WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LK Bennett Fashion Limited v. 解玉宏 (Jie Yu Hong) / 陈晓梅 (xiao meichen)

Case No. D2020-2326

1. The Parties

The Complainant is LK Bennett Fashion Limited, United Kingdom, represented by SILKA AB, Sweden.

The Respondents are 解玉宏 (Jie Yu Hong), China / 陈晓梅 (xiao meichen), China.

2. The Domain Names and Registrars

The disputed domain names <lkbennette.com> and <lkbennetts.com> are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”). The disputed domain name <lkbennetti.com> is registered with Xin Net Technology Corp. (the “Registrar”). The disputed domain name <lkbennett.shop> is registered with Alibaba Cloud Computing Limited (the “Registrar”). The disputed domain name <lkbennett.top> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2020. On September 7, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On September 8, 2020 and on September 9, 2020, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 10, 2020 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint in English including a request for consolidation of multiple registrants on September 14, 2020.

On September 10, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On September 14, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding.

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 and 4, the Center formally notified the Respondents in English and Chinese of the Complaint, and the proceedings commenced on September 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on October 8, 2020.

The Center appointed Francine Tan as the sole panelist in this matter on October 16, 2020. 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, LK Bennett Fashion Limited, is a British affordable luxury brand, founded by Linda Bennett in London in 1990 with the vision of bringing “a bit of Bond Street luxury to the High Street”. The L.K.Bennett brand is renowned for its signature kitten heels favoured by celebrities. The Complainant also has a significant presence on various social media platforms, such as Facebook, YouTube, Instagram, and Twitter.

The Complainant owns rights to, inter alia, United Kingdom trade mark registration No. UK00002622184 for LK BENNETT registered on September 21, 2012; and International trade mark registration No. 1347425 for LK BENNETT registered on February 18, 2017, in which China is designated. The Complainant also owns rights to other LK BENNETT trade marks in China.

The disputed domain name <lkbennetti.com> (in the name of 陈晓梅 (xiao meichen)) was registered on April 18, 2017. The disputed domain names <lkbennette.com>, <lkbennetts.com>, <lkbennett.shop> and <lkbennett.top> (in the name of 解玉宏 (Jie Yu Hong)) were registered on July 20, 2019. The disputed domain names resolve to websites purportedly offering L.K.Bennett-branded clothing, bags, fashion accessories and shoes for sale.

5. Parties’ Contentions

A. Complainant

The disputed domain names <lkbennett.shop> and <lkbennett.top> are identical to the Complainant’s LK BENNETT trade mark as the trade mark is incorporated entirely therein. The disputed domain names <lkbennetti.com>, <lkbennette.com> and <lkbennetts.com>, are confusingly similar to the Complainant’s LK BENNETT trade mark. The addition of letters “i”, “e” and “s”, respectively, do not avoid confusing similarity with the Complainant’s LK BENNETT trade mark as they “contain sufficiently recognizable aspects of the relevant mark”. The addition of the generic Top-Level Domains (“gTLDs”) “.com”, “.shop” and “.top” is a standard registration requirement and is not relevant to whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark.

The Respondents have no rights or legitimate interests in the disputed domain names. The Respondents are offering low-price unauthorized goods (that appear to be counterfeit) on websites which imitate the Complainant’s website. The Respondent’s websites also lack any form of disclaimers of affiliation with the Complainant. Authentic products of the Complainant can only be purchased via the Complainant’s official website “www.lkbennett.com” or in any of the Complainant’s stores.

The disputed domain names were registered and are being used in bad faith. The LK BENNETT mark has been used since as early as 1990 and is distributed in numerous countries. It is a well-known trade mark in the fashion industry. The Respondents’ websites are similar and imitate the Complainant’s official website. They display the Complainant’s LK BENNETT logotype and their layout/design are similar to the Complainant’s official website. The Respondents could not have been unaware of the Complainant’s LK BENNETT mark when registering the disputed domain names. The Complainant has not authorized the Respondents to carry out any activities or to use any of its trade marks. The Respondents are seeking to rely on a misleading impression of a legitimate association between the disputed domain names and the Complainant’s LK BENNETT trade mark.

B. Respondents

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

6. Discussion and Findings

6.1 Preliminary Issue: Request for Consolidation

A preliminary issue to be addressed is whether the Complainant is entitled to file a consolidated complaint against the Respondents. The Complainant based its request for consolidation of the Respondents on these grounds:

(i) it would be procedurally efficient and fair and equitable to all Parties;

(ii) the evidence shows that the Respondents are either one and the same person, entity, or network and are connected to each other and are under common control aimed at intentionally infringing the Complainant’s LK BENNETT trade mark;

(iii) both Respondents are located in China; and

(iv) all five websites are identical in their design and layout.

Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides as follows:

“Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.

Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).”

The Panel finds that the circumstances in this case entitle the Complainant to bring the Complaint in respect of the five disputed domain names against both Respondents. The disputed domain names have been used to target the Complainant’s LK BENNETT trade mark in the fashion industry and the content and layout of the Respondents’ websites are practically identical, if not very closely similar. Further, the telephone number for both Respondents is the same according to the Registrars’ confirmation. These strongly suggest that the Respondents could be one and the same person or entity and if not, that there is a close connection between them, and they are under common control. The Respondents have not disputed this to be otherwise. In the circumstances, the Panel agrees that it would be procedurally efficient for consolidation to apply in this case.

6.2 Preliminary Issue: Language of the Proceeding

Paragraph 11 of the Rules provides that:

“(a) 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 language of the Registration Agreements for the disputed domain names is Chinese.

The Complainant requested that the language of the proceeding be English. The reasons are that:

(i) the disputed domain names “incorporate a UK trademark and the Respondent has chosen the .com, .top, and .shop gTLDs which are all in English”;

(ii) all five websites are operated in English, which shows that the Respondents are familiar with the English language; and

(iii) the proceeding will be put through unnecessary trouble and delay if Chinese were made the language of the proceeding.

The Respondents did not comment on the language of the proceeding.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (See Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

Having considered the above factors, the Panel determines that English be the language of the proceeding. The Panel agrees that the Respondents appear to be familiar and comfortable with the English language, taking into account their selection of the English-language trade mark to register the disputed domain names, the nature of the gTLDs, and the language used on the websites at the disputed domain names. In the absence of an objection by the Respondents, the Panel does not find it procedurally efficient to have the Complainant translate the Complaint and evidence into Chinese.

6.3 Substantive Issues

A. Identical or Confusingly Similar

The Complainant has established it has rights in the LK BENNETT trade mark. The trade mark is reproduced in its entirety in the disputed domain names. The Panel agrees that the addition of letters “i”, “e” and “s” in <lkbennetti.com>, <lkbennette.com> and <lkbennetts.com>, respectively, does not serve to avoid confusing similarity with the Complainant’s trade mark. The addition of the gTLDs “.com”, “.shop” and “.top” is a standard registration requirement and is not relevant to whether the disputed domain names are identical or confusingly similar to the Complainant’s trade mark.

The disputed domain names <lkbennett.shop> and <lkbennett.top> are therefore identical, and the disputed domain names <lkbennetti.com>, <lkbennette.com> and <lkbennetts.com> are confusingly similar, to the Complainant’s LK BENNETT trade mark.

The Panel accordingly finds that the first element of paragraph 4(a) of the Policy has been satisfied.

B. Rights or Legitimate Interests

The Complainant has established a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names. The Complainant’s trade mark registration and many years of use of the LK BENNETT trade mark long predate the registrations of the disputed domain names. There is no evidence that any licence or authorization has been extended by the Complainant to the Respondents for the use of the LK BENNETT trade mark and in a domain name. Neither is there evidence that the Respondents are commonly known by the name “LK Bennett”. The use of the disputed domain names suggests an affiliation with the Complainant and the LK BENNETT trade mark. The Respondents’ websites use the Complainant’s official product images without authorization while also falsely claiming copyright in such material, all of which create a false impression of affiliation with the Complainant. Further, the Respondents are purportedly selling counterfeit goods of the Complainant on their websites. Such use of the disputed domain names does not constitute a bona fide offering of goods or services nor a legitimate noncommercial use or fair use.

The Respondents failed to respond or rebut the Complainant’s assertions.

The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

The Respondents could not, by pure coincidence and without knowledge of the LK BENNETT mark, have registered the disputed domain names without the Complainant and/or its mark in mind. The evidence of how the Respondents are using the disputed domain names shows clearly that they are very familiar with the Complainant’s products and LK BENNETT trade mark. There is no doubt that the Respondents registered the disputed domain names with a view to intention to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant’s registered LK BENNETT trade mark as to the source, sponsorship, affiliation, or endorsement of their websites or locations or of a product or service on their websites. Therefore, the disputed domain names were registered and are being used in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been satisfied.

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 names <lkbennette.com>, <lkbennetti.com>, <lkbennetts.com>, <lkbennett.shop> and <lkbennett.top> be transferred to the Complainant.

Francine Tan
Sole Panelist
Date: October 26, 2020