The Complainant is Coach, Inc. of New York, United States of America, represented internally.
The Respondent is li feng mei, Guo LingJian of Putian, Fujian Province, the People’s Republic of China.
The disputed domain names <coach-handbags-outlet-store.com> and <shophandbagscoach.com> are registered with Xin Net Technology Corp. The disputed domain name <i1941coach.com> is registered with Bizcn.com, Inc. The disputed domain names <coachbagshop.net>, <coach-coach-coach.com>, <coach-coachoutlet.com>, <coach-coachoutlets.com>, <coachfactoryonlineoutlet.com>, <coachfactoryoutletstore.com>, <coachhandbags-us.com>, <coach-online-outlet-store.com>, <coachonlineoutletstore.com>, <coachoutletbag.net>, <coachoutletshop.net>, <coachoutletshop.org>, <coach-outletstore.net>, <coachstoer.com>, <gocoachfactory.com>, <gocoachonlineoutletstore.com>, <gocoachoutletstores.com>, <gocoachshop.com>, <gocoachstore.net>, <gocoachstores.com>, <gotocoachstore.com>, <goto1941coach.com>, <go1941coach.com>, <o1941coach.com>, <shopcoach.net>, <us-coach-outlet.com>, <1941coach.com>, <1941coachhandbags.com>, <1941coach.net> and <68coach.com> are registered with HiChina Zhicheng Technology Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2010. On November 22, 2010, the Center transmitted by email to HiChina Zhicheng Technology Ltd., Xin Net Technology Corp. and Bizcn.com, Inc. a request for registrar verification in connection with the disputed domain names. On November 23, 2010, HiChina Zhicheng Technology Ltd., Xin Net Technology Corp. and Bizcn.com, Inc. transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. On the same day, the Center sent an email to the concerned Registrars regarding the expiry of the disputed domain names <shophandbagscoach.com> and <coachstoer.com>. On November 24, 2010, the concerned Registrars informed the Center that above-mentioned disputed domain names need to be renewed so that they will remain on the Registrar lock status during the pending proceedings. On the same day, the Center forwarded the email from the concerned Registrars regarding the domain name expiry to the parties. On December 2, 2010, HiChina Zhicheng Technology Ltd. informed the Center that <coachstoer.com> had been redeemed by the Complainant successfully. On December 14, 2010, Xin Net Technology Corp. informed the Center that <shophandbagscoach.com> had been redeemed by the Complainant successfully.
On December 14, 2010, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On December 16, 2010, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
On December 14, 2010, the Center requested the Complainant to provide the amendment regarding the information of the Registrar and Registrant. The Complainant filed an amendment to the Complaint on December 18, 2010.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on December 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2011.
The Center appointed Dr. Hong Xue as the sole panelist in this matter on January 25, 2011. 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 retailer of handbags, footwear, eyewear, fragrances, outerwear and accessories under the brand name COACH. The Complainant first registered the COACH word mark in the United States on August 9, 1977. The Complainant, along with its subsidiary Coach Services, Inc., now owns almost 1,200 COACH-formative trademark registrations around the world, including Europe and China.
The Respondent registered the following disputed domain names:
|
Disputed Domain Name |
Date of Registration |
|
<1941coach.com> |
January 8, 2010 |
|
<gocoachshop.com> |
May 28, 2010 |
|
<shopcoach.net> |
March 11, 2010 |
|
<shophandbagscoach.com> |
November 4, 2009 |
|
<1941coach.net> |
July 25, 2010 |
|
<1941coachhandbags.com> |
January 8, 2010 |
|
<68coach.com> |
December 10, 2009 |
|
<coach-coach-coach.com> |
April 19, 2010 |
|
<coach-coachoutlet.com> |
March 25, 2010 |
|
<coach-coachoutlets.com> |
April 15, 2010 |
|
<coach-handbags-outlet-store.com> |
July 19, 2010 |
|
<coach-online-outlet-store.com> |
July 15, 2010 |
|
<coach-outletstore.net> |
March 31, 2010 |
|
<coachbagshop.net> |
May 7, 2010 |
|
<coachfactoryonlineoutlet.com> |
September 5, 2010 |
|
<coachfactoryoutletstore.com> |
August 20, 2010 |
|
<coachhandbags-us.com> |
March 10, 2010 |
|
<coachonlineoutletstore.com> |
August 13, 2010 |
|
<coachoutletbag.net> |
May 7, 2010 |
|
<coachoutletshop.net> |
April 25, 2010 |
|
<coachoutletshop.org> |
June 25, 2010 |
|
<coachstoer.com> |
October 7, 2009 |
|
<go1941coach.com> |
May 28, 2010 |
|
<gocoachfactory.com> |
September 9, 2010 |
|
<gocoachonlineoutletstore.com> |
August 15, 2010 |
|
<gocoachoutletstores.com> |
September 11, 2010 |
|
<gocoachstore.net> |
July 21, 2010 |
|
<gocoachstores.com> |
March 17, 2010 |
|
<goto1941coach.com> |
July 29, 2010 |
|
<gotocoachstore.com> |
July 29, 2010 |
|
<i1941coach.com> |
July 14, 2010 |
|
<o1941coach.com> |
June 25, 2010 |
|
<us-coach-outlet.com> |
April 19, 2010 |
All the disputed domain names are properly locked by the pertinent registrars all through the proceeding.
The Complainant states that it is a retailer of handbags, footwear, eyewear, fragrances, outerwear and accessories with presence in over 30 countries.
The Complainant states that COACH is the trademark that has been registered since 1977 in many countries and regions, including the United States, China and the United Kingdom of Great Britain and Northern Ireland.
The Complainant contends that the Respondent’s following disputed domain names, i.e. <coach-handbags-outlet-store.com>, <shophandbagscoach.com>, <o1941coach.com>, <coachbagshop.net>, <coach-coach-coach.com>, <coach-coachoutlet.com>, <coach-coachoutlets.com>, <coachfactoryonlineoutlet.com>, <coachfactoryoutletstore.com>, <coachhandbags-us.com>, <coach-online-outlet-store.com>, <coachonlineoutletstore.com>, <coachoutletbag.net>, <coachoutletshop.net>, <coachoutletshop.org>, <coach-outletstore.net>, <coachstoer.com>, <gocoachfactory.com>, <gocoachonlineoutletstore.com>, <gocoachoutletstores.com>, <gocoachshop.com>, <gocoachstore.net>, <gocoachstores.com>, <gotocoachstore.com>, <goto1941coach.com>, <go1941coach.com>, <i1941coach.com>, <shopcoach.net>, <us-coach-outlet.com>, <1941coach.com>, <1941coachhandbags.com>, <1941coach.net> and <68coach.com> are confusingly similar to the COACH trademark in which the Complainant has rights.
The Complainant contends that the Respondent had no rights or legitimate interests in respect of the disputed domain names.
The Complainant contends that the disputed domain names were registered and are being used in bad faith.
The Complainant requested that the Panel issue an order that the all disputed domain names be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
The language of the registration agreements for the disputed domain names specified above, as confirmed by the concerned Registrars, is Chinese. The Complainant has requested that the language of the proceeding be English and has presented the reasons. The Respondent did not make any submissions in relation to the language of the proceeding even though the Center’s communications to this effect (as was the Notification of Complaint) were both in English and in Chinese.
According to paragraph 11(a) of the Rules, 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.
Among other circumstances, the respondent’s ability to clearly understand the language of the complaint, and the complainant’s being disadvantaged by being forced to translate, may in appropriate circumstances both support a panel’s determination that the language of the proceeding remains the language of the complaint, even if it is different from the language of the registration agreement (L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).
According to the Rules, paragraph 10(b), the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. Therefore a panel shall objectively assess the Parties’ language ability in the proceeding.
In the present case, the Panel finds that the Respondent has sufficient capacity to understand and use English. The Panel notes that the website at the disputed domain name <ecoachshop.com> displays the contents solely in English. On the other hand, the Complainant has submitted the Complaint in English and would bear considerable costs to translate all the submissions into and take part in the proceeding in the language of the registration agreements.
Having considered all the circumstances, this Panel determines under the Rules, paragraph 11(a) that English shall be the language of the proceeding.
33 disputed domain names were registered under the names “li feng mei” or “Guo LingJian”. The Complainant, however, requests all 33 domain name disputes be consolidated into one case.
The Panel views that the Complainant’s consolidation request should be handled cautiously. In accordance with the Rules, paragraph 3(c), the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. Therefore, if on balance of the evidence it was found by the Panel that the disputed domain names were indeed held by different beneficial owners, a Panel would typically not consolidate multiple domain name disputes at the request of a party, as stipulated under the Rules, paragraph 10(e) or 3(c). However, if it is proved that the multiple domain names are controlled by the same domain name holder, the case may be appropriate for consolidation.
A number of decisions made under the Policy have ruled that a panel may consolidate multiple domain names registered under the different names under the Rules, paragraph 3(c) and10(e), provided for example that seemingly different registrants are on the evidence found to be alter egos of the same beneficial holder (Backstreet Productions, Inc. v. John Zuccarini, CupcakeParty, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol, WIPO Case No. D2001-0654), as may be in cases where respondents have common administrative contact (ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034), or common control or ownership has been found in circumstances indicating that a single person or entity has registered multiple domain names using fictitious names (Yahoo!, Inc v. Somsak Sooksripanich and Others, WIPO Case No. D2000-1461). See also Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 and Blue Cross and Blue Shield Association, Empire HealthChoice Assurance, Inc. dba Empire Blue Cross Blue Shield and also dba Empire Blue Cross v. Private Whois Service / Search and Find LLC. / Michigan Insurance Associates / 4 Letter Domains Inc. / New York Health Ins., WIPO Case No. D2010-1699.
In the present case, although there are two different registrant names, the Panel notes that both registrants have an identical email address, an identical telephone number, an identical fax number and almost identical physical address. The Panel, therefore, concludes that both registrants are commonly controlled by a single person or entity that is the real domain name holder. The Panel approves the Complainant’s request to consolidate all 33 disputed domain names under the Rules, paragraph 10(e) and 3(c).
According to the Policy, paragraph 4 (a)(i), a complainant must prove that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such requirement, a complainant must prove its trademark rights and the identity or confusing similarity between the disputed domain name and its trademark.
The Panel finds that before the registration of the disputed domain names the Complainant has acquired the trademark right over the mark COACH through registrations in a number of countries and regions, including China which is the Respondent’s country of residence.
The disputed domain names are <coach-handbags-outlet-store.com>, <shophandbagscoach.com>, <o1941coach.com>, <coachbagshop.net>, <coach-coach-coach.com>, <coach-coachoutlet.com>, <coach-coachoutlets.com>, <coachfactoryonlineoutlet.com>, <coachfactoryoutletstore.com>, <coachhandbags-us.com>, <coach-online-outlet-store.com>, <coachonlineoutletstore.com>, <coachoutletbag.net>, <coachoutletshop.net>, <coachoutletshop.org>, <coach-outletstore.net>, <coachstoer.com>, <gocoachfactory.com>, <gocoachonlineoutletstore.com>, <gocoachoutletstores.com>, <gocoachshop.com>, <gocoachstore.net>, <gocoachstores.com>, <gotocoachstore.com>, <goto1941coach.com>, <go1941coach.com>, <i1941coach.com>,<shopcoach.net>, <us-coach-outlet.com>, <1941coach.com>, <1941coachhandbags.com>, <1941coach.net> and <68coach.com>.
Apart from the generic top-level domain suffix “.com” or “.net”, 32 disputed domain names take the “coach + generic word(s)” model and one disputed domain name is <coach-coach-coach.com>. There is little doubt that <coach-coach-coach.com> is confusingly similar to the Complainant’s registered mark COACH.
Among the generic words, letters, numbers added before or after “coach”, some of them are directly related to the Complainant’s retail business under the mark COACH. It is established by numerous decisions made under the Policy that adding generic words that are related to a complainant’s business is likely to lead the panel to find a confusing similarity between the disputed domain name and the complainant’s trademark (Marriott International, Inc. v. Cafe au lait, NAF Claim No. FA93670). Therefore, the disputed domain names comprising of the Complainant’s registered trademark COACH in its entirety and other descriptive words related to the Complainant’s business, such as “online”, “store” (including the plural “stores” and the misspelling “stoer”), “shop” and “factory”, are confusingly similar to the Complainant’s registered trademark COACH.
The other disputed domain names that comprise of the Complainant’s registered trademark COACH and non-distinguishable generic words, numbers, letters or dash mark, such as “go”, “go to”, “i”, “o”,“1941, “68”, “us” or “-”, are also confusingly similar to the Complainant’s trademark.
Therefore, the Complaint has proven the first element required by paragraph 4(a) of the Policy.
The Complainant asserted that the Respondent has no rights or legitimate interests in the disputed domain names and, as stated above, the Respondent did not provide any information to the Panel asserting any rights or legitimate interests it may have in the disputed domain names.
It is apparent from the Complaint that there is no connection between the Respondent and the Complainant or its business. The Respondent did not rebut the Complainant’s contention that the disputed domain names were not used in connection with any bona fide offering of goods or services. The lack of a Response leads the Panel to draw a negative inference.
Therefore, and also in light of the Panel’s findings below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
Accordingly, the Complaint has proven the second element required by paragraph 4(a) of the Policy.
The Complainant contended the Respondent had registered and is using the disputed domain names in bad faith. The Respondent did not respond.
The Complainant presents the evidence that 4 disputed domain names, i.e. <1941coach.com>, <gocoachshop.com>, <shopcoach.net> and <shophandbagscoach.com>, are active and resolve to the same website “www.ecoachshop.com”, which copies both the contents and layouts of the Complainant’s website “www.coach.com” and possibly sells counterfeit Coach products. Since the disputed domain names were registered and are fully controlled by the Respondent, the Respondent is responsible for any use of them. Such use of the disputed domain names is highly likely to attract and confuse the consumers with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the disputed domain names’ website or of the products on the website. Therefore, the registration and use of 4 above-mentioned disputed domain names constitute the evidence of bad faith specified in paragraph 4(b)(iv) of the Policy.
With respect to the other disputed domain names, all of them are confusingly similar to the Complainant’s trademark COACH. Since the Respondent has obviously shown a pattern of conduct to copycat the Complainant’s trademark and business, the group of domain name registration constitutes the evidence of bad faith specified in paragraph 4(b)(ii) of the Policy.
Therefore, the Complaint successfully proves the third element required by paragraph 4(a) 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 <coach-handbags-outlet-store.com>, <shophandbagscoach.com>, <o1941coach.com>, <coachbagshop.net>, <coach-coach-coach.com>, <coach-coachoutlet.com>, <coach-coachoutlets.com>, <coachfactoryonlineoutlet.com>, <coachfactoryoutletstore.com>, <coachhandbags-us.com>, <coach-online-outlet-store.com>, <coachonlineoutletstore.com>, <coachoutletbag.net>, <coachoutletshop.net>, <coachoutletshop.org>, <coach-outletstore.net>, <coachstoer.com>, <gocoachfactory.com>, <gocoachonlineoutletstore.com>, <gocoachoutletstores.com>, <gocoachshop.com>, <gocoachstore.net>, <gocoachstores.com>, <gotocoachstore.com>, <goto1941coach.com>, <go1941coach.com>, <i1941coach.com>, <shopcoach.net>, <us-coach-outlet.com>, <1941coach.com>, <1941coachhandbags.com>, <1941coach.net> and <68coach.com>be transferred to the Complainant.
Dr. Hong Xue
Sole Panelist
Dated: February 8, 2011