The Complainant is J. Choo Limited of London, United Kingdom of Great Britain and Northern Ireland represented by A. A. Thornton & Co. of United Kingdom of Great Britain and Northern Ireland.
The Respondent is Lishang Wang of Beijing, the People’s Republic of China.
The disputed domain names <jimmychooboots.com>; <jimmychoosshoes.net>; <jimmychoosunglasses.net>; <jimmychoos.org>; <replicajimmychoo.com> and <jimmychoosale.net>; are registered with 35 Technology Co., Ltd., <cheapjimmychoo.net> and <discountjimmychoo.net> registered with Guangzhou Ming Yang Information Technology Co., Ltd. (the “Registrars” ) and (the “disputed domain names”)
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2010. On October 28, 2010, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 29, 2010, the Registrars 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”).
Pursuant to Rules, paragraph 11, in the absence of an agreement between 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. According to information from the concerned Registrar, the language of the registration agreement for the disputed domain names is Chinese. On November 1, 2010, the Center transmitted by email to the parties in both Chinese and English a communication regarding the language of proceedings. On November 2, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. The Panel notes that the disputed domain names resolves to a website with content in English, so it appears that the Respondent is familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties have been transmitted in both Chinese and English. Given the provided submissions and circumstances of this case, the Panel chooses at its discretion to render the decision in English.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2010. The Respondent sent an email communication on November 18, 2010. The Center did not receive a formal Response by the due date. Accordingly, the Center notified the Respondent’s default on November 29, 2010.
The Center appointed Linda Chang as the sole panelist in this matter on December 1, 2010. 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.
The Complainant is a company incorporated in the United Kingdom. It has been trading under the brand JIMMY CHOO since 2001 and its internationally renowned high fashion footwear, handbags and small leather goods are sold in over one hundred own-branded boutiques across thirty two countries of the world. The Complainant owns a number of trade mark registrations for the trade mark JIMMY CHOO in several classes of goods in numerous jurisdictions. The Complainant owns many gTLDs and ccTLDs incorporating its trade mark, either in its own name or in the name of its sister company. These domain names all direct user traffic to the Complainant’s website at “www.jimmychoo.com”.
The Respondent registered disputed domain names <jimmychooboots.com>, <jimmychoosshoes.net>, <jimmychoosunglasses.net>, <jimmychoos.org> and <jimmychoosale.net> on January 5, 2010; and <replicajimmychoo.com>, <cheapjimmychoo.net> and <discountjimmychoo.net> on February 26, 2010. The disputed domain names are used in connection with websites selling Jimmy Choo branded products.
The disputed domain names is Confusingly Similar to the Complainant’s Trade mark
The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s trade mark to which the Complainant has rights.
The Complainant states that it owns a number of registrations for the trade mark JIMMY CHOO in numerous countries all over the world.
The Complainant asserts that the disputed domain names <jimmychooboots.com>, <jimmychoosshoes.net>, <jimmychoosunglasses.net>, <jimmychoos.org>, <replicajimmychoo.com>, <jimmychoosale.net>, <cheapjimmychoo.net> and <discountjimmychoo.net> incorporate the Complainant’s trade mark JIMMY CHOO in full, deviates from the mark only with the addition of the elements with no distinguishing power in the context of the domain names, i.e. “discount”, “boots”, “shoes”, “replica”, “sale”, “cheap”, “sunglasses” or simply a pluralisation to “jimmy choos” in the case of <jimmychoos.org>. Citing precedents including Trip.com, Inc v Daniel Deamone WIPO Case No.D2001-1066. See PACCAR, Inc. v. Enyart Associates and Truckalley.com, LLC, WIPO Case No. D2000-0289 and Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 the Complainant contends that 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 trademarks.
The Complainant further alleges that the abovementioned addition of words is not sufficient to avoid a likelihood of confusion with the Complainant’s trade mark, as the addition is simply an indication that the website hosted at the disputed domain names offer products marked with the JIMMY CHOO registered trade mark for sale.
The Respondent has No Rights or Legitimate Interests in the disputed domain names
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names on the basis of the following reasons:
Firstly, the Complainant states that it has never licensed or otherwise permitted the Respondent to use its trade marks, nor to apply for domain names incorporating its trade marks, nor to sale goods under its trade marks similar to the ones sold by the Complainant in particular on its official website. Therefore, there is no relationship whatsoever between the Complainant and the Respondent.
Secondly, the Complainant alleges that the websites hosted at the disputed domain names are selling Jimmy Choo branded products which are believed to be counterfeits. The Complainant stated that all the websites hosted at the disputed domain names are the same, except for <jimmychoosunglasses.net> which does not resolve to an active website and that the term “replica” in the domain name <replicajimmychoo.com> has led the Complainant to suspect that the websites are selling counterfeits. To defeat a possible argument that the Respondent could be selling original Jimmy Choo products, the Complainant cites the precedents Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and NA PALI S.A.S. v DILLC Domain Admin WIPO Case No. D2008-0517. and argues that the Respondent is misleading Internet users thus does not meet the requirements to claim legitimate interests in the disputed domain names.
Thirdly, there is no evidence of any fair or noncommercial or bona fide uses of the disputed domain names, citing the precedents The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, WIPO Case No. D2002-0701 and AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937.
Registered and Used in Bad Faith
The Complainant contends that the disputed domain names were registered and used in bad faith on the basis of the following reasons:
Firstly, the Complainant asserts that its trade mark JIMMY CHOO is distinctive and well-known internationally by the time and has been in the market since 2001. Therefore, the Complainant contends that the Respondent knew or should have known of the existence of the Complainant's trademark prior to registering the disputed domain names in January and February 2010. Moreover, the Complainant alleges that registration of eight domain names identical to the registered trade mark of the Complainant is clearly aimed at the Complainant’s registered trade mark to create an impression of association with the Complainant. This prior knowledge constitutes bad faith in registration.
Secondly, the Complainant argues that the Respondent uses the disputed domain names in bad faith because the Respondent has intentionally attempted to attract present and potential new Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks and official website.
Thirdly, the Complainant alleges that the websites connected with the disputed domain names are believed to sell counterfeits, which would clearly be damaging to the Complainant, further constitute bad faith in use.
Fourthly, the Complainant argues that in the case of jimmychoosunglasses.net which does not currently resolve to an active website, it is clear from the pattern of the Respondent’s behavior and its use of the domain names that do connect to an active website, that the name <jimmychoosunglasses.net> was also registered in bad faith.
The Respondent did not reply to the Complainant’s contentions.
There being no Response, under paragraphs 5(e) and 14(a) of the Rules, the Panel, in the absence of exceptional circumstances, decides the dispute on the basis of the Complaint.
Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceeding:
(i) the disputed domain names is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names has been registered and is being used in bad faith.
The Complainant is the registered owner of the trade mark JIMMY CHOO in many countries around the world. The Complainant has acquired substantial goodwill in this trade mark.
Compared to the Complainant’s trade mark, the disputed domain names completely reproduce the trade marks with the only difference being addition of “discount”, “boots”, “shoes”, “replica”, “sale”, “cheap”, “sunglasses” or simply a pluralisation to “jimmy choos”.
The Panel holds that the incorporation of a trade mark in its entirety is sufficient to establish the domain name is identical or confusingly similar to the Complainant’s registered trademarks and that the addition of a generic term does not negate the confusing similarity between the disputed name and the Complainant’s trade marks.
Therefore, the Panel finds that the disputed domain names are clearly, and intentionally, confusingly similar to the Complainant’s trade marks. Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
The Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain names. There is nothing in the record to suggest the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services, to suggest that it has been commonly known by the disputed domain names, or to suggest that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names. Therefore, the burden of production shifts to the Respondent to prove otherwise. However, the Respondent has not responded to the Complainant’s claims.
The Complainant contends that the goods being offered for sale on the websites connected to the disputed domain names may be counterfeits of the Complainant’s products. Given that there is no Response, citing Vibram S.p.A .v. Dai Xiu Mei, WIPO Case No. D2010-0846, the Panel considers it unnecessary to decide if the products on sale are counterfeit in this case.
The Panel bases its decision on the information and evidence submitted before it, and given the circumstances, finds it more likely then not that the Respondent does not have any rights or legitimate interests in the disputed domain names.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.
The Complainant has developed a reputation for the trade mark JIMMY CHOO in the high fashion industry for about 10 years and the Complainant’s trade marked products are sold worldwide. Moreover, the Respondent’s sale of Jimmy Choo branded products very strongly suggests that the Respondent knew of the Complainant’s trade marks prior to registration. Given that the Respondent has not responded, it is reasonable to infer that the aim of the registration of the disputed domain names is to exploit consumer confusion for commercial gain.
In addition, the Respondent’s lack of rights or legitimate interests in the name JIMMY CHOO as well as the fact that the disputed domain names has been used to sell (original or counterfeit) products marked with the JIMMY CHOO registered trade mark without authorization, the Panel is convinced that the purpose of the Respondent’s registration of the domain names is to capitalize on the goodwill of the trade marks by merely registering the trade mark as a domain names to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating this consumer confusion on the source, sponsorship, affiliation or endorsement of its websites. This behavior constitutes bad faith registration and use of the domain names.
The Panel finds that the Complainant has established that the Respondent has registered and used the disputed domain names in bad faith and has met the requirements of 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <jimmychooboots.com>; <jimmychoosshoes.net>; <jimmychoosunglasses.net>; <jimmychoos.org>; <replicajimmychoo.com>; <jimmychoosale.net>; <cheapjimmychoo.net> and <discountjimmychoo.net> be transferred to the Complainant.
Linda Chang
Sole Panelist
Dated: December 15, 2010