WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

J. Choo Limited v. qin chuang, Qin Chuang

Case No. D2016-2538

1. The Parties

The Complainant is J. Choo Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “U.K.”), represented by A.A.Thornton & Co, United Kingdom.

The Respondent is qin chuang, Qin Chuang of Chongqing, China.

2. The Domain Name and Registrar

The disputed domain name <jimmy-choos.com> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2016. On December 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 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 December 19, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On December 20, 2016, the Complainant confirmed its request that English be the language of the proceeding. 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 in both Chinese and English of the Complaint, and the proceedings commenced on December 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2017.

The Center appointed Sok Ling MOI as the sole panelist in this matter on January 24, 2017. 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 in the business of retailing luxury fashion wear and accessories under the JIMMY CHOO brand. The JIMMY CHOO line of products include footwear, handbags, small leather goods, scarves, belts and other fashion accessories. The Complainant has been trading under the JIMMY CHOO brand since 2001 and now has over 170 JIMMY CHOO branded retail stores in several countries around the world. The JIMMY CHOO brand is frequently featured in fashion magazines and adorned by celebrities, and is recognised as a luxury and high fashion brand.

The Complainant has registered its trade mark JIMMY CHOO in several jurisdictions worldwide, including the following trade mark registrations:

The Complainant also owns several domain name registrations incorporating its trade mark JIMMY CHOO, including the following:

- <jimmychooshoes.com>

- <jimmychooshoes.net>

- <jimmychooshoes.org>

- <jimmychoocouture.com>

- <jimmychoo.biz>

- <jimmychoo.info>

- <jimmy-choo.info>

- <jimmychoo.net>

- <jimmychoo.org>

These domain names all direct user traffic to the Complainant’s main website at “www.jimmychoo.com”.

The disputed domain name was registered on February 27, 2016, long after the Complainant had used and registered its trade mark JIMMY CHOO. According to the evidence submitted by the Complainant, the disputed domain name resolved to a website which purported to sell JIMMY CHOO branded products as well as products of other brands.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical with or confusingly similar to its trade mark JIMMY CHOO, 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 contents of the website to which the domain name resolves are entirely in English, and the price of goods offered for sale on the website are denominated in US dollars, British pounds, Australian dollars, Canadian dollars and Euros, which suggests that the website is targeting consumers in these jurisdictions (who are mainly English-speaking).

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 JIMMY CHOO by virtue of its use and registration of the same as a trade mark.

The disputed domain name incorporates the Complainant’s trade mark JIMMY CHOO in its entirety. The addition of the dash “-” and the letter “s” does not reduce the confusing similarity between the disputed domain name and the Complainant’s trade mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” 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 confusingly similar 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. The Respondent may establish its rights 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)

The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the JIMMY CHOO trade mark or to seek registration of any domain name incorporating the trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that it has any rights in the name “Jimmy Choo”.

According to the evidence submitted by the Complainant, the Respondent was using the disputed domain name to publish a website that offers for sale JIMMY CHOO branded products which the Complainant suspects to be counterfeit given the significantly discounted prices. According to the Complainant, the said website reproduced images and style names (such as “Abel”, “Agnes”, “Biker”, “Youth”, “Isabel”, “Lance” and “Luna”) from the Complainant’s genuine website. Further, according to the Complainant, the said website also offered for sale “Christian Louboutin” branded footwear, a brand belonging to the Complainant’s competitor. Such use is misleading and is disruptive to the Complainant’s business, and cannot be considered a legitimate or fair use of the domain name.

Given the long standing use and reputation of the Complainant’s trade mark, it appears that the Respondent has intent to, for commercial gain, mislead Internet users into believing that its website “www.jimmy-choos.com” is somehow connected with the Complainant, and divert Internet users looking for the Complainant’s products to the Respondent’s website.

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 accepts that the Complainant’s JIMMY CHOO trade mark enjoys a significant reputation in many countries worldwide as well as a strong Internet presence. 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 JIMMY CHOO 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.

The Panel determines that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel is satisfied that the Respondent is using the disputed domain name for mala fide purpose and illegitimate financial gain, and the

Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

Furthermore, efforts to send the Written Notice to the Respondent at the physical address and fax number provided by the Respondent to the Registrar (and in turn to the Center) failed which suggests that the Respondent had provided false contact details.

The Respondent has not denied the Complainant’s allegations of bad faith. In view of the Panel’s above finding that the Respondent lacks 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 <jimmy-choos.com> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: February 10, 2017