WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
All Saints Retail Ltd. v. Wang Liqun
Case No. DCO2015-0041
1. The Parties
The Complainant is All Saints Retail Ltd. of London, United Kingdom of Great Britain and Northern Ireland (the "United Kingdom"), represented by SafeNames Ltd., United Kingdom.
The Respondent is Wang Liqun of Xinyu, Jiangxi, China.
2. The Domain Name and Registrar
The disputed domain name <allsaints.co> (the "Domain Name") is registered with 1API GmbH (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 10, 2015. On December 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 11,, 2015 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 December 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 8, 2016.
The Center appointed William P. Knight as the sole panelist in this matter on January 20, 2016. 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 Domain Name was registered on September 21, 2014.
The Complainant is a British fashion house that designs and sells a variety of menswear and womenswear both at wholesale and retail through a network of over 120 retail outlets, including stores in the Republic of Korea, Japan and Taiwan Province of China, as well via its website at "www.allsaints.com".
The original business of the Complainant was begun in 1994 and the Complainant was formed in 2000. The Complainant acquired the <allsaints.com> domain name in 2009 and commenced use of it to market the Complainant's products later that year. In 2011 the Complainant commenced direct sales of the Complainant's products from its website and now delivers to over 200 countries. The Complainant also has a significant social media presence.
The Complainant is the owner of registered trade marks for ALL SAINTS in Europe, the United States and Canada, but also in India, the original United Kingdom registration number 00002307473 dating from March 21, 2003.
The Domain Name is being used as a "parking website" which features links to third party websites, some of which redirect to suppliers of products competing with those of the Complainant.
The Respondent is an individual and appears to be a resident of China.
5. Parties' Contentions
In accordance with paragraph 4(a) of the Policy, the Complainant asserts, inter alia, as follows:
(i) that the Domain Name is confusingly similar to the Complainant's name and registered trade marks;
(ii) that the Respondent has neither conceivable rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
In support of (i); the Complainant asserts that, whilst its mark ALL SAINTS consists of two dictionary words, the mark is not generic, as the use of the two words by the Complainant in respect of clothing and other fashion goods has been such as to bring about a substantial goodwill in them belonging to the Complainant in respect of such goods. In any case, the Complainant has substantial registered trade mark rights in many countries. The Complainant says that relevant part of the Domain Name is "allsaints" which is identical to the ALL SAINTS trade mark, disregarding the inconsequential elements of the space between the words and the generic Top-Level Domain suffix.
In support of (ii): the Complainant states and provides supporting evidence that an Internet and trade mark search by it reveals no connection of any kind between the Respondent and the mark ALL SAINTS. The Complainant further observes that the Domain Name has only been used as a parking page to host links, using Sedo as a domain name parking service provider. A parking page is a single page with no email or website content. When an Internet user enters the site it generates pay-per-click (hereafter referred to as "PPC") links aimed at diverting the user to other websites, some of which are related to the Complainant's services and others which are unrelated or, indeed, are offered by competitors of the Complainant. The Complainant cites Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093; Serta, Inc. v. Maximum Investment Corporation, WIPO Case No. D2000-0123; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448; and Gold Medal Travel Group plc v. Damir Kruzicevic, WIPO Case No. D2007-1902 to argue that such use does not show a legitimate interest in the Domain Name. The Complainant says that the large holding by the Respondent of domain names which embody the brands of other British clothiers, as well as many other famous trade marks of third parties in respect of clothing and related fashion items, of which the Complainant provides evidence, shows the Respondent's was likely aware of the Complainant's ALL SAINTS trade mark at the time of registration and indicates that the Domain Name was registered with the intention to use it in conjunction with a PPC parking page, because of its identity with the Complainant's ALL SAINTS trade mark, and that this cannot be regarded as a legitimate interest.
In support of (iii): the Complainant states that its rights in the ALL SAINTS trade mark predate the registration of the Domain Name by seventeen (17) years and no license has been granted by it to the Respondent to register or use the Domain Name. The Complainant again refers to the large holding by the Respondent of domain names which embody the brands of other British clothiers, as well as many other famous trade marks of third parties in respect of clothing and related fashion items, and that the Respondent has the recipient of numerous other complaints under the Policy, to argue the Respondent registration and use of the Domain Name was not in good faith, but intended to derive a commercial benefit from the Domain Name by the diversion of Internet users to the websites of others, including those of competitors of the Complainant. The Complainant also notes that the Respondent did not respond to a cease and desist letter sent to it, prior to the commencement of these proceedings, outlining the Complainant's rights and requesting the transfer of the Domain Name by the Respondent to the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy.
However, the Respondent has had ample opportunity to respond to the allegations of the Complainant and has not done so. The Respondent cannot be in a better position by failing to respond to explain the registration and use of the Domain Name.
Paragraph 15(a) of the Rules instructs the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. In the absence of any response from the Respondent, the onus upon the Complainant will be satisfied if a conclusion which is capable of being drawn from the evidence provided by the Complainant is not contradicted by the Respondent.
A. Identical or Confusingly Similar
It is clear that the Complainant is the owner of the ALL SAINTS trade mark in respect of clothing and related fashion goods.
The Panel finds that the Domain Name is identical to the Complainant's trade mark ALL SAINTS and, accordingly, paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainant has demonstrated that its name and mark is relatively well known, particularly within its industry. Whilst the Complainant has no presence in China nor any Chinese trade mark registrations, in which the Respondent is a resident, the Complainant has also provided some evidence that its reputation extends to China. The Respondent was entitled, and had every opportunity, to demonstrate some right or legitimate interest with respect to the Domain Name, and paragraph 4(c) of the Policy gives good examples of how the Respondent could have done so. The Respondent has given no such explanation.
As made clear by paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") use of a domain name to post parking and landing pages or PPC links does not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services."
Most compelling, however, is the evidence of the Respondent's collection of large numbers of domain names which are identical to the well-known trade marks of others, not only in the area of fashion clothing and accessories but in every other field of endeavour, from the manufacture of motor cars, airlines, ice-cream, sports clubs and equipment, fast food, hotels and soft drinks, which show that the respondent has no connection with any industry or activity, other than the collection of domain names for use in conjunction with PPC parking pages. No effort has been made by the Respondent to use the Domain Name for any other purpose. The Respondent's use of the Domain Name is simply to attract those who might be interested in the Complainant and to direct them to other products and suppliers, some of which directly compete with the products sold by the Complainant and all of which, it may be assumed, provide the Respondent with income.
The Panel, therefore, agrees with the Complainant's submission that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy directs that the Complainant must establish that the Domain Name has been registered and used in bad faith.
In this case:
(a) notwithstanding the Complainant's lack of any significant presence within China itself, for the reasons given by the Complainant, the Respondent must have registered the Domain Name in circumstances where it was aware of the pre-existing rights of the Complainant;
(b) the Domain Name is identical to the Complainant's trade mark and the only subsequent use of the Domain Name has been as a PPC parking page, including links to competing products;
(c) the Respondent must accept responsibility for the use made of the Domain Name by Sedo unless it can show some good faith attempt toward preventing the use of the Domain Name to divert Internet users seeking the Complainant or its products to advertising or links for the benefit of third parties, including competitors – see paragraph 3.8 of WIPO Overview 2.0;
(d) if the Respondent had any intention to make some legitimate use of the Domain Name or to prevent Sedo using its Name to misdirect Internet users in the manner described, it has had ample opportunity either to do so or otherwise to explain its conduct, but has done neither.
The Panel concludes that the Respondent registered and is using the Domain Name in bad faith, in the sense required by 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 name, <allsaints.co>, be transferred to the Complainant.
William P. Knight
Date: January 25, 2016