Charles & Keith International Pte. Ltd. v. See PrivacyGuardian.org / Dorota Borowska
Case No. D2019-0315
1. The Parties
The Complainant is Charles & Keith International Pte. Ltd. of Singapore, represented by Strategic IP Information Pte Ltd., Singapore.
The Respondent is See PrivacyGuardian.org of Phoenix, Arizona, United States of America (“United States”) / Dorota Borowska of Chicopee, Massachusetts, United States.
2. The Domain Name and Registrar
The disputed domain name <charleskeithshop.online> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2019. On February 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a first amended Complaint on February 19, 2019. In response to a request for clarification by the Center, the Complainant filed a second amended Complaint on February 27, 2019.
The Center verified that the Complaint together with the first and second amended Complaints 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, and the proceedings commenced on March 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 25, 2019.
The Center appointed Ian Lowe as the sole panelist in this matter on April 4, 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 Singapore based retailer of fashion footwear and accessories founded in 1996. It is known for designing shoes, heels and handbags. The Complainant has sold products under the CHARLES & KEITH trademark for over 21 years and is the registered proprietor of a number of trademark registrations in respect of the mark. These include United States trademark number 5,024,429 registered on August 23, 2016 and European Union trademark number 4520672 registered on July 3, 2006.
The Complainant operates a website at “www.charleskeith.com” through which it markets and sells its products that are now available in Asia Pacific, the Middle East, Europe and the United States.
The Domain Name was registered on December 19, 2018. It resolves to a website selling shoes, handbags and accessories at prices heavily discounted up to 90%, apparently priced in Malaysian Ringgits (“RM”). The web pages are all headed “CHARLES & KEITH” and do not appear to give any other details of the operator of the website. At Checkout, new customers are invited to “Create a customer profile with Charles & Keith which allows you to shop faster…”
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its CHARLES & KEITH trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has uncontested rights in its CHARLES & KEITH trademark (the “Mark”), both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the Mark over many years. Ignoring the generic Top-Level Domain (“gTLD”) “.online”, the Domain Name comprises the entirety of the Mark, save for the omission of the ampersand and the addition of “shop”. In the Panel’s view, the omission of a character not permitted in a domain name and the addition of the dictionary term “shop” does not detract from the confusing similarity between the Domain Name and the Complainant’s trademark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. There is no suggestion that the Respondent has ever been known by the Domain Name and the Complainant has not authorized the Respondent to use its CHARLES & KEITH trademark and business name. The Respondent is not using the Domain Name for a bona fide offering of goods and services but for a website that appears falsely to purport to be operated by or on behalf of the Complainant. In the Panel’s view, the only credible reason for the adoption of the Domain Name by the Respondent was to take advantage of the Complainant’s rights in the Mark for commercial gain. The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the Complainant. In these circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
In view of the nature of the Domain Name, and the use to which the Domain Name has been put, namely to sell goods identical to those available from the Complainant’s website, the Panel is in no doubt that the Respondent had the Complainant and its rights in the Mark in mind when it registered the Domain Name. The Respondent is deriving commercial gain from using the Domain Name for a website purporting to be operated by the Complainant and purporting therefore to offer the Complainant’s goods for sale at substantially discounted prices. In the Panel’s view, this amounts to paradigm bad faith registration and use for the purposes of paragraph 4(a) of the Policy. The Panel accordingly finds that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <charleskeithshop.online> be transferred to the Complainant.
Ian Lowe Sole Panelist Date: April 18, 2019
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