WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Footasylum Limited v. Xiao Hang

Case No. D2015-1365

1. The Parties

The Complainant is Footasylum Limited of Lancashire, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”), represented by Eversheds, LLP, the United Kingdom.

The Respondent is Xiao Hang of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <footasylumsoldes.com> is registered with Xin Net Technology Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2015. On August 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 4, 2015, 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.

On August 5, 2015, the Center transmitted an email to the parties in English and Chinese regarding the language of proceeding. On August 7, 2015, the Complainant submitted its request that English be the language of proceeding by email to the Center. The Respondent did not submit its comments within the specified due date.

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 in English and Chinese of the Complaint, and the proceeding commenced on August 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2015.

The Center appointed Francine Tan as the sole panelist in this matter on September 30, 2015. 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 was incorporated in 2005. From the outset, it operated retail outlets under the name FOOTASYLUM, specializing in fashion and sports wear. The Complainant’s stores all operate under a distinctive get-up. It has a logo which appears on its packaging and in-store get-up. The Complainant’s stores have offered for sale a wide range of leading sportswear brands such as Nike and Adidas as well as other branded clothing and footwear such as those of ELLESSE, VANS and HUGO BOSS.

The Complainant has various trade mark registrations for marks comprising or containing the word FOOTASYLUM (e.g. in the Unitedingdom (trademark No. 2406608, filed on November 16, 2005 in Classes 25 and 35) and the European Community (CTM No. 006528822, filed on November 29, 2007 in Classes 18, 25, 28, 28, 35, 36, 41 and 42; CTM No. 013541073, filed on December 9, 2014 in Classes 18, 25, 28, 28, 35, 36, 41 and 42)).

The Complainant operates 32 stores across the United Kingdom and has over the years become one of United Kingdom’s leading retailers of fashion street wear and sportswear. The Complainant has a significant online presence. About 30% of its business is generated through online sales from its website at “www.footasylum.com”. Via its website, the Complainant sells products to customers in Europe, Hong Kong, China, Australia, the United States of America and Canada.

The disputed domain name was registered on December 6, 2014.

5. Parties’ Contentions

A. Complainant

1. The disputed domain name is virtually identical to the trade mark FOOTASYLUM in which the Complainant has rights. The dominant and distinctive element of the disputed domain name is the word “footasylum”. “Soldes” is a French word for “sale”, a generic term which is used extensively by retailers and understood by French and English speakers to signify that the products are offered for sale at reduced prices.

2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. This is borne out by the fact that the Respondent is not connected to nor authorized by the Complainant to register the disputed domain name. There is nothing to suggest that the Respondent, a Chinese individual, has any rights or legitimate interests in the disputed domain name. The Respondent has used the disputed domain name in relation to a website which prominently features the Complainant’s FOOTASYLUM trade mark and get-up. This does not constitute a bona fide offering of goods or services. The Respondent is seeking to piggy-back off the goodwill of the Complainant. Further, there is no indication that the Respondent has any rights in the name “footasylum” or is commonly known by the name. The content of the Respondent’s website (essentially a wholesale copy of the Complainant’s website) reflects an intention to misrepresent his website as that of the Complainant or that he is affiliated with the Complainant.

3. The disputed domain name was registered and is being used in bad faith. It is clear that the Respondent was fully aware of the Respondent and its rights in FOOTASYLUM when he registered the disputed domain name. The registration of the disputed domain name was clearly with the aim to attract members of the public to the Respondent’s website to deceive them, such that they would mistakenly think that the website is that of, or connected to the Complainant. The registration of the disputed domain name was therefore clearly in bad faith. The fact that the Respondent’s website to which the disputed domain name resolves contains images copied from the Complainant’s website and offers for sale a range of clothing and footwear at reduced prices shows that the intention is to lead members of the public to belief that the Respondent’s website is a French version of the Complainant’s website, offering for sale clothing and footwear at reduced prices. There can be no other reason for the registration of the disputed domain name other than to take advantage of the Complainant’s goodwill in the trade mark FOOTASYLUM.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceeding

The Complainant filed the Complaint in English but the language of the Registration Agreement is Chinese. The Complainant submitted that English is the appropriate language of the proceeding for the following reasons:

(i) The Respondent unfairly and dishonestly targeted the Complainant, a United Kingdom company to attract Internet users to a website for his personal financial gain.

(ii) It is clear that the Respondent knew of the Complainant’s goodwill and reputation in the trade mark FOOTASYLUM in respect of fashion and sportswear retailing at the time he registered the disputed domain name.

(iii) The distinctive and dominant element of the disputed domain name is the word “footasylum” which is identical to the Complainant’s registered trade mark.

(iv) FOOTASYLUM is a distinctive mark, being an unusual name made up of English words.

(v) The home page of the Respondent’s website has been copied from the Complainant’s website and features copyright material from the Complainant’s website.

(vi) The primary targets of the Respondent’s fraudulent activities will be English and French-speaking Internet users.

(vii) The Complainant does not have any knowledge of the Chinese language. In view of the Respondent’s fraudulent activities, it would be wholly unfair and unreasonable for the language of the proceeding to be Chinese.

(viii) The Respondent’s website to which the disputed domain name resolves is in English and French, and not in Chinese.

(ix) The Complainant has suffered lost sales and damage to its reputation (a customer based in the United Kingdom contacted the Complainant to enquire about an order he had placed through the Respondent’s website but not received).

(x) The Complainant has had to incur costs in instituting the proceeding and it would be unfair and unjust if the Complainant had to incur further costs and delay arranging for the Complaint to be translated into Chinese.

Paragraph 11(a) of the Rules stipulates that: “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.

Paragraph 10(b) and (c) of the Rules stipulate, respectively, that:

“(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.

(c) The Panel shall ensure that the administrative proceeding takes place with due expedition.”

Whilst there is a language requirement that is provided for in paragraph 11(a) of the Rules, the Panel has to balance that against the other considerations of ensuring that proceedings take place with due expedition and that the parties are treated fairly and given a fair opportunity to present their case. The language requirement should not cause any undue burden on the parties or undue delay (see Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).

Bearing in mind paragraph 10(b), the Panel takes the view that most of what the Complainant has stated as its bases for its position that English should be the language of the proceeding is irrelevant and/or should be disregarded for the purposes of considering the issue of the language of the proceeding. The Panel is to simply weigh the policy considerations mentioned above and should not delve into the merits of the case, i.e. whether the Respondent has acted in bad faith or fraudulently, or whether the Complainant has suffered loss. Those are distinct and unrelated issues to be considered separately.

What the Panel has considered in arriving at its determination that it would be appropriate for English to be the language of the proceeding are these: (i) the fact that nothing on the Respondent’s website is in the Chinese language but rather, in English and French, and (ii) the fact that the disputed domain name comprises English and French words. These circumstances reflect that the Respondent has a level of familiarity and comfort with the English language. The Respondent was given the opportunity to respond on the issue of the language of the proceeding but chose not to. To require the Complainant to translate the Complaint into Chinese would lead a delay of the proceeding which does not seem merited in the circumstances of this case.

The Panel believes that the Respondent would not be prejudiced if English is adopted as the language of the proceeding.

B. Identical or Confusingly Similar

The Complainant has shown it has rights in the FOOTASYLUM trade mark. With this established, the only remaining issue under paragraph 4(a)(i) of the Policy is whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark as the trade mark is incorporated in its entirety and combined with a generic term “soldes” which does not serve to distinguish it from the Complainant’s trade mark. (See IM Production v.Sun Xingwang, WIPO Case No. D2015-0086; INTS It Is Not the Same GmbH v. Philippe Leveau [<fr-desigual.com>] , Céline Molina [<fr-desigual-soldes.com> and <desigual-fr.com] , Natalina Gelle [<desigual-soldes.com>] , Marine Simon [<france-desigual.com>] , James Thomas [<desigual-soldes-fr.com>] , Annabelle Tching [<desigual-boutique.com> and <desigual-soldes.net>] , Joana Bertheas [<soldes-desigual.com>] and Prisca Ilame [<soldes-desigual.info>], WIPO Case No. D2014-0622; Lancel International SA v. linda mo, lancel share, WIPO Case No. D2013-1187.)

The Panel therefore concludes that the requirement of paragraph 4(a)(i) of the Policy has been satisfied in this case.

C. Rights or Legitimate Interests

There is no evidence that the Respondent is called “footasylum” or anything similar nor is there evidence that he trades under that name. The Complainant has never authorized the Respondent to use its trade marks. In the absence of any response by the Respondent on this point and any evidence which contradicts the Complainant’s assertions that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Panel therefore concludes that the requirement of paragraph 4(a)(ii) of the Policy has been satisfied in this case.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists circumstances that shall be evidence of registration and use of a domain name in bad faith, one of which is

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Panel finds that the Respondent has registered and used the disputed domain name in bad faith. The FOOTASYLUM trade mark is unique and distinctive, being an unusual juxtaposition of the words “foot” and “asylum”. The adoption and choice of such an unusual term in the disputed domain name by the Respondent who is from China, gives rise to some suspicion. When one considers the evidence put forward by the Complainant, namely of the Respondent’s blatant copying of the Complainant’s homepage, it becomes very clear that the Respondent registered the disputed domain name with the intent of trading off the goodwill of the Complainant’s mark and to cause confusion as to the source of the disputed domain name.

The Panel finds that the Complainant has shown the Respondent’s bad faith registration and use of the disputed domain name. The Respondent failed to rebut the Complainant’s allegations although given the opportunity to.

The Panel therefore concludes that the requirement of paragraph 4(a)(iii) of the Policy has been satisfied in this case.

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 <footasylumsoldes.com> be transferred to the Complainant.

Francine Tan
Sole Panelist
Date: October 9, 2015