WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

C & J Clark International Limited v. Domain Administrator, See PrivacyGuardian.org / Ulrich Kuefer

Case No. D2019-2958

1. The Parties

Complainant is C & J Clark International Limited, United Kingdom, represented by SafeNames Ltd., United Kingdom.

Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / Ulrich Kuefer, Germany.

2. The Domain Names and Registrar

The disputed domain names <clarksbudapest.com> and <clarksdublin.com> (“the Domain Names”) are registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2019. On December 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 3, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 4, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 5, 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. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 30, 2019.

The Center appointed Marina Perraki as the sole panelist in this matter on January 8, 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.

4. Factual Background

Per Complaint, Complainant is a British-based international shoe manufacturer and retailer founded in 1825 by brothers Cyrus and James Clark. Complainant is active in the design, manufacture and distribution of footwear products and fashion accessories, which include bags, purses and umbrellas, under the mark CLARKS. Complainant’s brand derived from the family name of the founding forefathers. Complainant has gained a reputation since the early 1950s and has become one of the largest footwear companies in the world, trading through 1,500 branded stores and franchises across the world. Complainant has stores and employees in the Americas, United Kingdom, Europe and Asia Pacific. Complainant offers its goods also through its official website, at “www.clarks.co.uk”, which is estimated to attain over 3 million visits per month.

Complainant and its group own numerous trademark registrations for CLARKS, including:

- European Union Trade Mark registration No. 000167940 for CLARKS (word), filed on April 1, 1996 and registered on July 16, 1998, for goods in International classes 18, 25 and 26;
- United Kingdom Trade Mark registration No. UK00002243096 for CLARKS (figurative), filed on August 19, 2000, and registered on April 19, 2002, for goods and services in International classes 3, 21, 26, 35, 37 and 40, and
- United States Trade Mark registration No. 0691307 for CLARKS (word), filed on February 2, 1959 and registered on January 12, 1960, with first use in 1937 and first use in commerce in 1947, for goods in International class 25.

Complainant is also the owner of numerous domain names, including <clarks-america.com>, <clarks-spain.com>, <clarkscanada.com>, <clarkschile.com> and <clarkshongkong.com>.

The Domain Names <clarksbudapest.com> and <clarksdublin.com> were registered on May 4, 2019, and May 5, 2019, respectively and resolve each to a website which is stylistically similar to Complainant’s official website and prominently displays Complainant’s logo and features images of Complainant’s products (each the Website, together the Websites).

Complainant sent a cease and desist letter dated October 16, 2019, for the Domain Names, to which there was no reply.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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

Complainant has demonstrated rights through registration and use of the CLARKS mark.

The Panel finds that the Domain Names <clarksbudapest.com> and <clarksdublin.com> are confusingly similar to the CLARKS trademark of Complainant.

The Domain Names incorporate the trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The words “budapest” and “dublin”, which are added in the Domain Names <clarksbudapest.com> and <clarksdublin.com> respectively, do not avoid a finding of confusing similarity as they are non-distinctive geographical terms (see Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135; and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, third Edition (”WIPO Overview 3.0”), section 1.8).

The generic Top-Level Domain (“gTLD”) “.com” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (see Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the Domain Names <clarksbudapest.com> and <clarksdublin.com> are confusingly similar to the CLARKS mark of Complainant.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Names, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Names, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainant, Respondent was not authorized to register the Domain Names.

Respondent did not demonstrate any bona fide use of the Domain Names prior to the notice of the dispute.

On the contrary, as Complainant demonstrates, the Domain Names resolved each to a Website containing content that suggests falsely that the Website is that of Complainant or of an affiliated entity or of an authorized partner of Complainant. The Websites are stylistically similar to Complainant’s official website, prominently display Complainant’s logo and feature images of Complainant’s products.

Per Complaint, Respondent is not an affiliated entity or an authorised distributor or partner of Complainant and no agreement, express or otherwise, exists allowing the use of Complainant’s trademarks on the Websites and the use of the Domain Names by Respondent.

A distributor or reseller can be making a bona fide offering of goods and thus have a legitimate interest in a domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; The Procter & Gamble Company v. Whoisguard, Inc. / Enzo Gucci, Xtremcare, Tony Mancini, USDIET, USDIET Ltd, WIPO Case No. D2016-1881, WIPO Overview 3.0, section 2.8.1:

(i) respondent must actually be offering the goods at issue;

(ii) respondent must use the site to sell only the trademarked goods;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) respondent must not try to “corner the market” in domain names that reflect the trademark.)

These requirements are not cumulatively fulfilled in the present case. The Domain Names falsely suggest that each Website is an official site of Complainant or of an entity affiliated to or endorsed by Complainant. The Websites extensively reproduce, without authorization by Complainant, Complainant’s CLARKS trademarks, without any disclaimer of association (or lack thereof) with Complainant.

Furthermore, the use of a domain name which intentionally trades on the fame of another and suggests affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; AB Electrolux v. Handi Sofian, Service Electrolux Lampung, WIPO Case No. D2016-2416; WIPO Overview 3.0, section 2.5).

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Names in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Names; or

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

(iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or

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

The Panel concludes that Respondent has registered and used the Domain Names in bad faith. Because the CLARKS mark had significant goodwill and reputation globally when the Domain Names were registered and had been widely used and registered, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Names (Aktiebolaget Electrolux v. RojIT Corporation, WIPO Case No. D2012-1330; Aktiebolaget Electrolux v. Priscilla Quaiotti Passos, WIPO Case No. D2011-0388).

Furthermore, such knowledge is readily obtainable through a simple browser search due to Complainant’s wide use of CLARKS mark on the Internet.

Respondent could have searched the European Union, United States of America or United Kingdom trademark registries and would have found Complainant’s prior registrations in respect of CLARKS (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).

Furthermore, the Domain Names incorporate in whole Complainant’s mark plus an additional non-distinctive geographical term, therefore creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Names.

The Websites’ content, eminently displaying Complainant’s trademarks and featuring images of Complainant’s products, with the ability to purchase them, further supports knowledge of Complainant and its field of activity.

As Complainant demonstrated, the Websites’ content is targeting Complainant’s trademark, as they prominently display Complainant’s CLARKS trademark and products images. This further supports registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Names as in some way endorsed by or connected with Complainant (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367).

As regards bad faith use of the Domain Names, Complainant has demonstrated that the Domain Names were used to each resolve to a Website, which prominently displays Complainant’s registered trademarks and logos, with Complainant’s products images and the ability to purchase these products, thereby giving the false impression that they are operated by Complainant or a company affiliated to Complainant or an authorised reseller or partner of Complainant. The Domain Names operate therefore by intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the website they resolve to. This supports the finding of bad faith use as described under paragraph 4(b)(iv) of the Policy (AB Electrolux v. Begad Negad, WIPO Case No. D2014-2092; Aktiebolaget Electrolux v. electroluxmedellin.com, Domain Discreet Privacy Service / Luis Rincon,WIPO Case No. D2014-0487; Aktiebolaget Electrolux v. Priscilla Quaiotti Passos, supra; and WIPO Overview 3.0, section 3.4).

Lastly, as Complainant demonstrates, Respondent is engaged in a series of domain name registrations targeting trademarks of third parties in the shoe industry. This pattern can be used in support of bad faith registrations (WIPO Overview 3.0 , section 3.2.1 ).

Under these circumstances and on this record, the Panel finds that Respondent registered and was using the Domain Names in bad faith.

Complainant has established Policy, paragraph 4(a)(iii).

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 Domain Names <clarksbudapest.com> and <clarksdublin.com> be transferred to Complainant.

Marina Perraki
Sole Panelist
Date: January 22, 2020