WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kurt Geiger Limited v. Vietnam Domain Privacy Services / Pham Dinh Nhut
Case No. D2017-0364
1. The Parties
The Complainant is Kurt Geiger Limited of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Crowell & Moring, LLP, Belgium.
The Respondent is Vietnam Domain Privacy Services of HoChiMinh, Viet Nam / Pham Dinh Nhut of Ho Chi Minh City, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <kurtgieger.com> is registered with April Sea Information Technology Corporation (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on February 23, 2017. On February 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 1, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 1, 2017 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 on March 3, 2017. On March 1, 2017, the Center transmitted an email in English and Vietnamese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. 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 Vietnamese, and the proceedings commenced on March 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 29, 2017.
The Center appointed C. K. Kwong as the sole panelist in this matter on April 10, 2017. 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 the owner of numerous trademarks consisting of or comprising the words "Kurt Geiger". These registrations include UK trademark registration no. UK00001102874 for the word mark KURT GEIGER which was registered on October 12, 1978 in respect of boots and shoes, all for women in Class 25 [see Annex 5.d to the Complaint] and International Registration No. 937460 registered on May 25, 2007 for the mark KURT GEIGER in respect of certain goods under Classes 3, 9, 14, 18, 25 and 35 designating, inter alia, Vietnam under the Madrid Protocol [see Annex 5.a to the Complaint]. The disputed domain name <kurtgieger.com> was registered on September 21, 2004, some 25 years after the said UK trademark registration by the Complainant.
Other than the particulars shown in the printout of the database searches conducted by the Complainant of the WhoIs Database (as provided in Annex 1 to the Amended Complaint), the website to which the disputed domain name resolves as provided in Annex 9 to the Amended Complaint, the WhoIs Database search results and the website visit with records updated to March 8, 2017 provided by the Center, there is no evidence in the case file concerning the background of the Respondent and its business.
5. Parties' Contentions
The Complainant has made the following contentions:-
The Complainant has rights in the trademark KURT GEIGER. The Complainant has also registered the domain name <kurtgieger.com> and has been operating the website at "www.kurtgeiger.com" serving as a global platform from which its products can be ordered from approximately 70 countries around the world. The Complainant is one of the top 10 largest fashion companies in the UK and the KURT GEIGER trademark is a global well-known fashion brand having retail stores all over the world.
The Complainant has used its trademark "KURT GEIGER" continuously since its first registration in UK in 1978. Such use includes the use in its company websites accessible through <kurtgeiger.com>, on social media, the products of the Complainant, on billboard advertisements, etc. [see Annexes 4, 6 and 8 to the Amended Complaint].
The disputed domain name <kurtgieger.com> incorporates the Complainant's trademark "KURT GEIGER" in its entirety but only with the order of the letters "e" and "i" changed to "ie". Such transposition is a deliberate misspelling to take advantage of the potential typing errors which may be made by Internet users which will lead them to the website to which the disputed domain name resolves. This website directs Internet users to a website containing links to other websites selling footwear and fashion accessories of the Complainant or its competitors. The disputed domain name creates a false impression that the website to which it resolves and the goods therein offered are endorsed by, linked or affiliated to the Complainant.
The Respondent does not have any right or legitimate interest in the disputed domain name <kurtgieger.com>. The Respondent is not commonly known by the disputed domain name. It has no rights in any trademark or service mark comprising the word(s) "kurtgieger". The Respondent's use and registration of the disputed domain name comprising the word "kurtgieger" which is substantially identical to the words "Kurt Geiger" was not authorized by the Complainant. No actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed by the Respondent.
The Respondent knew or should have known the Complainant and its trademark KURT GEIGER at the time of registration of the disputed domain name. A simple trademark search or even a simple search on the Internet at the time of registration would have revealed the Complainant's registered trademark. Vietnamese fashion articles referred to the Complainant and its mark [see Annex 6 of the Complaint]. The fact that the Registrar is based in Vietnam is indicative of the place of residence of the Respondent.
It is a clear case of "typo-squatting". The international reputation of the Complainant and its trademark KURT GEIGER may be tarnished as the Complainant has no control over the operation of the website to which the disputed domain name resolves.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Notice of Proceedings
The contact particulars of the Respondent and the disputed domain name were fully set out in the WhoIs search results provided in Annex 1 to the amended Complaint and the WhoIs search results updated to March 8, 2017 as provided by the Center.
Such contact details also concur with those provided by the Registrar to the Center on March 1, 2017.
On March 8, 2017, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent in accordance with the contact details above by courier, facsimile and email with copies to the Registrar.
The Panel finds that as long as the Complainant or the Center as the case may be has communicated with the Respondent using the contact information which the Respondent has chosen to provide to the Registrar as reflected in the above contact details, their respective obligations of such communications will be discharged and the Respondent is bound accordingly.
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a reply is not due to any omission or inadequate communication by the Center.
B. Language of Proceedings
Neither the Complainant nor the Respondent made any comment in response to the Center's notification in English and Vietnamese of March 1, 2017 to both parties on the language of proceeding. The Complainant simply requested English to be the language of this administrative proceeding in paragraph 10 of the Amended Complaint.
Paragraph 11(a) of the Rules provides:
"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 language of the Registration Agreement for the disputed domain name is Vietnamese.
In support of its request, the Complainant has argued, inter alia, that:
(a) The Respondent has understanding of the English language;
(b) The contents of the website to which the disputed domain name resolves are completely in English;
(c) The sponsored links which are displayed on the website to which the disputed domain name resolves redirect to English advertisements and commercial websites;
(d) The disputed domain name is in English.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicioiusly in the spirit of fairness and justice to both parties taking into account all relevant circumstances of the case including matters such as the parties abilities to understand and use of the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; see also Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Taking all circumstances into account and in the absence of objections from the Respondent even after the Notification of Respondent Default, the Panel is satisfied that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.
C. The Three Elements
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, "[t]he Panel shall decide a complaint 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". Paragraph 14(b) of the Rules further provides that, "[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate". Paragraph 5(e) of the Rules further provides that, "[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint".
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
The said three elements are considered below.
1. Identical or Confusingly Similar
On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in the trademark KURT GEIGER by reason of its trademark registrations as recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant's trademark KURT GEIGER.
The distinctive feature of the disputed domain is "kurtgieger", being the Complainant's trademark KURT GEIGER in its entirety except for the change in the order of the letters "ei" to "ie" with the resultant word having substantially the same look and similar pronunciation as the Complainant's trademark. A domain name which contains an obvious misspelling of the trademark in issue is commonly found to be confusingly similar to such trademark, where the misspelt trademark remains the dominant or principle component of the domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.10 and Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302.
It is well established practice to disregard the top-level part of the domain name ".com", when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d'Evian and Société des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008-0416.
After removing the said generic Top-Level Domain suffix, only the word "kurtgieger" is left in its entirety.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established.
2. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, the Complainant has asserted registration and use of the registered trademark KURT GEIGER well before the registration of the disputed domain name <kurtgieger.com>. The Complainant has confirmed that the Respondent was not authorized to register or use the disputed domain name.
There is no explanation on the record as to why it was necessary for the Respondent to adopt the word "kurtgieger" in its domain name.
There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondent.
Even assuming for the purpose of argument, that the goods sold on the website to which the disputed domain name resolves are genuine KURT GEIGER goods, it does not provide in this Panel's view the owner of such website the right to use the Complainant's trademark and materials in that website. Sanofi-Aventis v. DomainsByProxy.com and Ravikant Singh, WIPO Case No. D2007-0540.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name.
3. Registered and Used in Bad Faith
The printout of the website to which the disputed domain name resolves as shown in Annex 9 to the Amended Complaint shows prominent references to the Complainant's mark KURT GEIGER.
The act of typosquatting as aforesaid and the choice of the word "kurtgieger" as part of the disputed domain name without any explanation as well as the links in the website to which the disputed domain name resolves, apparently offering goods described as Kurt Geiger women shoes, men shoes, accessories, sneakers and shoes, demonstrate the Respondent's knowledge of the Complainant and its trademark at the time of use of the disputed domain name.
The Panel finds that the Respondent has registered the disputed domain name and allowed the operator of the website to which the disputed domain name resolves, to use it primarily for offering goods to Internet users in a way which disrupts the business of the Complainant. On the basis of the evidence produced, the Panel finds that the presumption under paragraph 4(b)(iii) of the Policy has been invoked.
By using whether directly or indirectly, authorizing or permitting the use of the disputed domain name by the operator the said website in the manner described above, the Respondent intentionally attempted to attract, for commercial gain, Internet users to go to the said website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or products on the website. The Panel accordingly finds that paragraph 4(b)(iv) of the Policy has also been invoked.
The Panel finds that the disputed domain name has been registered and is being used in bad faith under 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 name <kurtgieger.com> be transferred to the Complainant.
C. K. Kwong
Date: April 24. 2017