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 Respondent is dfdg dfg dfgd fgsd of Putian, China.
The Domain Names <jimmychooaustraliasale.com> and <jimmychoooutletonline.com> are registered with Xin Net Technology Corp. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2012. On October 8, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 9, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 11, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceedings. On October 11, 2012, the Complainant confirmed its request that English be the language of the proceedings. The Respondent 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 Respondent of the Complaint, and the proceedings commenced on October 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2012.
The Center appointed Colin Yee Cheng Ong as the sole panelist in this matter on November 16, 2012. 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.
It has been necessary to this Panel to extend the period for issuing a decision in this case to the date indicated under paragraph 7 below.
4.1 The Complainant has not informed the Center when it had discovered that the Domain Names <jimmychooaustraliasale.com> and <jimmychoooutletonline.com> were registered.
4.2 The Complainant has however provided evidence to show that it is the owner of the following trademarks:
Community Trademark Registration No. 1662543 JIMMY CHOO in class 25
Community Trademark Registration No. 2587830 JIMMY CHOO in classes 3, 9, 14, 18, 35
Chinese Trademark Registration No. 3189589 JIMMY CHOO in class 3
Chinese Trademark Registration No. 6015566 JIMMY CHOO in class 4
Chinese Trademark Registration No. 3189590 JIMMY CHOO in class 9
Chinese Trademark Registration No. 3189591 JIMMY CHOO in class 14
Chinese Trademark Registration No. 3189592 JIMMY CHOO in class 18
Chinese Trademark Registration No. 4605177 JIMMY CHOO in class 24
Chinese Trademark Registration No. 1637164 JIMMY CHOO in class 25
Chinese Trademark Registration No. 6053899 吉米周 (JIMMY CHOO in Mandarin) in class 3
Chinese Trademark Registration No. 6053900 吉米周 (JIMMY CHOO in Mandarin) in class 9
Chinese Trademark Registration No. 6053902 吉米周 (JIMMY CHOO in Mandarin) in class 18
Chinese Trademark Registration No. 6053901 吉米周 (JIMMY CHOO in Mandarin) in class 25
5.1 The Complainant contends that the Domain Names <jimmychooaustraliasale.com> and <jimmychoooutletonline.com> are confusingly similar to JIMMY CHOO in which it holds rights for the following reasons:
(i) The Complainant owns many gTLDs and ccTLDs incorporating its trademark. 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”.
(ii) The Complainant gave evidence to show that its genuine website at “www.jimmychoo.com” attracts significantly large volumes of traffic from countries all over the world including United Kingdom and China.
(iii) The Complainant contended that the JIMMY CHOO brand is recognized as a high fashion brand around the world, and that it has a significant reputation for luxury footwear, handbags, small leather goods, perfumes and accessories such as sunglasses, scarves and belts. The Complainant submitted that it has been trading under the JIMMY CHOO brand since 2001 and has spent considerable amounts of time and money advertising the brand since 2001.
(iv) Finally, the Complainant asserted that the Domain Names incorporate the Complainant’s registered trademark JIMMY CHOO in its entirety and with the additional generic words “outlet” and “online” and “Australia” and “sale”. The Complainant submitted that the addition of such generic words does not prevent the Domain Names from being confusingly similar to the Complainant’s registered mark. On the contrary, such generic words indicate to consumers that the websites purported to be an online outlet for JIMMY CHOO products and that they offered for sale of JIMMY CHOO products targeting consumers in Australia. On this basis, the Complainant concludes that the Domain Names are confusingly similar to the mark in which the Complainant has rights.
5.2 The Complainant contends that the Respondent has no rights and legitimate interests in the Domain Names for the following reasons:
(i) The Complainant had not found that the Respondent has any registered trademarks corresponding to the Domain Names and that the Complainant was unable to find anything that would suggest that the Respondent has been using “Jimmy Choo” in any other way that would give them any legitimate rights in the Domain Names.
(ii) The Complainant has not licensed or given authorization of any other kind to the Respondent to use the trademark JIMMY CHOO.
(iii) The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. Nor is there a disclaimer on the website describing the non-existent relationship with the Complainant.
(iv) The Respondent’s use does not satisfy the test for bona fide use established in prior UDRP decisions. The Respondent does not use the Domain Names in connection with a bona fide offering of goods or services.
5.3 The Complainant, lastly, contends that the Domain Names were registered and are being used in bad faith for the following reasons:
(i) The Complainant alleged that the awareness of the trademark JIMMY CHOO is considered to be significant and substantial. As the Complainant has provided only fairly general evidence to support this sweeping conclusion, the Panel is reluctant to accept the Complainant’s conclusory statement as such, although the Panel is certainly aware that JIMMY CHOO is a widely used mark around the world, including apparently in China.
(ii) Finally, the Complainant attached evidence to show that the Domain Names are currently connected to websites containing sale of JIMMY CHOO products. The Complainant asserted that the Respondent is using the Domain Names to intentionally gain commercially by attracting Internet users to its websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites.
The Complainant requests a decision that the Domain Names be transferred to the Complainant
5.4 The Respondent did not reply to the Complainant’s contentions.
6.1 The Complaint was filed in the English language. On October 11, 2012 the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. Pursuant to the 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. The Center has been informed by the concerned Registrar that the language of the Registration Agreement for the Domain Names is Chinese. Although the Chinese language is the language of the Registration Agreement for the Domain Names, the Complainant asserted its request that English should be the language of proceedings. The basis for this request is the fact that the Domain Names and the websites under the Domain Names are in English and that the Respondent’s Domain Names incorporating the Complainant’s registered trademark are the English words “outlet”, “online”, “Australia” and “sale”. According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement unless the panel decides otherwise. The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors. This Panel would like to make it clear that the reasoning given by the Complainant is not in its view a proper legal basis for not adopting the proper language of proceedings as set out in paragraph 11 of the Rules. Furthermore, the convenience of the Complainant cannot alone form any legal basis to alter the agreed language of the Registration Agreement nor the agreed Rules of the dispute resolution. Had this been a contested matter, the Respondent may have been likely to have been entitled to expect the Panel to rule that the language of the proceedings should be Chinese, in strict adherence to paragraph 11 of the Rules.
However, in the present case, considering the composition of the Domain Names and the Panel’s assessment of the unique circumstances of the case, bearing in mind its broad powers given to the Panel by paragraph 11(a) of the Rules, and bearing in mind the fact that the Respondent did not attempt to contest these proceedings, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case.
6.2. The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The procedural history of this case raises the question as to whether the Respondent has received notice of this proceeding. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules.
6.3 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below. This Panel does not find any exceptional circumstances pursuant to paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.4 The Respondent has been accorded with the opportunity to provide submissions and evidence to dispute the claims of the Complainant. Some previous WIPO UDRP panels have suggested that if the respondent chooses not to present any such evidence, an inference may be made that such evidence would not have been favorable to the respondent, or that it accepts the claims of the complainant, or even that it does not wish to respond or defend its perceived interest in the domain name. (See cases set out by the Complainant above). However, this Panel respectfully views that any such adverse inference is not conclusive at all and the Complainant would still be obliged to prove its case in accordance with the Policy and the Rules. The burden of proof falls upon and remains on the Complainant. In such case of silence by the Respondent, the Complainant shall then continue with its case and shall have to prove the three elements that are required by the Policy without opposition than the Complainant’s own ability to explain them. (See: PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700). Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel “shall draw such inferences therefrom as it considers appropriate”. Therefore, in a case where a respondent fails to put in a response, a panel may draw negative inferences from the respondent’s default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”). Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects as set out in paragraph 4(a) of the Policy (see, PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700). Namely, the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
6.5 Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
6.6 In line with such provision, the Complainant must prove two limbs, i.e., that it holds the trademark or service mark rights; and that the Domain Names are identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the domain name and the trademark alone, independent of the domain name’s use or other marketing factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).
6.7 The Complainant has appended to the Complaint a long list of registered trademarks for JIMMY CHOO. It is quite clear that the Complainant is the owner of a number of trademarks that simply comprise the word “Jimmy Choo”. The Respondent’s registration consisting of the Complainant’s trademark JIMMY CHOO in addition with the generic words “outlet” and “online” and “Australia” and “sale” do not prevent the Domain Names from being confusingly similar to the Complainant’s registered mark. They do indeed cause confusing similarity and many previous panel decisions pronounced under the UDRP in similar situations including such as “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Xu Chi, WIPO Case No. D2012-0705 and F. Hoffmann-La Roche AG v. Drug Sale, WIPO Case No. D2006-0066, had decided that such additions of generic words were not enough to distinguish capacity in the context of the domain name and they do not alter the value of the trademarks represented in the domain name. Given this, the Panel has little difficulty in concluding that the Domain Names are confusing similar to a number of trademarks in which the Complainant has rights.
6.8 In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
6.9 The Panel accepts that the Complainant has satisfied it in providing evidence showing that the trademarks for JIMMYCHOO are well-known throughout the world, registered and recognized as a high fashion brand around the world, for luxury footwear, handbags, small leather goods, perfumes and accessories. At the heart of the Complaint is the Complainant’s contention that the Respondent has taken the trademark of the Complainant with a view to attracting Internet users to its websites to intentionally link its Domain Names to websites, which purport to sell JIMMY CHOO products. The Respondent had even displayed on the websites the Complainant’s trademark and stylized trademark as well as advertising images taken from the Complainant’s genuine advertising campaign. The Panel accepts that such activity clearly does not provide the Respondent with a legitimate interest in the Domain Names.
6.10 According to paragraph 4(a)(ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the Domain Names. However, it is the prevailing view among UDRP panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests in the disputed domain names, and the respondent fails to show, inter alia, one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a right or legitimate interest in the disputed domain names.
6.11 As previously held by other UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. (See eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001).
6.12 As another panel had held in the case of Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Varentinuo inc. reg by sopao.com, WIPO Case No. D2008-0186, if a respondent wants to argue that it has a right or legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.16 of that decision).
6.13 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to rights or legitimate interests in the Domain Names. There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the Domain Names, or that the Respondent has made non-commercial or fair use of the Domain Names. The Respondent has also not used the Domain Names in connection with a bona fide offering of goods or services. The Panel thus finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the Domain Names which are confusingly similar to the Complainant’s mark.
6.14 Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the Domain Names and that the requirement of paragraph 4(a)(ii) is also satisfied.
6.15 The Complainant submitted that by using domain names confusingly similar to the Complainant’s mark, in relation to websites purportedly selling JIMMY CHOO products, the Respondent is intentionally attempting to attract for commercial gain Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark in order to suggest that the websites are associated with, endorsed or sponsored by, or otherwise connected to the Complainant. Noting the Panel’s observations in paragraph 5.3(i) above, the Panel has little difficulty in accepting that when the Respondent registered the Domain Names, it did so with awareness of the Complainant’s business worldwide and the widely-used JIMMY CHOO trademark.
6.16 The Panel accepts the Complainant’s contention that the Respondent registered the Domain Names in the knowledge of the Complainant’s business and its use of the JIMMY CHOO trademark. The Panel accepts the evidence presented by the Complainant as well as the Complainant’s submission that the Respondent is using the Domain Names to intentionally gain commercially by attracting Internet users to websites, by creating a likelihood of confusion with the Complainant’s mark
6.17 Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt to attract for commercial gain Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source of a website.
6.18 Given that the Respondent has failed to show (for the reasons set out under the heading Rights and Legitimate Interests above) that it was using the Domain Names genuinely for its own goods or services and that it has also failed to disclose on the site the true relationship between it and the Complainant, the Panel concludes that the Respondent in this case did intentionally attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark. The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.
6.19 The Panel comes to the conclusion that the Respondent most likely registered the Domain Names in order to prevent the Complainant from adopting the trademark in corresponding domain names. This has been done in bad faith.
6.20 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainant. The Panel has been able to conclude that the Respondent registered and used the Domain Names in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <jimmychooaustraliasale.com> and <jimmychoooutletonline.com> be transferred to the Complainant.
Dr Colin Yee Cheng Ong
Sole Panelist
Dated: December 13, 2012