The Complainant is J. Choo Limited of London, the United Kingdom of Great Britain and Northern Ireland, presented by A. A. Thornton & Co., United Kingdom.
The Respondent is Jimmy Choo of Beijing, the People’s Republic of China.
The disputed domain name <jimmychoochoo.com> (“the Domain Name”) is registered with GoDaddy.com, Inc.(“the Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2010. On December 10, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On the same day, GoDaddy.com, Inc. 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 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2011.
The Center appointed Karen Fong as the sole panelist in this matter on January 14, 2011. 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 is a company based in the United Kingdom. It has been trading under the brand name Jimmy Choo since 2001 and its internationally renowned high fashion footwear, handbags and small leather goods are sold in over one hundred own-branded boutiques across thirty two countries. The Complainant also has a line of shoes marketed under its CHOO trade mark, CHOO 24:7.
The Complainant and its sister company J. Choo (Jersey) Limited owns numerous trade mark registrations around the world for JIMMY CHOO in a number of classes. Chinese Trade Mark Registration No. 1637164 in class 25 is one example of the trade mark registrations submitted by the Complainant in the Complaint. The Complainant also owns international trade mark registration designating China under No. 836485 for the mark CHOO in classes 18 and 25.
The Complainant and J. Choo (Jersey) Limited also owns many domain names in various gTLDs and ccTLDs incorporating the JIMMY CHOO trade mark. These include <jimmychoo.com>, <jimmychooshoes.com>, <jimmychoo.biz>, jimmy-choo.biz>, <jimmychoo.info>, <jimmy-choo.info>, <jimmy-choo.name>, <jimmychoo.net> , <jimmychooonline.co.uk> and <jimmychoo.org>. These domain names all direct user traffic to the Complainant’s website connected to the domain name, <jimmychoo.com>.
The Domain Name was registered on November 4, 2010 and is connected to a website (“the Website”) which appears to offer Jimmy Choo branded products for sale. These products may be counterfeit as the Respondent is not an authorised retailer of the Complainant’s products and neither is the registrant of domain name <jimmychoooutlet-uk.com> which is the domain name connected to the website which the Website resolves to when attempts are made to purchase goods from the Website (”the Other Website”). The Website also features images of Jimmy Choo products. The <jimmychoooutlet-uk.com> domain name is the subject of a separate UDRP complaint by the Complainant.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy has been met:
The Complainant contends that the Domain Name is identical or confusingly similar to trade marks in which the Complainant has rights.
The Complainant states that it and its sister company J. Choo (Jersey) Limited owns numerous trade mark registrations around the world in various classes including classes 14, 18, 24 and 25 for JIMMY CHOO and in classes 18 and 25 for CHOO.
The Complainant asserts that the Domain Name incorporates the Complainant’s JIMMY CHOO trade mark in its entirety which is sufficient to establish that the Domain Name is identical or confusingly similar to the Complainant’s trade marks. The repetition of the distinctive element CHOO of the Complainant’s mark JIMMY CHOO does not prevent the Domain Name from being confusingly similar to the mark JIMMY CHOO as a whole. In fact, the Domain Name is a combination of two of the Complainant’s trade marks, JIMMY CHOO and CHOO and is confusingly similar to the Complainant’s registered trade marks.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name and relies on the following grounds:
Firstly, the Respondent has no relationship with or permission from the Complainant to use the JIMMY CHOO marks.
Secondly, although the WhoIs details of the Domain Name list the registrant as Jimmy Choo, there is no evidence that the registrant is commonly known by this name.
Thirdly, the Complainant believes that the Jimmy Choo branded goods offered for sale on the Website are counterfeit as the Complainant has not authorised the sale of its Jimmy Choo branded products through the Domain Name. The Complainant has also not authorised the sale of products through the Other Website. The use of the Domain Name which incorporates the Complainant’s registered trade marks is likely to mislead consumers into believing that the Website is associated with and authorised by the Complainant and the products offered for sale on the Website are authentic products. Even if the Respondent is offering genuine JIMMY CHOO products which the Complainant does not believe to be true, the Respondent cannot claim rights or legitimate interests in a domain name, the use of which misleads Internet users.
Fourthly, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the marks at issue. Further, as the Domain Name was registered in bad faith, the Respondent cannot be found to have made a bona fide offering of goods and services.
The Complainant relies on the following to support its contention that the Domain Name has been registered and used in bad faith:
Firstly, the registration of the Domain Name, a domain name incorporating the Complainant’s registered trade marks, is aimed at disrupting the Complainant’s business by diverting Internet users searching for the Complainant’s products and leading them away from the Complainant’s genuine websites.
Secondly, at the time of the registration of the Domain Name, the Respondent would have been aware of the fame and repute of the Jimmy Choo brand. The registration of a domain name that incorporates or is confusingly similar to a registered trade mark of considerable fame and repute with the intention of profiting through the goodwill associated with the registered trade mark constitutes registration in bad faith.
Thirdly, the Website is linked to an identical website – the Other Website. The terms of service at the Other Website claim that the images and contents of the website are intellectual property owned, controlled or licensed by <jimmychoooutlet-uk.com> or by third parties who have licensed their material to <jimmychoooutlet-uk.com>. The Complainant has not licensed the use of its trade marks to the Respondent or the registrant of <jimmychoooutlet-uk.com>. The Respondent’s knowledge of intellectual property rights indicates that the Respondent is aware that the registration and use of the Domain Name incorporating the Complainant’s registered trade marks is registration and use in bad faith of the same.
Fourthly, the Complainant believes that the Other Website is offering counterfeit products for sale as it has not been authorised by the Complainant to sell as genuine goods which would be damaging to the Complainant and constitutes bad faith.
Fifthly, the Respondent in registering a domain name which is very close to the Complainant’s trade marks and offering of Jimmy Choo products for sale on the Website, aims to create the impression of association with the Complainant or endorsement of the Website when in fact it is not an authorised retailer and has no relationship with the Complainant. The fact that the ”popular tags” link at the bottom of the homepage of the Other Website contains a link to the Complainant’s genuine website is evidence that the Respondent is attempting to mislead consumers into believing that the Other Website is connected with the Complainant.
Finally, the use of the Complainant’s trade marks in the above manner is an attempt to ride on the reputation of the Jimmy Choo brand and an attempt to mislead the customers.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
The Domain Name comprises a combination of the Complainant’s registered trade marks JIMMY CHOO and CHOO (details are to be found in section 4), and the generic ”.com” domain suffix. The repetition of CHOO of the Complainant’s mark JIMMY CHOO does nothing to minimise the risk of confusion. Moreover, for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
The Panel finds that the Complainant has made out a prima facie case (details are set out in section 5.A), a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Panel is satisfied that the Respondent was aware of the Complainant’s marks when it registered the Domain Name. The fact that the Domain Name incorporates a combination of the Complainant’s trade marks and the Respondent used the Complainant’s trade mark JIMMY CHOO as the registrant name when registering the Domain Name is evidence that the registration of the name was in bad faith.
The Panel also concludes that the actual use of the Domain Name is in bad faith. The products offered for sale on the Website are likely to be counterfeit JIMMY CHOO products. There is a clear intention to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s website is and the products sold on it are authorised or endorsed by the Complainant. This is clearly bad faith under paragraph 4(b)(iv) of the Policy.
The Panel finds that the Domain Name was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <jimmy-choochoo.com> be transferred to the Complainant.
Dated: January 24, 2011
Stay updated! Get new cases and decisions by daily email.