WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DKH Retail Limited v. Domain Admin, Whoisprotection.cc

Case No. D2021-3549

1. The Parties

The Complainant is DKH Retail Limited, United Kingdom (“UK”), represented internally.

The Respondent is Domain Admin, Whoisprotection.cc, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <superdryshopgr.com> is registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2021. On October 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 2021 the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 1, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 1, 2021.

The Center verified that the Complaint together with the amended 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 November 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2021.

The Center appointed Cherise Valles as the sole panelist in this matter on December 13, 2021. 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 DKH Retail Limited, which owns the SUPERDRY brand created by Julian Dunkerton and James Holder in Cheltenham, England in 2002 and was launched as a clothing brand in 2003. Initially, SUPERDRY branded clothing was sold through retail stores owned by Julian Dunkerton. This chain of retail stores was called Cult Clothing, and SUPERDRY quickly became its most popular brand. Dunkerton expanded Cult Clothing and opened a number of stores across the UK. The business then decided to open SUPERDRY branded retail stores dedicated to selling only SUPERDRY branded products. A flagship store was launched in Covent Garden, London in 2004 and subsequently the Cult Clothing stores were re-branded as SUPERDRY stores. The business floated on the London Stock Exchange in March 2010. The global brand revenue for the financial year ending 2018 was around £1.6 billion and market capitalization was in excess of £1 billion. Superdry’s popularity, in part, is due to the large number of high-profile celebrities, including David Beckham, Bradley Cooper, Zac Efron, Kylie Jenner, Idris Elba, Kate Winslet, Justin Bieber, Leonardo Dicaprio, who have been featured in the mass media, wearing SUPERDRY branded clothing.

The Complainant has its head office in Cheltenham, England, and has over 740 SUPERDRY branded locations in 61 countries. There are 241 stores across the UK and mainland Europe, and 499 franchised and licensed stores globally. <superdry.com> sells to over 100 countries worldwide, operating from 21 international websites. The Complainant is the owner of a large number of domain names including <superdry.com>, <superdry.nz>, and <superdrystore.com>. In Google-page rankings, <superdry.com> is position number one for the search term “SUPERDRY”. The Complainant is the proprietor of a number of registered trademarks for the brand SUPERDRY covering clothing and accessories, plus retail services in relation to these goods. A selection of the Complainant’s UK, European Union (“EU”), and United States of America (“US”) registrations for the logo is detailed below (Annex 2). Each of the registrations listed below predate the registration of the disputed domain name.

A table showing trademark registrations for the word mark SUPERDRY internationally is at Annex 3.

The disputed domain name <superdryshopgr.com> was registered on April 6, 2021.

The disputed domain name resolves to an active website that sells clothing goods using the Complainant’s logo and wordmarks.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain name is confusingly similar to the Complainant’s registered SUPERDRY trademark, in light of the fact that it wholly incorporates the Complainant’s mark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

The disputed domain name has been registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. Furthermore, the Respondent’s impersonating and/or competing uses of the disputed domain name is clear evidence of bad faith.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the dispute domain name; and

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

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.

The Complainant submits that the disputed domain name is confusingly similar to the trademark in which it has rights. The disputed domain name incorporates the SUPERDRY trademark in its entirety with the addition of the term “shopgr”. Given the Complainant’s trademark registrations as detailed above, the Complainant has established its trademark rights in the term “SUPERDRY” for the purposes of paragraph 4(a)(i) of the Policy.

As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. See also Hachette Filipacchi Presse v Vanilla limited/Vanilla Inc/Domain Finance Ltd., WIPO Case No. D2005-0587.

It is well established in previous UDRP decisions that, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, such as the term “shop” together with the letters “gr” (which may refer to Greece), would not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0. See also Valentino S.p.A. v. Jack Wuzheng, Hongyun Trade Inc, Jacket Chan, Tech Trade Inc., WIPO Case No. D2019-0647. This case involved the domain names <shoesvalentino.com> and <shoevalentino.com>, among others. The panel stated that “the disputed domain names consist of, each time, the combination of two elements, which are the Complainant’s VALENTINO trademark and the addition of a clearly descriptive element, namely […] “shoes”, “shoe” […]”. The Panel concluded that each of the disputed domain names contain the entirety of the complainant’s trademark, which remains clearly recognizable as such. Accordingly, the panel decided that the disputed domain names are confusingly similar to the complainant’s trademarks, and the first element required by the Policy is fulfilled.

It is standard practice when comparing a disputed domain name to a complainant’s trademark not to take the Top Level Domain (“TLD”) into account. See section 1.11.1 of the WIPO Overview 3.0, which states that the “applicable TLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and, as such, is disregarded under the first element of the confusing similarity test”. In the present case, the TLD “com” is disregarded under the first element of the confusing similarity test.

In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):

“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Previous UDRP panels have held that a complainant must establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent. See, The American Automobile Association, Inc. v. PrivacyProtect.org/ Domain Tech Enterprises and The American Automobile Association, Inc. v. PrivacyProtect.org/Tarun Kumar and The American Automobile Association, Inc. v. Publishier LLC, WIPO Case No. D2011-2202, where the panel noted that a complainant need only show a prima facie case that respondent lacks rights or legitimate interests in a disputed domain name in order to shift the burden of production to the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has not been authorized to use the term “Superdry” in the disputed domain name nor for the content on the website at the disputed domain name. The Respondent does not have permission, consent or authorization to use the SUPERDRY trademark or as a domain name or use content including the Complainant’s registered marks / brand name in relation to clothing and related goods.

The Complainant asserts that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. From the content of the website at the disputed domain name, it appears that the website is displaying clothing goods for sale using the Complainant’s trademarks and logos without its consent or authorization in order to pass its products off as the Complainant’s (Annex 5 of the Complaint). The Respondent diverts customers away from the Complainant’s website. The Respondent is not commonly known by the disputed domain name. The Complainant has worldwide trademark rights for SUPERDRY in relation to clothing and related goods/services. The Respondent has not been commonly known by the domain name in this context.

On the evidence before the Panel, it appears that there has never been any relationship between the Complainant and the Respondent. The Respondent does not seem to be licensed, or otherwise authorized, be it directly or indirectly, to register or use the Complainant’s SUPERDRY trademark in any manner, including in, or as part of, the disputed domain name.

The Complainant asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests in the disputed domain name. In particular, the Respondent cannot assert that, prior to any notice of this dispute, it was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy.

The Complainant submits that the Respondent is not a licensee, authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trademark. Specifically, the Respondent is not an authorized reseller of the Complainant and has not been authorized to register and use the disputed domain name.

Furthermore, the Panel finds that the nature of the disputed domain name, consisting of the Complainant’s SUPERDRY trademark with the addition of the term “shop” and the letters “gr”, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark 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 domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location.

The term “bad faith” is “broadly understood to occur where a respondent takes unfair advantage of, or otherwise abuses, a complainant’s mark”. See section 3.1 of the WIPO Overview 3.0.

The Complainant asserts that the disputed domain name was registered and was being used in bad faith. Paragraph 4(b) of the Policy lists four factors which, in particular but without limitation, may be evidence of registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy.

Furthermore, as noted under the second element, the nature of the disputed domain name, consisting of the Complainant’s SUPERDRY trademark with the addition of the term “shop” and the letters “gr”, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant.

Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

By using its logos and offering similar goods to that of the Complainant, the Respondent is using the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s registered marks as to the source of the website. The Complainant owns the disputed domain name <superdry.com>. The Respondent’s domain name is almost identical to the Complainant’s main domain name aside from the additional term “shop” and the letters “gr”, which may be a reference to “shop Greece”. The Respondent is thus attempting to associate itself with the Complainant by replicating the Complainant’s online presence. Based on the available record, the Panel finds that the Respondent knew of the Complainant’s trademark when it registered the disputed domain name. This is clear as the disputed domain has been set up to mimic a genuine Superdry website and uses the registered trademarks and logos in exactly the same form as the legitimate content on “www.superdry.com”. The logo used on the website associated with the disputed domain name is identical to a logo that the Complainant has used in the past (Annex 6 of the Complaint).

The Complainant’s SUPERDRY trademark is recognizable around the world. The incorporation of a well-known trademark into a domain name by a registrant that has no plausible explanation for doing so may be, in and of itself, an indication of bad faith. See Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) 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 <superdryshopgr.com> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: December 27, 2021