the disputed domain name, coupled together with the confusingly similar disputed domain name, the Panel finds that the disputed domain name carries a risk of implied affiliation to the Complainant, which is not clarified by the content found at the disputed domain name. Rather, the content on the disputed domain name consists entirely of the Complainant’s goods, exhibits the Complainant’s mark, and provides no disclaimer as to the relationship (or lack thereof) to the Complainant. Pursuant to sections 2.5.1 and 2.8 of the WIPO Overview 3.0, the Panel finds that the Respondent’s use of the disputed domain name does not constitute fair use, nor a bona fide offering of goods or services.
By defaulting, the Respondent failed to provide explanation, let alone justify his registration of a domain name comprising the Complainant’s trademark within the meaning of paragraph 4(c) of the Policy.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
(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 SUPERDRY trademark was invented by and is unique to the Complainant and the Respondent is reproducing it entirely in the disputed domain name.
The website to which the disputed domain name resolves is featuring the Complainant’s trademark and logos, and displays clothing goods at discounted prices.
This in the Panel’s view suggests not only that the Respondent was aware of the Complainant’s prior rights when registering the disputed domain name, but also the Respondent’s intent to mislead consumers arriving at his website into believing that they are dealing with either the Complainant or its authorized reseller.
The Respondent had the opportunity to respond to the Complaint. By defaulting, the Respondent failed to provide any plausible, legitimate explanation for his choice of registration and use of the disputed domain name.
The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website (or website under its control) by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of such sites or the services advertised on such sites, within the meaning of paragraph 4(b)(iv) of the Policy and that paragraph 4(a)(iii) of the Policy is satisfied.
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 <superdrysaldi.com> be transferred to the Complainant.
Date: December 29, 2021