WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

J. Choo Limited v. hang zhiming

Case No. D2016-0216

1. The Parties

The Complainant is J. Choo Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by A.A.Thornton & Co, United Kingdom.

The Respondent is hang zhiming of Chengdu, Sichuan, China.

2. The Domain Name and Registrar

The disputed domain name <jimmychoous.com> is registered with Xin Net Technology Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2016. On February 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 5, 2016, 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 February 8, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its 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.

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 and 4, the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on February 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2016.

The Center appointed Matthew Kennedy as the sole panelist in this matter on March 11, 2016. 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 markets a luxury and high fashion brand of footwear and accessories around the world under the trademark JIMMY CHOO. The Complainant owns registrations of that mark in multiple jurisdictions in class 25. These include Chinese Trade Mark Registration No. 1637164, registered in 2001 and still in effect. The Complainant operates the domain name <jimmychoo.com> and many other domain names incorporating its mark.

The Respondent is the registrant of the disputed domain name, which was registered on October 8, 2014. The website to which the disputed domain name resolves offers shoes for sale. It features the words “Cheap Jimmy Choo Shoes Outlet Online Sale”. It is entirely in English.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainant’s trademark. It incorporates the Complainant’s trademark in its entirety. The addition of the common geographical abbreviation “us” does not prevent it from being confusingly similar to the Complainant’s trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is using the disputed domain name to purport to offer for sale authentic JIMMY CHOO branded products. The Complainant believes that the products are counterfeit. The Respondent is not authorized to offer the Complainant’s products for sale or to register the disputed domain name. The website is linked to several other websites that also incorporate the Complainant’s trademark and it displays a favicon (that is, a shortcut icon or bookmark icon) that is highly similar to the one used on the Complainant’s genuine websites.

The disputed domain name was registered and is being used in bad faith. The registration of a domain name identical to the Complainant’s trademark is clearly aimed to disrupt the Complainant’s business by diverting Internet users from the Complainant’s genuine websites. Due to extensive use of the Complainant’s trademark on the Internet and around the world, the Respondent must have known of the trademark when applying to register the disputed domain name. The misleading use of the disputed domain name creates the impression that the Respondent’s website is connected to, affiliated with or endorsed by the Complainant and will divert Internet users searching for the Complainant’s products away from the Complainant’s genuine websites, which is disruptive to the Complainant’s business.

B. Respondent

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

6. Discussion and Findings

6.1 Language of Proceedings

Paragraph 11(a) of the Rules provides that “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”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the website to which the disputed domain name resolves is entirely in English and displays prices in US dollars and shoes in US and UK sizes. The Respondent also owns a large number of other websites many of which are also in English. This all indicates that the Respondent has an understanding of the English language.

The Panel notes that all email communications sent by the Center to the Parties have been in both Chinese and English. The Respondent was given an opportunity to object to the Complainant’s request that English be the language of the proceeding but the Respondent did not in fact object.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties (See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).

The Panel observes that in this proceeding the Complaint was filed in English. The website with which the disputed domain name is used is also in English, from which it is reasonable to conclude that the Respondent understands that language. Further, the Respondent has not expressed any wish to respond to the Complaint or otherwise participate in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

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

6.2 Analysis and Findings

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(i) the disputed domain name is 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in registered trademarks consisting of JIMMY CHOO.

The disputed domain name incorporates the Complainant’s trademark in its entirety. The disputed domain name contains the additional element “us” which is a common abbreviation of “United States” but the inclusion of a mere geographical term in a domain name does not prevent confusing similarity to a trademark. (See Time Warner Entertainment Company L.P. v HarperStephens, WIPO Case No. D2000-1254; Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768). The Panel finds that this additional element in the disputed domain name is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant’s trademark.

The disputed domain name also contains the generic Top-Level Domain (“gTLD”) suffix “.com” but a gTLD suffix generally has no capacity to distinguish a domain name from a trademark. (See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080).

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or

(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first circumstance, the disputed domain name is confusingly similar to the Complainant’s trademark and is being used with a website that offers for sale what are alleged to be the Complainant’s shoes. The Complainant states that it has no connection whatsoever with the Respondent but the website fails accurately to disclose the Respondent’s lack of any relationship to the Complainant. Whether or not the products are counterfeit, these facts show that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services. (See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). Accordingly, the Panel does not find that the Respondent’s use falls within the first circumstance of paragraph 4(c) of the Policy.

As regards the second circumstance, the Respondent’s name is “hang zhiming”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.

As regards the third circumstance, the disputed domain name resolves to a website that offers shoes for commercial sale. That is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy.

In summary, the Panel considers that the Complainant has prima facie discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The burden now shifts to the Respondent to show that he does have some rights or legitimate interests, but the Respondent did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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 [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”

The Respondent registered the disputed domain name in 2014, many years after the Complainant obtained its trademark registrations, including in China where the Respondent is located. The disputed domain name wholly incorporates the Complainant’s trademark, with the addition only of the geographical term “us” and a gTLD. The website to which the disputed domain name resolves displays the Complainant’s trademark with shoes that are allegedly the Complainant’s products. This indicates to the Panel that the Respondent intentionally chose to register the Complainant’s trademark and use it as a domain name.

The Respondent uses the disputed domain name, which wholly incorporates the Complainant’s trademark, with a website that displays the Complainant’s trademark and offers for sale what are alleged to be the Complainant’s products. The Respondent has no connection with the Complainant but this is not disclosed on the website to which the disputed domain name resolves. Further, the website displays the Complainant’s trademark in the same script as that in which it appears on the Complainant’s products and official websites. This gives the impression that the website is a site approved by, or affiliated with, the Complainant. Given these facts, the Panel considers that the Respondent’s use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products on that website.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

7. Decision

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 name <jimmychoous.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: March 18, 2016