The Complainant is J. Choo Limited of London, the United Kingdom of Great Britain and Northern Ireland represented by A.A.Thornton & Co, United Kingdom.
The Respondent is Jimy Choo of Beijing, the People's Republic of China.
2. The Domain Name and Registrar
The disputed domain name <jimychoo.com> is registered with Dynadot, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2009. On December 4, 2009 the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain name and Dynadot, LLC 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 4, 2010.
The Center appointed Hariram Jayaram as the sole panelist in this matter on January 8, 2010. 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 owns the JIMMY CHOO brand, well-known especially for high fashion ladies' footwear. It has registrations for the trade mark JIMMY CHOO as follows:
- The United Kingdom Trade Mark Registration No. 2292643 in classes 3, 9, 14, and 35;
- The United Kingdom Trade Mark Registration No. 2299481 in class 25;
- The United States of America Trade Mark Registration No. 2833725 in classes 3, 9, 14, 18 and 35
- The United States Trade Mark Registration No. 2641408 in class 25;
- Community Trade Mark Registration No. 2587830 in classes 3, 9, 14, 18 and 35; and
- Community Trade Mark Registration No. 1662543 in class 25.
The Complainant's sister company, J. Choo (Jersey) Limited, has registered the trademark JIMMY CHOO in the People's Republic of China, particulars of which are as follows:
Trade Mark Registration No. 3189592 in class 18; and
Trade Mark Registration No. 1637164 in class 25.
The Respondent is the registrant of the disputed domain name with effect from March 9, 2009.
5. Parties' Contentions
A. Complainant
The trade mark on which the Complaint is based is JIMMY CHOO. The Complainant contends that the disputed domain name is almost identical to the Complainant's registered trade mark. It believes that the Respondent has registered a version of its trade mark which would result from a typographical error on the part of the web user.
The only difference between the registered trade mark and the disputed domain name is an additional ‘m' which may be accidentally missed when web users intend to type out the trade mark and accordingly, the domain name is confusingly similar to the registered trade mark. The Complainant has spent a considerable amount of time and money protecting its intellectual property rights as evidenced by its numerous trade mark registrations, a small proportion of which is detailed above. The Complainant owns many gTLDs and ccTLDs incorporating its trade mark and variations of its trade mark either in its own name or in the name of its sister company, J. Choo (Jersey) Limited. These domain names include <jimmychooshoes.com>, <jimmychoocouture.com>, <jimmychoo.com>, <jimmychoo.biz>, <jimmy-choo.biz>, <jimmychoo.info>, <jimmy-choo.info>, <jimmychoo.net>, <jimmychoo.org>, <jimmychooonline.co.uk>, <jimmychooshoes.net> and <jimmychooshoes.org>. The JIMMY CHOO brand is now one of the most recognized high fashion ladies' footwear brands in the world and the Complainant is building a significant reputation in relation to its JIMMY CHOO branded handbags, small leather goods and sunglasses business.
The Complainant has been trading under the brand since 2001 and has spent considerable amounts of time and money advertising the brand since that date. The brand is regularly featured in magazines and newspaper articles and there are over 60 boutiques across the world.
The Complainant believes that the Respondent has no rights or legitimate interest in respect of the disputed domain name. It sent the Respondent notice of its trade mark rights in the mark JIMMY CHOO by email on April 15, 2009 and May 1, 2009. The contact details for the Registrant were then altered from those of a previous registrant to the current Registrant details, and a further email was sent to the updated contact details on July 13, 2009. There is no evidence that the Respondent has been or is commonly known by the disputed domain name or has acquired any trade mark or service mark rights in this name. The Complainant believes the Respondent may have changed the registrant details on receipt of the Complainant's emails in an attempt to legitimise the registration. Use of the domain name as a click-through-page and the fact the address given in the Registrant details is clearly fabricated, indicate the Respondent is not making legitimate use of the disputed domain name. The Respondent has no relationship with, or permission from, the Complainant to use the JIMMY CHOO mark.
The registration of a domain name that is a common typographical misspelling of its registered trade mark is clearly an attempt to catch Internet users searching for goods using the Complainant's registered trade marks. The disputed domain name resolves to a website featuring numerous click-through opportunities for handbags, women's shoes and women's clothing. As the Complainant sells these types of products, the Respondent is using the disputed domain name in association with a website that competes directly with the Complainant's business interest. Furthermore, it is likely that the Respondent is receiving a click-through fee each time an Internet user accesses the website “www.jimychoo.com” and clicks on any of the numerous options available. The Complainant submits that the use of another's well-known trade mark for the purpose of deriving this type of commercial benefit is evidence the Respondent has no legitimate rights or interests in the disputed domain name.
According to the Whols details, the disputed domain name was registered in March 2009. At this time, the Respondent would clearly have been aware of the reputation of the Complainant's mark. The Respondent is using a misspelling of the Complainant's JIMMY CHOO trade mark to mislead users for commercial gain to the Respondent's webpage. This type of typosquatting is clearly aimed at disrupting the Complainant's business by diverting Internet users from the Complainant's genuine websites. Despite the typo, the domain name clearly identifies the Complainant's JIMMY CHOO trade mark. This well-known and distinctive trade mark is obviously connected with the Complainant and accordingly, by definition, the registration of the disputed domain name consisting of a misspelling of this mark was made in opportunistic bad faith. Use by the Respondent of this disputed domain name would create a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order for the domain name to be cancelled or transferred to it:
(i) The domain name registered by the Respondent 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel has to rely entirely on the Complainant's statements and documents to come to a decision because of the failure on the part of the Respondent to file a Response.
A. Identical or Confusingly Similar
The Complainant is the owner of the trade mark JIMMY CHOO. It has made substantial use of the trade mark particularly in relation to high fashion ladies' footwear. It has also secured registrations of the said trade mark in the United Kingdom, the United States of America and as a Community Trade Mark. Its sister company, J. Choo (Jersey) Limited has registrations for the said trade mark in China.
The differences between the Complainant's trade mark and the disputed domain name are:
- the absence of one letter, ‘m'
- the elimination of the space between the words ‘jimy' and ‘choo'
- the use of the words ‘jimy' and ‘choo' in lower case letters
- the addition of the gTLD ‘.com' in the disputed domain name.
In The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.cOM and NASAQ.COM,WIPO Case No. D2001-1492, the disputed domain names were <nsdaq.com>, <nasdq.com> and <nasaq.com> and the Complainant's trade mark was NASDAQ. The panel held:
“The disputed domain names comprise what the Complainant says are common misspellings of the term ‘Nasdaq'. The domain names are almost identical to the Nasdaq mark, the only difference being in each case the lack of only one letter. Quite clearly, the Respondents have sought to take advantage of Internet users typing an incorrect address when seeking to access the Complainant's website ...”
“…use of the lower case letter format in “montyroberts.org”, and elimination of the space between the words “Monty” and “Roberts” to form that name, are differences without legal significance from the standpoint of comparing “monryroberts.org” to “Monty Roberts… Similarly, the addition of the generic top-level domain (gTLD) name “.org” is likewise without legal significance since use of a gTLD is required of domain name registrants ...”
The Panel agrees with these decisions and regards them to be of persuasive authority.
It finds that the minor differences between the Complainant's trade mark and the disputed domain name do not alter the fact that the disputed domain name is confusingly similar to the Complainant's trade mark.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy states how rights to and legitimate interests in the disputed domain name may be demonstrated by the Respondent in responding to the Complaint.
He may for instance rely on paragraph 4(c)(ii) to establish rights and legitimate interests if he as an individual, business, or other organization, has been commonly known by the disputed domain name.
A person familiar with Chinese names will easily recognize “Choo” as a Chinese surname and “Jimy” as a Christian name attached to the surname. A court may take judicial notice of this, if such a matter comes before it, in a jurisdiction where Chinese names are common names of litigants. This Panel may not be able to take such notice since this is not a court proceeding but due recognition has to be given to the fact that “Jimy Choo” is a common name of a person. However, is this the real name of the Respondent? The Complainant has raised doubts and submitted evidence to the contrary. The Complainant sent a warning notice by email on April 15, 2009 and May 1, 2009 to Bin Song, at his address in China, being the Registrant then. The contact details were then altered to those of the current Registrant. On July 13, 2009, the Complainant sent a further email to the Registrant taking into account the updated contact details. The contention of the Complainant is that the change was effected to legitimise the disputed domain name and make it appear that the Registrant was a person by the name of Jimy Choo. In the absence of any evidence to the contrary and with the allegation of the Complainant remaining unchallenged, the Panel has no alternative but to find in favour of the Complainant in this respect.
Paragraph 4(c) of the Policy enables a Respondent to aver that the disputed domain name has been used in connection with a bona fide offering of goods or services. In the alternative the Respondent may also aver that it is making a legitimate noncommercial use of the disputed domain name and has no intention to mislead or divert consumers.
The facts before the Panel are that the disputed domain name resolves to a website with a click-through feature enabling a user to click on the links to websites of rivals who market products in competition with the Complainant. The evidence is also clear that the Complainant has no relationship with the Respondent and has not given permission to him to use the JIMMY CHOO mark. The Panel finds that the Respondent will not be able to rely on paragraph 4(c) of the Policy.
The evidence before the Panel is that Jimmy Choo was the maker of stylish and wearable shoes in 1996. Tamara Mellon, Accessories Editor at British Vogue partnered with Jimmy Choo and launched in that year a successful business, dealing in high fashion shoes with the personal name of the founder as the trade mark. The Complainant has acquired rights in the trade mark by extensive use. Personal names which are trade marked are also protected under the URDP.
In view of the above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Where there is a misspelling in a disputed domain name with the omission of a letter, there is every possibility that the user will be directed to websites other than that of the Complainant. These websites may well be of rivals. The panel in the Nasdaq case, supra has dubbed the practice of omitting a letter from a domain name as typosquatting. In ESPN, Inc. v. XC2,
WIPO Case No. 02005-0444, the Panel has also made it clear that typosquatting itself is evidence of bad faith.
The Respondent has also provided a website with links to the websites of the Complainant's competitors. Such a practice has been described as “epitome of bad faith” in Weather Shield, Mfg., Inc. v. Domain Magic, LLC,WIPO Case No. D2007-0052.
The Panel agrees with these precedents and finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For all 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 <jimychoo.com> be transferred to the Complainant.
Hariram Jayaram Sole Panelist
Dated: January 22, 2010
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