Westmore · UDRP DecisionJimmychooutletsale2013.com
The Panel ordered transfer of <jimmychooutletsale2013.com>. It found the domain confusingly similar to the Complainant’s registered JIMMY CHOO trademark, found no rights or legitimate interests because the Respondent’s former commercial use and current passive holding did not establish legitimacy, and found bad-faith registration and use based on the widely known mark and the Respondent’s use of the domain to attract visitors for commercial benefit through confusion.
The timeline behind jimmychooutletsale2013.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind jimmychooutletsale2013.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates that a domain combining a recognizable trademark with retail-oriented terms and a minor omitted letter can remain confusingly similar. It also shows that later inactivity does not erase evidence of prior bad-faith commercial use, and that an online seller cannot establish legitimate reseller activity merely by offering trademarked goods.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION J. Choo Limited v. Liu Da Ming Case No. D2016-0150 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 Liu Da Ming of Beijing, China. 2. The Domain Name and Registrar The disputed domain name <jimmychooutletsale2013.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2016. On January 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 26, 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. 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 January 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2016. The Center appointed Anders Janson as the sole panelist in this matter on February 25, 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 has been trading under the JIMMY CHOO brand since 2001. JIMMY CHOO is protected as a trademark in various countries and regions around the world. The trademarks have been registered, inter alia, during the period between December 22, 2000 – November 13, 2012. The Complainant is the proprietor of two community trademarks and several Chinese trademark registrations. The Complainant also owns many generic Top-Level Domain (gTLD) and country-code Top Level Domain (ccTLD) names incorporating its trademark. The Complainant has, as of April 2013, over 120 JIMMY CHOO branded stores across the world and new JIMMY CHOO products and collections are frequently featured in the fashion pages of magazines. The Disputed Domain Name was registered on April 7, 2013 and contains the trademark JIMMY CHOO. Currently, the website at the Disputed Domain Name is inactive. Previously the Disputed Domain Name resolved to an online shop offering for sale goods under the Complainant’s JIMMY CHOO mark. 5. Parties’ Contentions A. Complainant The JIMMY CHOO brand is recognized as a luxury and high fashion brand around the world and offers footwear for woman and men, handbags, small leather goods, scarves, perfumes, sunglasses and belts. The Complainant has rights in the trademark JIMMY CHOO by virtue of registration and use. The Complainant notes that the Disputed Domain Name includes a misspelling and can be read as either “jimmy choo utlet” or “jimmy cho outlet”. However, the Disputed Domain Name will be viewed by consumers as consisting of the words “Jimmy choo outlet” despite the missing letter “o” as it is difficult to identify the missing letter when the words are merged together as “jimmychooutlet”. The addition of the words “outlet”, “sale” and “2013” does not prevent the Disputed Domain Name from being confusingly similar to the trademark JIMMY CHOO. The additional words are associated with the Complainant’s business. The addition of generic or descriptive words is not sufficient to avoid confusing similarity. The Respondent’s use of the trademark JIMMY CHOO in the Disputed Domain Name is an attempt to catch Internet users searching for the Complainant’s goods using the Complainant’s registered trademark. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The goods marked with JIMMY CHOO which are offered for sale on the website found at the Disputed Domain Name are counterfeit. The Respondent is not authorized to offer the Complainant’s products for sale or to register the Disputed Domain Name. The Respondent cannot claim a legitimate interest in the Disputed Domain Name as the use is misleading. The JIMMY CHOO trademark is well known and the Respondent must have known of the trademark when applying to register the Disputed Domain Name. The Respondent must have chosen to register a domain name including the JIMMY CHOO mark to benefit from the goodwill attached to this trademark by leading consumers to believe there is a link between the Disputed Domain Name and the Complainant. The Disputed Domain Name creates the impression that the website to which it resolves 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 website, which is disruptive to the Complainant’s business. The use of the Disputed Domain Name is in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Given the Complaint and evidence submitted by the Complainant and the Respondent’s failure to file a Response, the Panel accepts as true the reasonable contentions of the Complainant. The Respondent’s default does not however automatically lead to a transfer of the Disputed Domain Name. On the contrary, the Complainant still must establish that it is entitled to a transfer of the Disputed Domain Name under the Policy. According to Paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish 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; (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 The Panel finds that the Complainant does have trademark rights to JIMMY CHOO with reference to the trademark registrations submitted by the Complainant. The Disputed Doman Name is <jimmychooutletsale2013.com> and therefore contains the Complainant’s registered trademark. The additional non-distinctive and generic terms are insufficient to avoid a finding of confusing similarity. The Panel therefore finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark. Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests In this case, the Complainant has submitted convincing argumentation and enough evidence of its exclusive right concerning the JIMMY CHOO trademark, and that the Respondent is fraudulently using the Disputed Domain Name to take advantage of the Complainant’s trademark. The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Therefore, the burden of production shifts to the Respondent to bring forward appropriate allegations or evidence of its rights or legitimate interests. The Respondent has not replied to the Complainant’s contentions. The failure to file a Response leaves the Panel to decide the case on the basis of the available record and the evidence provided by the Complainant. Upon consideration of the available record, the Panel is satisfied that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel notes that the current passive holding of the Disputed Domain Name does not give rise to any rights or legitimate interests. Likewise, based on the available record, even if the products formerly offered for sale at the website to which the Disputed Domain Name previously resolved were genuine, this use would not have satisfied the requirements for legitimate reseller activities as set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 . Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that the Complainant’s trademark is widely known, and, further, that it is therefore highly unlikely that the Respondent was unaware of the Complainant’s trademark when registering the Disputed Domain Name. This Panel finds that the Disputed Domain Name was registered in bad faith. With respect to use, the Respondent has used the Disputed Domain Name to divert visitors to the website for its own commercial benefit. The Respondent used the website for commercial interests and registered the Disputed Domain Name in order to gain commercial benefit via confusion with the Complainant’s mark. This constitutes evidence of registration and use of the Disputed Domain Name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. There is no material in the record which challenges this conclusion, and the current passive holding of the Disputed Domain Name does not alter this conclusion. The Panel finds that the Complainant has fulfilled the requirements 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, <jimmychooutletsale2013.com> be transferred to the Complainant. Anders Janson Sole Panelist Date: March 8, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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