WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

All Saints Retail Limited v. Wang Ya Ya

Case No. D2016-1809

1. The Parties

The Complainant is All Saints Retail Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by SafeNames Ltd., United Kingdom.

The Respondent is Wang Ya Ya of Huai Hua, Hu Nan, China.

2. The Domain Name and Registrar

The disputed domain name <allsaints.vip> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2016. On September 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 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. On September 14, 2016, the Center transmitted by email on both English and Chinese to the Parties a request for comment on the language of the proceeding. The Complainant submitted a request for English to be the language of the proceeding on September 16, 2016. The Respondent did not comment on the language of the proceeding by 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 of the Complaint in both English and Chinese, and the proceedings commenced on September 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2016.

The Center appointed Sok Ling MOI as the sole panelist in this matter on October 17, 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 is a United Kingdom fashion retailer founded in 1994 by Stuart Trevor and Kait Bolongaro. Whilst its business covers retail and wholesale store services of soaps, articles of clothing, footwear and headgear, men’s clothing, women’s and men’s bags, perfumes etc, the Complainants states that it is best known for its iconic biker jackets. The Complainant’s products are available in more than 88 cities through its more than 145 stores. It employs some 3,200 employees in 20 countries including the United Kingdom, France, United States of America, Canada, and the Republic of Korea. In 2015, the Complainant’s revenue amounted to GBP 24.4 million.

The Complainant’s brand “All Saints” has been used in trade since 1994. The Complainant is the proprietor of numerous trade mark registrations worldwide for marks consisting of or containing ALL SAINTS and ALL SAINTS SPITAFIELDS, including the following:

The Complainant is also the registered owner of the domain name <allsaints.com> (registered since January 29, 1996) and offered its products for sale through an online store on its website at “www.allsaints.com” as early as the year 2000.

The disputed domain name was registered on May 18, 2016, long after the Complainant had used and registered its trade mark ALL SAINTS. According to the evidence submitted by the Complainant and at the date of this decision, the disputed domain name does not resolve to any active website and appears never to have done so in the past.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to its trade mark ALL SAINTS, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith.

The Complainant requests for the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, 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.

Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.

The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.

The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain name is registered in Latin characters, rather than Chinese script; and

(b) according to the evidence submitted by the Complainant, the Respondent has registered several other domain names which consist entirely of Latin characters which are English words or a combination of English words (such as <bananarepublic.vip>, <bloomingdales.vip> and <barnesandnoble.vip>).

Additionally, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Chinese and English;

(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but failed to do so; and

(b) the Center has informed the Respondent that it would accept a Response in either English or Chinese.

Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.

The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.

6.2 Substantive Issues

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

(i) the disputed domain name 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 disputed domain name; and

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

On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in ALL SAINTS by virtue of its use and registration of the same as a trade mark.

The disputed domain name incorporates the Complainant’s trade mark ALL SAINTS in its entirety. The addition of the generic Top-Level Domain (“gTLD”) “.vip” does not impact the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark.

Consequently, the Panel finds that the disputed domain name is identical to the Complainant’s trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974)

There is no evidence suggesting that the Respondent is commonly known by the disputed domain name or that it has any rights in the name “All Saints”. According to evidence submitted by the Complainant, the gTLD “.vip” was released to the public for registration on May 16, 2016, and the Respondent had taken advantage of the opportunity to register the disputed domain name on the same day as soon as registration is possible. The Respondent had also registered several other domain names comprising other widely known fashion retail brands (such as Fossil, Armani, Coach, Bloomingdales, Banana Republic, Tommy Hilfiger, Van Heusen) paired with the same gTLD “.vip”.

As the disputed domain name does not resolve to any active website, there is no evidence to suggest that the Respondent has made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose.

The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name. Since the Respondent has failed to respond, the prima facie case has not been rebutted.

Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Panel notes that, as of the date of this decision, the disputed domain name <allsaints.vip> does not resolve to any active website. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2.

The Complainant has submitted evidence to show that it has a customer base in Asia, including in China where the Respondent is presumably based. The Complainant also claims to have a strong online presence and that its trade mark enjoys a significant reputation worldwide (including in China) by virtue of its extensive use and advertising since 1994. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. A cursory Internet search would have disclosed the ALL SAINTS trade mark and its extensive use by the Complainant. As such, a presumption arises that the Respondent was aware of the Complainant and its trade mark when it registered the disputed domain name. Registration of a domain name that incorporates a complainant’s long-established widely-known trade mark suggests opportunistic bad faith.

As the Respondent had also registered several other domain names comprising trade marks belonging to other fashion retail brands (such as Fossil, Armani, Coach, Bloomingdales, Banana Republic, Tommy Hilfiger, Van Heusen) paired with the same gTLD “.vip”, there is prima facie evidence that the Respondent is engaged in a pattern of cybersquatting and has registered the disputed domain name in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name.

The Respondent has not denied the Complainant’s allegations of bad faith. In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 <allsaints.vip> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: October 31, 2016