The Complainant is J. Choo Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by A. A. Thornton & Co., United Kingdom of Great Britain and Northern Ireland.
The Respondents are Qu Yuan, Lian po, Zheng san, Ji mi, Wang erxiao, Wang ren and Du fu of Xiamen, Fujian, China.
The disputed domain names <jimmychooboutique.net>, <jimmychoo-outletuk.com>, <jimmychoooutlet-uk.net>, <jimmychoopumps.net>, <jimmy-choo2013.com>, <jimmychoo2013.com> and <ukjimmychooshoes.com> (the “Disputed Domain Names”) are registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2013. On September 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 4, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details. On September 11, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On September 11, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding by the specified due date.
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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on September 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2013. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on October 8, 2013.
The Center appointed Kar Liang Soh as the sole panelist in this matter on October 11, 2013. 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 in the business of luxury and high fashion goods covering footwear, handbags, small leather goods, scarves, belts and accessories. The Complainant owns numerous trademark registrations for the mark JIMMY CHOO around the world including the following:
Jurisdiction | Trademark no | Registration date |
|
European Union (CTM) |
1662543 |
September 16, 2002 |
|
European Union (CTM) |
2587830 |
April 1, 2003 |
|
China |
3189592 |
February 14, 2004 |
|
China |
1637164 |
September 21, 2001 |
The Complainant has been using the trademark JIMMY CHOO since 2001 and has over 120 JIMMY CHOO branded stores around the world. The Complainant’s products are featured in fashion pages of magazines including Tatler, Harper’s Bazaar and Vogue and featured in media articles having circulation in China, United Kingdom, Australia, Hong Kong, China, Taiwan Province of China, Singapore, Kuwait, Brazil and other countries. The products are referenced on “red carpet” events like the Academy and Golden Globe Awards. The Complainant’s Facebook page for JIMMY CHOO has over 1.3 million likes from all around the world.
The Complainant also holds various domain name registrations including <jimmychooshoes.com>, <jimmychoocouture.com>, <jimmychoo.com>, <jimmychoo.biz>, <jimmychoo.info>, <jimmy-choo.info>, <jimmychoo.net>, <jimmychoo.org>, <jimmychooonline.co.uk>, <jimmychooshoes.net> and <jimmychooshoes.org>. The Complainant operates a website at “www.jimmychoo.com” which attracts significant Internet traffic.
The Disputed Domain Names were all registered between March 20, 2013 and July 22, 2013 and resolved to websites incorporating the trademark JIMMY CHOO at the top banner and offering goods, particularly shoes, under the trademark JIMMY CHOO for sale. The Respondents are individuals but not much is known about them beyond what is found in the WhoIs details of the Disputed Domain Names.
The Complainant contends that:
1) The Disputed Domain Names are identical or confusingly similar to the Complainant’s JIMMY CHOO trademark. The Disputed Domain Names incorporate the trademark JIMMY CHOO in its entirety. The addition of common and generic words or numbers “2013”, “outlet”, “uk”, “boutique”, “pumps” and “shoes” does not prevent the Disputed Domain Names from being confusingly similar to the trademark JIMMY CHOO;
2) The Respondents have no rights or legitimate interests in respect of the Disputed Domain Names. The websites resolved from <jimmychoo-outletuk.com>, <jimmychoooutlet-uk.net>, <jimmychoopumps.net>, <jimmy-choo2013.com>, <jimmychoo2013.com> and <ukjimmychooshoes.com> display advertising images taken from the Complainant’s advertising campaign and convey the impression that the Respondents are connected to or are in some way affiliated with or endorsed by the Complainant which is misleading to consumers. The conditions of use on these websites claim that trademarks used on these websites belong to the websites; and
3) The Disputed Domain Names were registered and are being used in bad faith. The Respondents registered the Disputed Domain Names 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 websites and by preventing the Complainant from registering these domain names. The registrations indicate a pattern of bad faith behavior. The use of the Complainant’s advertising images created an impression that the Respondent’s websites are connected to, affiliated with or endorsed by the Complainant. The Respondent would have been aware of the Complainant at the time of registering the Disputed Domain Names.
The Respondents did not reply to the Complainant’s contentions.
The registration agreements for the Disputed Domain Names are in Chinese. The default language of the proceeding is accordingly Chinese. The Complainant has requested for English to be the language of the proceeding. Having considered the evidence, including the following factors, the Panel determines that the language of this proceeding shall be English:
1) The Panel is of the view that the Respondents have a working knowledge of English. The websites resolved from the Disputed Domain Names were entirely in English. The Disputed Domain Names incorporate generic English words;
2) The Respondents did not file any response and have chosen not to participate in the proceedings;
3) The Complaint has been filed in English without any protest from the Respondent; and
4) Requiring the Complainant to translate the Complaint into Chinese and conduct the proceedings in Chinese does not offer any procedural or administrative benefit to the proceedings but will likely lead to delay in the proceedings and unnecessary inconvenience to the Complainant.
Paragraph 3(c) of the Rules empowers the Panel to consolidate multiple domain names in a single complaint on the basis that the domain names are registered by the same domain name holder. Past UDRP panels have clarified that paragraph 3(c) of the Rules extends to consolidation of domain names registered by the same person using different fictitious names or aliases (e.g., Yahoo!, Inc. v Somsak Sooksripanich and Others, WIPO Case No. D2000-1461; Amazon.com, Inc. v. Lorna Kang a/k/a Yong Li a/k/a Mahmoud Nadim a/k/a The Data in Bulkregister.com’s WHOIS Database is p a/k/a Amjad Kausar, WIPO Case No. D2005-0635).
The Complainant alleged that the Disputed Domain Names are controlled by a single unknown person or entity. Having reviewed the evidence, the Panel is of the view that the Complainant has established a prima facie case that the Disputed Domain Names are held by the same person or entity. The Panel has noted, in particular that:
1) The websites resolved from the Disputed Domain Names <jimmychooboutique.net>, <jimmychoo-outletuk.com>, <jimmychoooutlet-uk.net>, <jimmychoopumps.net> and <jimmy-choo2013.com> incorporate nearly identical conditions of use except for the omission of 2 words in relation to that on <jimmy-choo2013.com> and the replacement of “13 years of age” with “6 years of age” in relation to that for <jimmychooboutique.net>;
2) The websites resolved form the Disputed Domain Names <jimmy-choo2013.com>, <jimmychoo-outletuk.com> and <jimmychoooutlet-uk.net> all indicate the same contact email address. The websites resolved form the Disputed Domain Names <jimmychoo2013.com>, <ukjimmychooshoes.com> and <jimmychoopumps.net> all indicate the same contact email address;
3) The websites resolved from the Disputed Domain Names <jimmy-choo2013.com>, <jimmychoo-outletuk.com>, <jimmychoo2013.com> and <jimmychoopumps.net> all have an identical “About Us” page. The websites resolved from the Disputed Domain Names <jimmychooboutique.net> and <jimmychoooutlet-uk.net> both have an identical “About Us” page.
4) The Disputed Domain Names <jimmychooboutique.net>, <jimmychoo-outletuk.com>, <jimmychoooutlet-uk.net>, <jimmychoopumps.net>, <jimmy-choo2013.com> and <jimmychoo2013.com> are associated with the same registrant address;
5) The Disputed Domain Names <jimmychooboutique.net>, <jimmychoooutlet-uk.net>, <jimmychoopumps.net>, <ukjimmychooshoes.com> are associated with the same administrative contact phone and fax details;
6) All the Disputed Domain Names are associated with the same technical and billing contact and contact details;
7) All the Disputed Domain Names are registered with the same Registrar;
8) The Respondents did not deny or respond to the Complainant’s clearly serious allegation that the Disputed Domain Names are really registered by the same person or entity.
In view of the above, the Panel determines that the Disputed Domain Names <jimmychooboutique.net>, <jimmychoo-outletuk.com>, <jimmychoooutlet-uk.net>, <jimmychoopumps.net>, <jimmy-choo2013.com>, <jimmychoo2013.com> and <ukjimmychooshoes.com> shall be consolidated under this proceeding in accordance with paragraph 3(c) of the Rules.
In order to succeed in this proceeding, the Complainant must establish all 3 limbs of paragraph 4(a) of the Policy:
(i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
Based on the evidence submitted, the Panel has no doubt that the Complainant has registered trademark rights in the trademark JIMMY CHOO. Each of the Disputed Domain Names incorporates the trademark JIMMY CHOO in its entirety. The only difference between the Disputed Domain Names and the trademark JIMMY CHOO are descriptive prefixes and suffixes as follows:
|
<jimmychooboutique.net> |
Suffix “boutique” |
|
<jimmychoo-outletuk.com> |
Suffixes “outlet” and “uk” |
|
<jimmychoooutlet-uk.net> |
Suffixes “outlet” and “uk” |
|
<jimmychoopumps.net> |
Suffix “pumps” |
|
<jimmy-choo2013.com> |
Suffix “2013” |
|
<jimmychoo2013.com> |
Suffix “2013” |
|
<ukjimmychooshoes.com> |
Prefix “uk” and suffix “shoes” |
It is a consensus view of past UDRP panels that with a domain name incorporating a trademark, the addition of descriptive terms is generally insufficient to prevent confusion between the domain name and the trademark. The Panel does not note any special circumstance which warrants departure from the consensus view. As such, the Panel holds that each of the Disputed Domain Names is confusingly similar to the Complainant’s trademark JIMMY CHOO and the first limb of paragraph 4(a) of the Policy is established.
The Complainant has alleged that the Respondents do not have any rights or legitimate interests in the Disputed Domain Names. And yet, the evidence shows that the Respondents have taken advertising images allegedly associated with the Complainant’s advertising campaign and incorporated these in the websites resolved from <jimmychoo-outletuk.com>, <jimmychoooutlet-uk.net>, <jimmychoopumps.net>, <jimmy-choo2013.com>, <jimmychoo2013.com> and <ukjimmychooshoes.com>. Such use of the advertising images suggests a connection or association with the Complainant. In the absence of any response from the Respondents, the Panel draws an adverse inference that the Respondents are not able to refute the allegations. The Panel also notes that the Disputed Domain Names do not bear any relationship to any of the names of the Respondents. Having regard to the evidence available, the Panel is of the view that the Complainant has established a prima facie case that the Respondents do not have rights or legitimate interests in the Disputed Domain Names. As no response was filed, the prima facie case remains and the second limb of paragraph 4(a) of the Policy is established.
Paragraph 4(b)(iv) of the Policy provides the following example of bad faith registration and use:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
Based on the evidence submitted, it is inconceivable that the Respondents were not aware of the Complainant and the trademark JIMMY CHOO when the Disputed Domain Names were registered. The websites resolved from the Disputed Domain Names all display the trademark JIMMY CHOO prominently and purport to offer products (i.e., shoes) for sale. There is an obvious intention to attract Internet users for commercial gain. The incorporation of the Complainant’s advertising images in relation to <jimmychoo-outletuk.com>, <jimmychoooutlet-uk.net>, <jimmychoopumps.net>, <jimmy-choo2013.com>, <jimmychoo2013.com> and <ukjimmychooshoes.com> furthers the impression of association with the Complainant.
The Panel is of the view that the circumstances match the situation of bad faith outlined in paragraph 4(b)(iv) of the Policy. The manner in which the websites are constructed creates a likelihood of confusion with the Complainant’s JIMMY CHOO trademark as to the source, sponsorship, affiliation, or endorsement of these websites and the products offered therefrom. As such, the third limb of paragraph 4(a) of the Policy is also established.
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 <jimmychooboutique.net>, <jimmychoo-outletuk.com>, <jimmychoooutlet-uk.net>, <jimmychoopumps.net>, <jimmy-choo2013.com>, <jimmychoo2013.com> and <ukjimmychooshoes.com> be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Date: November 17, 2013