WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dune Holdings Limited v. Carina Haddow (Name Redacted)¹

Case No. D2019-2840

1. The Parties

Complainant is Dune Holdings Limited, United Kingdom (“UK”), represented by CSC Digital Brand Services AB, Sweden.

Respondent is Carina Haddow, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <dunelondonuk.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2019. On November 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 26, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. TComplainant filed an amended Complaint on November 29, 2019.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on December 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 27, 2019.

The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on January 13, 2020. 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.

On December 10 2019, a third party, [Name Redacted], sent an email to the Center stating

“As discussed, I do not know anything about my name being linked to this domain.
My maiden name is [Name Redacted]
My previous address is 14 Ensenada Reef
[. . .]
Though I have never seen the email address you have ([...] @163.com).
I do hope this is ok & I hope I am not a victim of identity theft.”

4. Factual Background

Complainant is a holding company, which directly or indirectly holds 75% or more of the shares and voting rights in Dune Group Limited. Dune Group, based in London, designs, manufactures and sells footwear and accessories for men, women and children. The first Dune store opened in London in 1993 and Dune Group now has 40 United Kingdom stores, 175 concessions in the major global department stores such as Topshop, House of Fraser, John Lewis and Selfridges, and 64 franchised stores and concessions in 10 countries around the world. It was recognized by Drapers Footwear Award for Footwear Retailer of the Year in 2007 and Multiple Footwear Retailer of the Year from 2014 to 2018.

In 2013, Dune rebranded as Dune London. It maintains a strong Internet presence through its primary website found at <dunelondon.com> as well as its social media accounts, including Instagram and Facebook. According to Similarweb.com, <dunelondon.com> ranks as 1,792nd most popular site in the UK, and 42,377th in the world. Dune London also has 586,388 likes on Facebook and 234,000 followers on Instagram.

Complainant owns the marks DUNE and DUNE LONDON, including the following trademark registrations:

- European Union trademark DUNE LONDON with registration number 005660741, registered on December 7, 2007.

- UK trademark DUNE LONDON with registration number 3317881, registered on October 5, 2018.

- International trademark DUNE with number 805155, registered on May 23, 2003.

The Respondent registered the disputed domain name <dunelondonuk.com> on March 18, 2019. At the time of the Complaint, the disputed domain name resolved to a website offering Michael Kors products.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademarks, that Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

In order to succeed in their claim, Complainants must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and

(ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and

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

Paragraph 15(a) of the Rules instructs the Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

Complainants have demonstrated that they have rights in the trademarks DUNE and DUNE LONDON. The disputed domain name incorporates Complainant’s marks in their entirety. The addition of the geographic term “uk” does not distinguish the disputed domain name from Complainant’s DUNE and DUNE LONDON trademarks.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademarks.

B. Rights or Legitimate Interests

Complainant contends that Respondent is not affiliated with or connected to Complainant in any way. At no time has Complainant licensed or otherwise endorsed, sponsored or authorized Respondent to use any of Complainant’s marks or to register the disputed domain name. The record is devoid of any facts that establish any rights or legitimate interests of Respondent in the disputed domain name. There is no evidence that Respondent has been commonly known by the disputed domain name or that it has any rights that might predate Complainant’s adoption and use of the DUNE and DUNE LONDON marks, domain name <dunelondon.com> and associated website. Complainant’s first use of the DUNE mark dates back to as early as 1993, over two decades ago and well before the registration of the disputed domain name on March 18, 2019.

Respondent has not made, and is not making, a legitimate noncommercial or fair use of the disputed domain name. Respondent has not used the disputed domain name in connection with the bona fide offering of goods or services. The disputed domain name directs Internet users to a website that copies and attempts to duplicate Complainant’s primary website by copying Complainant’s logo as well as the design, color scheme, product images and texts on the website. The record indicates that Respondent is using the disputed domain name as a means of deceiving Internet users into believing that the disputed domain name and its website are associated with Complainant. Respondent is using the disputed domain name in connection with a website which offers and attempts to sell competing products as well as those branded with Complainat’s mark. The record indicates that Respondent was well aware of Complainant’s marks and knowingly adopted Complainant’s marks in the disputed domain name in an effort to create the false impression that Respondent is associated with Complainant.

The Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The record indicates that Respondent most likely provided false and/or incomplete name and contact information to the registrar, as indicated by the email the Center received from [Name Redacted] stating

“As discussed, I do not know anything about my name being linked to this domain.
My maiden name is [Name Redacted]
. . .
Though I have never seen the email address you have ([...]@163.com).
I do hope this is ok & I hope I am not a victim of identity theft.”

The record indicates that Respondent (whose name listed in the registration information is likely false) had actual knowledge of Complainants’ rights in the DUNE LONDON trademark and is using it to pass itself off as Complainant or an authorized seller of Complainant’s goods, in order to deceive Internet users into believing that the website at the disputed domain name is associated with Complainant, which is false.

Accordingly, the Panel finds that Respondent has registered and used the disputed domain name in bad faith.

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 <dunelondonuk.com> be transferred to Complainant.

Lynda J. Zadra-Symes
Sole Panelist
Date: February 11, 2020

¹ The Panel decided to redact the name of the named Respondent, adopting the criterion of the panel in Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788 (“The Panel has decided that no purpose is to be served by including the named Respondent in this decision, and has therefore redacted its name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrars regarding transfer of the disputed domain names that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrars as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances”).