WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

C & J Clark International Limited v. Clark Ren

Case No. D2012-2490

1. The Parties

The Complainant is C & J Clark International Limited of Somerset, United Kingdom of Great Britain and Northern Ireland, represented by Stevens Hewlett & Perkins, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Clark Ren of Putian, Fujian, China.

2. The Domain Name and Registrar

The disputed domain name <hiclarks.com> 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 December 18, 2012. On December 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 2012, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2013.

The Center appointed Richard Tan as the sole panelist in this matter on January 22, 2013. 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 the proprietor of a large number of trademark registrations for its CLARKS mark effective in a number of territories.

The origins of the Complainant's CLARKS trademark can be traced back to 1825 in the Somerset village of Street in the United Kingdom when the first sheepskin slippers were devised by James and Cyrus Clark. The Complainant is known for its footware and claims to be the largest casual and smart shoe company and the fourth largest footware company in the world. Its markets include the United Kingdom, North America, Western and Eastern Europe, China and India. Its trademarks are registered in numerous countries around the world, and these include trademark registrations in the United Kingdom obtained as long ago as 1929.

The Complainant also operates a website “www.clarks.com” to market and sell its goods.

In the years 2011-2012, the Complainant’s sales turnover figures were GBP 601million in the United Kingdom, GBP 536 million in the USA, GBP 162 million in the European Union and GBP 99 million throughout the rest of the world. All of these sales accounted for products sold bearing the CLARKS mark. Its sales are generated by an international network of retail stores and third party distributors, in addition to significant sales via the Complainant's retail platform at “www.clarks.com”.

The disputed domain name was registered by the Respondent on June 13, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s CLARKS mark in which it has rights. The disputed domain name contains the Complainant’s CLARKS mark in its entirety and adds the generic Top-Level Domain “.com” and the additional letters “hi”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It contends that the Respondent is not commonly known by the disputed domain name, does not have any affiliation, association, or business relationship of any kind with the Complainant, and is not licensed or authorized to use the CLARKS trademark. The Respondent is using the disputed domain name in order to sell directly to the public goods bearing the Complainant’s mark CLARKS. The website has been designed deliberately to convey the impression that it is an “official” website and that it originates from the Complainant. The Complainant points out that there is a copyright notice at the bottom of the website, “Copyright© 2012 Clarks Shoes”.

As the Complainant has no affiliation or authorization agreement with the Respondent, the Respondent’s website is therefore directly competing with the merchandise provided by the Complainant’s official website at “www.clarks.com”. The Respondent is seeking to profit by directing Internet traffic in relation to all manner of footwear goods, all of which bear the Complainant’s registered trademark to the Respondent’s website. The Complainant contends that the Respondent’s attempt to benefit commercially from the unauthorized use of the Complainant’s CLARKS mark does not constitute a bona fide offering of goods or services and is not a legitimate non­commercial or fair use. The Respondent is using the disputed domain name to take advantage of the Complainant’s marks by diverting Internet users to its competing commercial site.

The Complainant contends that the disputed domain name has been registered and is being used in bad faith. The name CLARKS is properly associated with the Complainant. The Respondent has registered the disputed domain name to which it has no connection simply for the purposes of generating income. It has also registered the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name and in order to direct Internet traffic rightfully intended for the Complainant’s website or to the Complainant’s authorized distribution network to the Respondent’s own website.

B. Respondent

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

6. Discussion and Findings

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

Based on the evidence adduced by the Complainant as noted above, this Panel has no hesitation in finding that the Complainant has rights in the CLARKS mark. The CLARKS mark has been registered in many countries around the world, including in China (where the Respondent appears to be based).

The evidence adduced by the Complainant demonstrates that the mark has been extensively used by the Complainant for its footware business and products for many years and in different countries.

The Panel finds that the threshold test for confusing similarity under the Policy involves a comparison between the trademark and the disputed domain name itself to determine the likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.

In this Panel’s view, this threshold test is satisfied. The disputed domain name reproduces the CLARKS mark in its entirety but merely adds the common or generic word “hi”. The addition of common or generic terms will not be sufficient under the circumstances to avoid a finding of confusing similarity especially where a well known mark is involved and that mark, like the CLARKS mark in this case, is instantly recognizable as the dominant or principal component in the disputed domain name. See the decisions by previous UDRP panels which have found that domain names that combine generic terms with trademarks are confusingly similar to the trademarks: Autodesk, Inc. v. Nurinet, WIPO Case No. D2011-1426. The addition of a Top-Level Domain “.com” is irrelevant when establishing whether or not a mark is identical or confusingly similar because Top-Level Domains are a required element of a domain name.

This Panel therefore accepts that the disputed domain name is confusingly similar to the Complainant’s mark in which it has rights.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent is not commonly known by the disputed domain name. The Respondent does not have any affiliation, association, or business relationship of any kind with the Complainant, and the Respondent is not licensed or authorized to use the CLARKS trademark.

As several UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In the absence of a response, the Panel is entitled to draw certain inferences against the Respondent that it has no rights or legitimate interests in the disputed domain name. In this case, the Respondent’s name appears to be “Clark Ren”. However, the Respondent has not filed a response to assert that he is - commonly - known by the disputed domain name or produced evidence in support thereof.

The uncontroverted evidence is that the Respondent has not been granted any license or other rights to use the Complainant’s marks for any purposes and that the Complainant is in no way associated or affiliated with the Respondent.

The Complainant further contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and the disputed domain name has been used to mislead and attract customers to its website for its own commercial gain. Further, the website has been designed deliberately to convey the impression that it is an “official” website of the Complainant. This is also clear from the copyright notice at the bottom of the website, “Copyright© 2012 Clarks Shoes”.

The Panel accordingly accepts that the Respondent has intentionally chosen a domain name based on a well known registered trademark in order to unfairly generate traffic to its website with an intention to derive advantage from user confusion, and in order to sell goods that compete with the Complainant’s business. Such use cannot be regarded as a use of the disputed domain name in connection with a bona fide offering of goods or services.

The Respondent was clearly seeking to create the impression that the Respondent was associated with the Complainant and to mislead consumers into believing that the Respondent and its website were associated with or approved by the Complainant. In so doing the Respondent was clearly seeking to trade on the Complainant’s goodwill and reputation. Such use was not a legitimate noncommercial or fair use of the disputed domain name.

Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and is being used in bad faith.

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith.

The undisputed evidence establishes that the Respondent is not affiliated with the Complainant and has no license or other authorization to use the Complainant’s trademark or a mark similar thereto.

The disputed domain name was registered well after the Complainant’s mark was in use. The Panel finds that the Respondent must have had notice of the Complainant’s mark and business when registering the disputed domain name and intended to take unfair advantage of the reputation of the Complainant’s reputation.

The Panel further finds that the incorporation of the CLARKS mark in its entirety as part of the disputed domain name is an indication of bad faith under the circumstances. The Respondent’s addition of the generic and non-distinctive element “hi” to the disputed domain name, coupled with the use of a copyright notice which gave the impression that the site was an authorized site of the Complainant, merely served to add to the confusion and to unfairly attract Internet users to the Respondent’s website.

All of the above matters clearly demonstrate that the Respondent intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The Panel further notes that, as found by other UDRP panels, where a domain name is so obviously connected with a well-known product or service, its very use by someone with no connection with the product suggests opportunistic bad faith: See for example, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; Go Daddy Software, Inc. v. Internet Masters, WIPO Case No. D2002-0570; and RapidShare AG, Christian Schmid v. PrivacyProtect.org, Domain Admin / n/a, Sergey Malgov, WIPO Case No. D2010-0608.

Based on the evidence submitted by the Complainant and having regard to all the relevant circumstances, including the absence of a response from the Respondent, the Panel accepts the Complainant’s contentions that the disputed domain name was registered and is being used in bad faith within the meaning of 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 <hiclarks.com> be transferred to the Complainant.

Richard Tan
Sole Panelist
Date: February 4, 2013