The Complainant is Katie Loxton Limited, United Kingdom (“UK”), represented by Barker Brettell LLP, UK.
The Respondent is Bai Hou, China.
The disputed domain name <saleskatieloxton.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2019. On July 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 2019, 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.
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, and the proceedings commenced on August 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2019.
The Center appointed Sok Ling MOI as the sole panelist in this matter on August 29, 2019. 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, established in 2015, has head offices in Oxfordshire (UK) and in Charlotte, North Carolina (United States of America). The Complainant is in the business of designing and selling fashion wear and accessories. Today, the Complainant employs over 140 people and stocks products in over 17 major retail and department stores in the UK. The Complainant sells a range of fashion wear and accessories (such as handbags, purses, pouches, keyrings, scarves, jewellery, make-up accessories) under the KATIE LOXTON brand.
The Complainant is the proprietor of the following trade mark registrations for KATIE LOXTON:
|
Jurisdiction |
Trade Mark |
Registration No. |
Registration Date |
Class |
|
European Union |
KATIE LOXTON |
1267967 |
March 28, 2017 |
14, 18, 25, 35 |
|
United States of America |
KATIE LOXTON |
1360631 |
November 21, 2016 |
3, 20, 28 |
|
UK |
KATIE LOXTON |
3075441 |
January 23, 2015 |
14, 18, 25, 35 |
|
UK |
KATIE LOXTON |
3095655 |
May 15, 2015 |
3, 4, 5, 9, 16, 26 |
|
UK |
KATIE LOXTON |
3165736 |
October 14, 2016 |
3, 20, 28 |
The Complainant operates an official website at “www.katieloxton.com” to provide information about its business and products.
The disputed domain name <saleskatieloxton.com> was registered by the Respondent on July 20, 2018. The disputed domain name resolves to a website which purports to offer for sale fashion wear and accessories under the KATIE LOXTON brand.
The Complainant contends that it has common law and registered trade mark rights over KATIE LOXTON. The Complainant claims that the disputed domain name is confusingly similar to its trade mark.
The Complainant contends that the Complainant has neither licensed nor otherwise authorized the Respondent to use its trade mark. The Complainant contends that as the Respondent is using the domain name to publish to a website purportedly offering for sale fashion wear and accessories under the KATIE LOXTON brand, such use suggests that the Respondent is associated with the Complainant and cannot be bona fide. The Complainant therefore claims that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant contends that KATIE LOXTON has acquired a substantial reputation throughout Europe and the world and is a well-known mark. The Complainant contends that, as the “look and feel” of the Respondent’s website resembles that of the Complainant’s official website, the disputed domain name is used to create confusion and unfairly attract Internet users to the Respondent’s website for financial gain. The Complainant therefore claims that the Respondent has registered and is using the disputed domain name in bad faith.
For all of the above reasons, the Complainant requests for the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(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.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:
The Panel accepts that the Complainant has rights in KATIE LOXTON by virtue of its use and registration of the same as a trade mark.
The disputed domain name incorporates the Complainant’s trade mark KATIE LOXTON in its entirety. The addition of the word “sales” does not avoid a finding of confusingly similarity between the domain name and the Complainant’s trade mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not impact the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark in this case.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.
Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of proof to establish that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence in support of its rights or legitimate interests in the disputed domain name. The respondent may establish its rights in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.
See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd, WIPO Case No. D2013-0974.
The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the KATIE LOXTON trade mark or to seek registration of any domain name incorporating the trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or has acquired any trade mark rights in the term “katie loxton”.
According to the evidence submitted by the Complainant, the Respondent was using the disputed domain name to publish a website which purported to sell fashion wear and accessories under the KATIE LOXTON brand. The Complainant had alleged that the Respondent’s website reproduced product images copied from the Complainant’s official website, and has a similar “look and feel” as the Complainant’s official website. This suggests that the Respondent has been using the disputed domain name to mislead Internet visitors by creating an affiliation with the Complainant where there is none.
The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to come forward with evidence of its rights or legitimate interests in the disputed domain name. Since the Respondent has failed to respond, the Panel determines that the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The Complainant has registered KATIE LOXTON as a trade mark and used it as a business identifier since 2015. A cursory Internet search would have disclosed the KATIE LOXTON trade mark and its use by the Complainant. The Panel accepts that the Complainant enjoys a significant online presence. There is no doubt that the Respondent was aware of the Complainant’s trade mark when it registered the disputed domain name. The Panel is satisfied that the Respondent’s purpose of registering the disputed domain name was to trade on the reputation of the Complainant and its trade mark by diverting Internet users seeking the Complainant’s products to its own website for financial gain.
According to the evidence submitted by the Complainant, the Respondent was using the disputed domain name to publish a website which reproduced product images copied from the Complainant’s official website and purporting to sell fashion wear and accessories under the KATIE LOXTON brand. This suggests that the Respondent has been using the disputed domain name to mislead Internet visitors by creating an affiliation with the Complainant where there is none.The failure of the Respondent to display a clear disclaimer of a lack of relationship between the Respondent and the Complainant on its website is indicative of bad faith.
The Panel therefore determines that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel is satisfied that the Respondent is using the disputed domain name for mala fide purposes and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.
Such use of the disputed domain name not only misleads the public but also causes disruption to the Complainant’s business. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iii) of the Policy are also applicable to the present case.
The Center was not able to reach the Respondent at the facsimile numbers and physical address recorded with the Registrar, which may suggest that the Respondent had provided false contact details at the time of registering the disputed domain name.
The Respondent has not denied the Complainant’s allegations of bad faith. In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.
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, <saleskatieloxton.com>, be transferred to the Complainant.
Sok Ling MOI
Sole Panelist
Date: September 29, 2019