WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
C. & J. Clark International Ltd v. Gene Bishop
Case No. D2019-3028
1. The Parties
The Complainant is C. & J. Clark International Ltd, United Kingdom, represented by SafeNames Ltd., United Kingdom.
The Respondent is Gene Bishop, United States of America (“United States”).
2. The Domain Names and Registrar
The Domain Names <clarksindirim.com> and <clarksromania.com> are registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2019. On December 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 9, 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.
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 of the Complaint, and the proceedings commenced on December 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2020.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on January 17, 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
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.
The Complainant has several trademark registrations. Some of them listed below:
- European Union Trade Mark 000167916, registered on July 16, 1998 under classes 18, 25, and 26.
- International Trademark 1278277, registered on August 10, 2015 under classes 03, 18.
- United States 0691307, registered on January 12, 1960 under class 25.
- Germany DE754830, registered on November 9, 1961 under class 25.
- Iceland 16/1947, registered on February 8, 1947 under class 25.
Including to its trademarks the Complainant has already registered many domain names which contain its “CLARKS” mark. The Complainant utilizes individual domain names to provide its customers with information specific to their location/needs. Such as <clarks-america.com>, <clarks-spain.com>, <clarkshongkong.com>, <clarkschile.com>.
The Domain Names <clarksindirim.com> and <clarksromania.com> both were registered on November 17, 2018, and resolve each to websites which are stylistically identical and prominently displays Complainant’s logo and features images of Complainant’s products.
Complainant sent a cease and desist letter dated October 17, 2019, for the Domain Names, to which there was no reply.
5. Parties’ Contentions
A. Complainant
The Complainant has registered trademark rights in CLARKS. The Complainant submits that the Domain Names are confusingly similar to the Complainant’s CLARKS trademark. The Complainant states that the addition of the geographic term “Romania” and generic term “indirim” (in English “discount”) reinforces the confusing similarity with the Complainant’s CLARKS trademarks.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant asserts that the Respondent is unable to demonstrate rights or legitimate interests in the Domain Name. The Respondent has not been allowed by the Complainant to make any use of its trademarks.
Further, the Complainant alleges that The Respondent’s websites are prominently using the Complainant’s registered CLARKS trademark being a location where users / relevant consumers usually expect to find the name of the online shop and/or the name of the provider of the website. Any user/ relevant consumer being confronted with the Domain Name and the Respondent’s websites provided thereunder will usually expect to find the name of the online shop and/or the name of the provider of the websites. The Complainant also adds that such use is particularly egregious as the online user is required to make an account with the websites to purchase products, which involves imputing personal data such as email address, phone number and physical address.
The Complainant argues that the Respondent had knowledge of the Complainant and its products at the time of registration of the Domain Names. The Respondent registered and used the Domain Names with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered CLARKS trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on his website or location. It constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Names <clarksindirim.com> and <clarksromania> contain the Complainant’s well-known trademark CLARKS with the geographic term “Romania” and generic term “indirim” (in English “discount”). The addition of these terms does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The extension “.com” is generally not to be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the Domain Names.
Therefore, the Panel finds that the Domain Names are confusingly similar to the trademark CLARKS in which the Complainant has rights, satisfying the condition of the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Names.
It is clear that the Respondent has not demonstrated any bona fide offering of goods and services for its use of the Domain Names, nor has the Respondent shown that it has been commonly known by the Domain Names. Rather, the evidence of the Complainant suggests that the Respondent has used the Domain Names in an attempt to trade off the goodwill associated with the Complainant’s trademark.
The Complainant also showed, inter alia, that the Respondent has neither a license nor any other permission to use the Complainant’s trademark in the Domain Names or otherwise.
The Respondent’s websites are purporting to be an official site of the Complainant and was selling what appears to be CLARKS products without disclosing the relationship between the Complainant and the Respondent, this cannot constitute a bona fide offering goods and services as described under section 2.8 of the WIPO Overview 3.0.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
C. Registered and Used in Bad Faith
Taking into account the Respondent’s use of the Domain Names, the Panel concludes that the Respondent was aware of the Complainant and its business when the Respondent registered the Domain Names.
The Respondent has attempted to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites. By reproducing the Complainant’s trademark in the Domain Names and on the web pages, the Respondent’s websites suggested the Complainant or an affiliated dealer as the source. This is supported by the Respondent’s use of the Complainant’s official product images and marketing materials. And the fact that the Respondent has not replied to the Complainant’s contentions, further point to bad faith.
The Panel concludes that the Domain Names were registered and are being used in bad faith, within the meaning of paragraph 4(a)(iii) 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 names <clarksindirim.com> and clarksromania.com> be transferred to the Complainant.
Dilek Ustun Ekdial
Sole Panelist
Date: February 4, 2020
