WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Thomas Pink Limited v. Song Guangxiu

Case No. D2019-0104

1. The Parties

The Complainant is Thomas Pink Limited of London, United Kingdom, represented by K&L Gates, United Kingdom.

The Respondent is Song Guangxiu of China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <thomaspink.net> is registered with 22net, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2019. On January 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 21, 2019, 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 January 22, 2019, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on the same day. The Respondent submitted an informal email in Chinese on January 25, 2019, but did not comment on the language of the proceeding.

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 proceedings commenced on January 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Parties that it would proceed with panel appointment on February 18, 2019.

The Center appointed Sok Ling MOI as the sole panelist in this matter on February 22, 2019. 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 luxury shirt designer, manufacturer and retailer founded in London in 1984 known internationally by its distinctive THOMAS PINK trade mark. The Complainant has over 80 stores worldwide and is a part of the LVMH group, with flagship stores in Jermyn Street in London, Madison Avenue in New York, and Rue Francois Premier in Paris. The Complainant’s stores can be found in Australia, United Kingdom, France, Mexico, India, Ireland, South Africa, and United States of America.

The Complainant owns trade mark registrations for THOMAS PINK in the following jurisdictions:

The Complainant also owns the following domain name <thomaspink.com> which it uses to link to its official website.

The disputed domain name was registered on July 8, 2014. According to the evidence submitted by the Complainant, the disputed domain name resolves to a parking webpage featuring several links to third party websites purporting to sell men’s shirts, with a banner at the top of the webpage offering the disputed domain name for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to its trade mark THOMAS PINK, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that 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 submitted an informal email in Chinese on January 25, 2019, but 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 Respondent did not respond on the issue of 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;

(b) the Respondent has provided an address in the United States of America to the Registrar;

(c) according to the evidence submitted by the Complainant, the Respondent’s registered address provided to the Registrar contains a note in English which states “contact us in English” (see Annex 1 of the Complaint); and

(d) the website to which the disputed domain name resolves contains contents entirely in English.

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

(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

A. Identical or Confusingly Similar

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

The disputed domain name incorporates the Complainant’s trade mark THOMAS PINK in its entirety. The addition of the generic Top-Level Domain (“gTLD”) “.net” does not in this case 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, a complainant bears the burden of proof to establish 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 come forward with evidence in support of 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 THOMAS PINK trade mark or to seek registration of any domain name incorporating the trade mark. The Respondent appears to be an individual by the name of “Song Guangxiu”. There is no evidence suggesting that the Respondent is commonly known by the disputed domain name or has acquired any trade mark rights in the term “Thomas Pink”.

According to the evidence submitted by the Complainant, the disputed domain name resolves to a parking webpage featuring several links to third party websites purporting to sell men's shirts, with a banner at the top of the webpage offering the disputed domain name for sale. Presumably, the Respondent receives pay-per-click fees from the linked websites. The consensus view of previous UDRP panels is that use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name.

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 come forward with evidence of 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 THOMAS PINK trade mark enjoys a significant reputation in the United Kingdom. The Complainant has also submitted evidence showing that an Internet search on the term “Thomas Pink” disclosed the Complainant’s extensive use of its trade mark. 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 trade mark suggests opportunistic bad faith.

According to the evidence submitted by the Complainant, the disputed domain name resolves to a parking webpage featuring several links to third party websites purporting to sell men’s shirts. The consensus view of previous UDRP panels is that a domain name registrant is normally deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an “automatically” generated basis. The Panel notes the presumption that the Respondent or a third party stands to profit or make a “commercial gain” from advertising revenue by such an arrangement trading on third-party trade marks. In the Panel’s opinion, such links clearly seek to capitalize on the trade mark value of the Complainant’s THOMAS PINK trade mark resulting in misleading diversion.

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 purposes 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.

The Panel notes that there is an offer to sell the disputed domain name on the webpage.

The Panel further notes from the evidence submitted by the Complainant that the Respondent was involved in other UDRP disputes involving third party trade marks. These cases are ArcelorMittal (SA) v. Songguangxiu, WIPO Case No. DCC2018-0013; Amundi S.A. v. Songguangxiu, WIPO Case No. DCC2018-0001; Jones Lang LaSelle IP, Inc. v. Songguangxiu, WIPO Case No. DCC2017-0010, and Remy Martin & Co. v. Songguangxiu, WIPO Case No. DCC2017-0006. This demonstrates a pattern of cybersquatting by the Respondent. The Panel determines that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name. The Panel therefore finds that the circumstances referred to in paragraph 4(b)(ii) of the Policy are applicable to the present case.

Moreover, efforts to send the Written Notice to the Respondent at the physical address 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 filed a response to deny 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 <thomaspink.net> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: March 10, 2019