WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Coach, Inc. v. chen feisheng, chen fei sheng, chen fei, lin jun, yang xiaochun, chen yuxuan, lin xiao fu

Case No. D2010-2004

1. The Parties

The Complainant is Coach, Inc. of New York, United States of America, represented internally.

The Respondent is chen feisheng, chen fei sheng, chen fei, lin jun, yang xiaochun, chen yuxuan, lin xiao fu of the People’s Republic of China.

2. The Domain Names and Registrars

The disputed domain names <coach1941.com>, <coachgucciclub.com>, <coachguccihut.com>, <coachguccioutlet.com>, <coachguccistore.com>, <coachoutletbag.com>, <coachpurse1941.com>, <guccicoach.com>, <guccicoachoutlet.com>, <guccicoachshop.com>, <kickscoach.com>, <uscoachguccistore.com>, <uscoachoutletbag.com>, <uscoachoutletshop.com>, <uscoachoutletstore.com> and <uscoachpurse.com> are registered with Bizcn.com, Inc. The disputed domain names <cheapcoachgucci.com>, <coachfixture.com>, <coachoutleteshop.com>, <coachoutletpurses.com>, <coachpurse123.net>, <coachpursesdiscount.com>, <coachshop711.net>, <discountcoachshop.net>, <uscoachoutletonline.com>, <uscoachoutletpurses.com>, <uscoachoutletstores.com>, <uscoachpursesdiscount.com>, <uscoachpursesoutlet.com> and <buycoachgucci.com> are registered with HooYoo Information Technology Co. Ltd. The disputed domain names <coachbuy.net>, <shopcoachoutlet.com>, <uscoachbuy.com>, <coachguccimall.com>, <coachoutlete.com> and <uscoachmall.com> are registered with Xin Net Technology Corp. The disputed domain names <coachcoachoutlet.com> and <coachoutletus.com> are registered with HiChina Zhicheng Technology Ltd.

3. Procedural History

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 HooYoo Information Technology Co. Ltd., Xin Net Technology Corp., HiChina Zhicheng Technology Ltd. and Bizcn.com, Inc. a request for registrar verification in connection with the disputed domain names. On November 23, 2010, HooYoo Information Technology Co. Ltd., Xin Net Technology Corp. and HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On the same day, Bizcn.com, Inc. informed the Center that the disputed domain names which are registered with it expired and they could not be placed on Registrar lock until the expired domain names being renewed. The Center noted that the disputed domain names which are registered with HooYoo Information Technology Co. Ltd. expired as well. Accordingly, the Center sent an email communication to HooYoo Information Technology Co. Ltd. on November 23, 2010 seeking clarification on the issues of disputed domain name expiry. On November 24, 2010, HooYoo Information Technology Co. Ltd. informed the Center that the disputed domain names would be deleted if they were not renewed. On November 24, 2010, the Center sent an email to the parties regarding the disputed domain names expiry. On December 2, 2010 and December 9, 2010, HooYoo Information Technology Co. Ltd. and Bizcn.com confirmed to the Center respectively that the expired disputed domain names had been renewed.

On December 10, 2010, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On December 15, 2010, the Complainant requested 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 10, 2010, the Center sent the Complaint Deficiency Notice to the Complainant. The Complainant filed an amendment to the Complaint on December 16, 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 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2011.

The Center appointed Dr. Hong Xue as the sole panelist in this matter on January 18, 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.

4. Factual Background

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:

All the disputed domain names are properly locked by the pertinent registrars all through the proceeding.

5. Parties’ Contentions

A. Complainant

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. <coach1941.com>, <coachgucciclub.com>, <coachguccihut.com>, <coachguccioutlet.com>, <coachguccistore.com>, <coachoutletbag.com>, <coachpurse1941.com>, <guccicoach.com>, <guccicoachoutlet.com>, <guccicoachshop.com>, <kickscoach.com>, <uscoachguccistore.com>, <uscoachoutletbag.com>, <uscoachoutletshop.com>, <uscoachoutletstore.com>, <uscoachpurse.com>, <cheapcoachgucci.com>, <coachfixture.com>, <coachoutleteshop.com>, <coachoutletpurses.com>, <coachpurse123.net>, <coachpursesdiscount.com>, <coachshop711.net>, <discountcoachshop.net>, <uscoachoutletonline.com>, <uscoachoutletpurses.com>, <uscoachoutletstores.com>, <uscoachpursesdiscount.com>, <uscoachpursesoutlet.com> , <buycoachgucci.com>, <coachbuy.net>, <shopcoachoutlet.com>, <uscoachbuy.com>, <coachguccimall.com>, <coachoutlete.com>, <uscoachmall.com>, <coachcoachoutlet.com> and <coachoutletus.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 requests that the Panel issue an order that the all disputed domain names be transferred to it.

B. Respondent

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

6. Discussion and Findings

A. Language of Proceeding

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 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 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 websites at the disputed domain names <uscoachbuy.com>, <coachbuy.net>, <coachoutlete.com>, <coachoutletus.com> and <shopcoachoutlet.com> display 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 agreement.

Having considered all the circumstances, this Panel determines under the Rules, paragraph 11(a) that English shall be the language of the proceeding.

B. Consolidation of Disputes

38 disputed domain names were registered under the names chen feisheng, chen fei sheng, chen fei, lin jun, yang xiaochun, chen yuxuan or lin xiao fu. The Complainant, however, requests all 38 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 different registrant names, it is proved that 31 out of 38 disputed domain names are registered under the name “Feisheng Chen”, who is the owner of a wholesale distribution business called SCON Ltd. All the other domain name registrations share the same contact email “[…]@163.com”, and some of them even share the same telephone numbers. The Panel, therefore, concludes that all the 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 disputed domain names under the Rules, paragraph 10(e) and 3(c).

C. Identical or Confusingly Similar

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.

38 disputed domain names are <coach1941.com>, <coachgucciclub.com>, <coachguccihut.com>, <coachguccioutlet.com>, <coachguccistore.com>, <coachoutletbag.com>, <coachpurse1941.com>, <guccicoach.com>, <guccicoachoutlet.com>, <guccicoachshop.com>, <kickscoach.com>, <uscoachguccistore.com>, <uscoachoutletbag.com>, <uscoachoutletshop.com>, <uscoachoutletstore.com>, <uscoachpurse.com>, <cheapcoachgucci.com>, <coachfixture.com>, <coachoutleteshop.com>, <coachoutletpurses.com>, <coachpurse123.net>, <coachpursesdiscount.com>, <coachshop711.net>, <discountcoachshop.net>, <uscoachoutletonline.com>, <uscoachoutletpurses.com>, <uscoachoutletstores.com>, <uscoachpursesdiscount.com>, <uscoachpursesoutlet.com> , <buycoachgucci.com>, <coachbuy.net>, <shopcoachoutlet.com>, <uscoachbuy.com>, <coachguccimall.com>, <coachoutlete.com>, <uscoachmall.com>, <coachcoachoutlet.com> and <coachoutletus.com>.

Apart from the generic top-level domain suffix “.com” or “.net”, 27 disputed domain names take the “coach + generic word(s)” model. The generic words “bag”, “purse”, “purses” and “kicks” (a slang term for shoes) are descriptive to the type of goods on which the Complainant most commonly uses its registered trademark COACH, while the words “outlet” (including “outlete”), “outlets”, “us”, “hut”, “store”, “shop”, “buy”, “online”, “mall” and “eshop” describe the types or location of stores that the Complainant presently operates to sell goods directly to consumers, while “club” refers to an organization giving discounts in exchange for regular purchases, “fixture” alludes to items attached to a store, “711” apparently refers to the telephone relay service number, “discount” and “cheap” refer to reduced prices, “1941” refers to the year the Complainant’s business was established (this fact is heavily advertised and the Complainant holds trademark registrations for COACH since 1941), and “123” is apparently Internet slang for “I agree”.

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 are confusingly similar to the Complainant’s registered trademark COACH.

One dispute domain name is <guccicoach.com>. Addition of a third-party trademark GUCCI to the Complainant’s trademark COACH is undeniably confusingly similar to the Complainant’s mark.

The rest 10 disputed domain names that comprise of the Complainant’s registered trademark COACH, a third-party trademark GUCCI and descriptive words, such as “club”, “hut”, “outlet”, “store”, “mall”, “buy”, “cheap” or “shop”, 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.

D. Rights or Legitimate Interests

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.

E. Registered and Used in Bad Faith

The Complainant contended that 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 5 disputed domain names, i.e.<uscoachbuy.com>, <coachbuy.net>, <coachoutlete.com>, <coachoutletus.com> and <shopcoachoutlet.com> are active and resolve to the websites that copy both the contents and layouts of the Complainant’s website “www.coach.com” and possibly sell 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 5 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 and refer to the Complainant’s business. 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.

7. Decision

For all 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 <coach1941.com>, <coachgucciclub.com>, <coachguccihut.com>, <coachguccioutlet.com>, <coachguccistore.com>, <coachoutletbag.com>, <coachpurse1941.com>, <guccicoach.com>, <guccicoachoutlet.com>, <guccicoachshop.com>, <kickscoach.com>, <uscoachguccistore.com>, <uscoachoutletbag.com>, <uscoachoutletshop.com>, <uscoachoutletstore.com>, <uscoachpurse.com>, <cheapcoachgucci.com>, <coachfixture.com>, <coachoutleteshop.com>, <coachoutletpurses.com>, <coachpurse123.net>, <coachpursesdiscount.com>, <coachshop711.net>, <discountcoachshop.net>, <uscoachoutletonline.com>, <uscoachoutletpurses.com>, <uscoachoutletstores.com>, <uscoachpursesdiscount.com>, <uscoachpursesoutlet.com> , <buycoachgucci.com>, <coachbuy.net>, <shopcoachoutlet.com>, <uscoachbuy.com>, <coachguccimall.com>, <coachoutlete.com>, <uscoachmall.com>, <coachcoachoutlet.com> and <coachoutletus.com> be transferred to the Complainant.

Dr. Hong Xue
Sole Panelist
Dated: February 1, 2011