WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

J. Choo Limited v. lee rose / Whois Agent, Whois Privacy Protection Service, Inc

Case No. D2016-1229

1. The Parties

The Complainant is J. Choo Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by A. A. Thornton & Co., United Kingdom.

The Respondent is lee rose of Chongqing, China / Whois Agent, Whois Privacy Protection Service, Inc of Kirkland, Washington, United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain names, <jimmychoopumps.com> and <jimmychooshoessales.com> (the “Disputed Domain Names”), are registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2016. On June 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On June 20, 2016, 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 June 22, 2016 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 June 27, 2016.

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, and the proceedings commenced on June 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2016. On July 26, 2016, the Center notified the Complaint and annexes to additional email addresses associated with the Respondent and provided the Respondent through July 31, 2016 to file a Response. The Respondent did not submit any response.

The Center appointed José Pio Tamassia Santos as the sole panelist in this matter on August 9, 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

4.1. The Complainant’s brand is recognized as a luxury and high fashion brand around the world and has a significant reputation for luxury footwear for women and men, as well as handbags, small leather goods, scarves and belts. The Complainant also offers wedding and bridal shoes and accessories. The Complainant has been trading under the brand since 2001 and spends considerable amounts of time and money promoting the brand.

4.2. In this scenario, the Complainant noticed that the Disputed Domain Names, <jimmychoopumps.com> and <jimmychooshoessales.com>, were registered by the Respondent.

4.3 The Complainant owns numerous trade mark registrations around the world for the mark JIMMY CHOO, registered for the first time in Thailand on May, 9, 2000, and today is recognized worldwide. The Disputed Domain Names were registered on March 22, 2015.

5. Parties’ Contentions

A. Complainant

5.1. The Complainant states that the Respondent registered without authorization the Disputed Domain Names, <jimmychoopumps.com> and <jimmychooshoessales.com>, on March 22, 2015.

5.2. Furthermore the Complainant contends that the Disputed Domain Names incorporate the Complainant’s trade mark JIMMY CHOO in its entirety with the addition of the words “shoessales” and “pumps” to the Complainant’s registered mark. Thus, this suffix addition does not prevent the Disputed Domain Names from being confusingly similar to the mark JIMMY CHOO.

5.3. The Complainant states that the Respondent lacks rights or legitimate interests in the Disputed Domain Names, which were registered and are being used in bad faith.

B. Respondent

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

6. Discussion and Findings

6.1. Paragraph 4(a) of the Policy provides specified remedies to trade mark owners against registrants of domain names where the owner of the mark (i.e., the complainant) proves each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

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

(iii) the disputed domain name was registered and is being used in bad faith.

6.2. The Complainant has the burden of proof, by a preponderance of the evidence, in respect to each element in paragraph 4(a) of the Policy.

6.3. The Respondent, having failed to respond in the present proceeding, is in default, and in accordance with paragraph 14(b) of the Rules, “the panel shall draw such inferences […] as it considers appropriate”.

A. Identical or Confusingly Similar

6.4. The Complainant owns numerous trade mark registrations around the world for the mark JIMMY CHOO in class 25.

6.5. The Complainant spends a considerable amount of time and money protecting its intellectual property rights as evidenced by its numerous trade mark registrations around the world.

6.6. The Complainant owns many domain names incorporating its trade mark. These domain names include: <jimmychooshoes.com>, <jimmychoocouture.com>, <jimmychoo.com>, <jimmychoo.biz>, <jimmy-choo.biz>, <jimmychoo.info>, <jimmy-choo.info>, <jimmychoo.net>, <jimmychoo.org>, <jimmychooonline.co.uk>, <jimmychooshoes.net> and <jimmychooshoes.org>. These domain names all direct user traffic to the Complainant’s website at “www.jimmychoo.com”.

6.7. The Complainant’s website at “www.jimmychoo.com” attracts significantly large volumes of traffic from countries all over the world, including the United Kingdom, other countries in the European Union, the United States and China, where the Respondent is domiciled.

6.8. The Complainant’s brand is recognized as a luxury and high fashion brand around the world and has a significant reputation for luxury footwear for women and men, as well as handbags, small leather goods, scarves and belts. The Complainant also offers wedding and bridal shoes and accessories. The Complainant has been trading under the brand since 2001 and spends considerable amounts of time and money promoting the brand.

6.9. The Complainant has over 170 JIMMY CHOO branded stores across the world. New JIMMY CHOO products and collections are frequently featured in the fashion pages of magazines, particularly those with a high-end fashion focus such as Tatler, Harper’s Bazaar and Vogue. The brand’s status as a “luxury” label and reputation for production of high quality, fashionable shoes and accessories is often referred to in the media.

6.10. The Complainant’s products are often seen on celebrities including musicians, television and film stars and are a popular choice to wear on the “red carpet” and at high-profile events, such as the Academy Awards and Golden Globe Awards.

6.11. The numerous examples of brand investment, advertising spend, media references and endorsements from celebrities and the public demonstrate that the Complainant has invested time and money into promoting its products and has an international reputation as a luxury fashion brand.

6.12. The Disputed Domain Names incorporate the Complainant’s trademark JIMMY CHOO in its entirety. The addition of the words “shoessales” and “pumps” to the Complainant’s registered mark in the Disputed Domain Names does not prevent the Disputed Domain Names from being confusingly similar to the mark JIMMY CHOO. The fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy. See, for example, Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249 and Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

6.13. The Respondent’s use of the mark JIMMY CHOO, which is identical to the Complainant’s various registered trade marks is clearly an attempt to catch Internet users searching for the Complainant’s goods using the Complainant’s registered trade marks. The Complainant refers to numerous decisions where the incorporation of a trade mark in its entirety has been deemed sufficient to establish the domain name is identical or confusingly similar to the complainant’s registered mark.

6.14. Due to the above-mentioned, consumers would simply consider the words “shoessales” and “pumps” to indicate the type of goods being sold and that they are being offered for reduce prices. These are terms that consumers would be likely to include an Internet search for the Complainant’s mark.

6.15. Accordingly, the Disputed Domain Names are confusingly similar to the JIMMY CHOO trademark.

The first element of the Policy, therefore, has been met.

B. Rights or Legitimate Interests

6.16. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names for the following reasons:

6.17. The Complainant contends that the Respondent is clearly intentionally trying to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites.

6.18. The Complainant became aware of the Disputed Domain Names on April 7, 2016. The Complainant takes protection of its intellectual property rights seriously, and it is unlikely that the Respondent was itself commonly known by the name JIMMY CHOO prior to knowledge of this Complaint or registering the Disputed Domain Names.

6.19. The Respondent has used images created by the Complainant and used in the Complainant’s official advertising campaign and displayed these on the homepages and throughout the websites under the Disputed Domain Names.

6.20. The Respondent has tried to imitate the look, feel, layout and color scheme of the Complainant’s genuine website, by using a layer image on the left and smaller square shape images on the right. Moreover the Respondent uses the Complainant’s genuine style names to refer to the goods it is purportedly selling. The images of shoes used on the Respondent’s websites are very close the Complainant’s genuine images and can only be taken from the Complainant’s genuine website.

6.21. The Complainant has not authorized the websites under the Disputed Domain Names. The Complainant does not authorize individuals to offer its products online, and as the WhoIs records are hidden with a privacy shield service, this suggests the Disputed Domain Names are registered to an individual.

6.22. The Complainant believes that any items bearing the mark JIMMY CHOO on sale via the websites under the Disputed Domain Names are counterfeit. The Respondent is purportedly offering goods bearing the mark JIMMY CHOO at significantly reduced prices.

6.23. The websites under the Disputed Domain Names also advertise shoes bearing the mark CHRISTIAN LOUBOUTIN. This activity, nor any of the other uses of the Disputed Domain Names outlined in this section, does not demonstrate a legitimate interest in the Disputed Domain Names and is not a bona fide offering of goods or services.

6.24. Under these circumstances, including the Respondent’s default, the absence of any permission by the Complainant and the lack of any plausible legitimate reason for the Respondent to use the Disputed Domain Names, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. Accordingly, the second element of the Policy has been established.

C. Registered and Used in Bad Faith

6.25. Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”:

(i) circumstances indicating that the respondent has registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) that the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(iii) that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line 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 the respondent’s website or location.

6.26. The Respondent has registered the Disputed Domain Names, which incorporate the Complainant’s trade mark JIMMY CHOO in its entirety. The registration of domain names identical to the registered trade mark of the Complainant is clearly aimed to disrupt the Complainant’s business by diverting Internet users who are searching for the Complainant’s products and leading them away from the Complainant’s genuine websites. The registration of domain names incorporating the Complainant’s trade mark in its entirety is aimed to prevent the Complainant from registering those domain names.

6.27. The Complainant’s states that screenshots taken from “www.archive.org” show how the websites under the Disputed Domain Names were used in August 2015, shortly after the Disputed Domain Names were registered in March 2015.

6.28. The nature of the current use of the websites under the Disputed Domain Names is done intentionally to attract for commercial gain Internet users to the websites at the Disputed Domain Names and give the misleading impression to Internet consumers that the Disputed Domain Names are connected to or operated by the Complainant. This continuing use of the Disputed Domain Names is in bad faith. The evidence demonstrates that the Respondent registered and uses the Disputed Domain Names in bad faith.

6.29. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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, <jimmychoopumps.com> and <jimmychooshoessales.com>, be transferred to the Complainant.

José Pio Tamassia Santos
Sole Panelist
Date: August 23, 2016