Domain investors registering domains with seemingly generic terms might end up losing them.
In the case of SuperDryClothing.com, the domain contains the SUPERDRY mark, registered in the UK for a clothing brand. While we’ve never heard of it, the brand is popular in both the UK and China – the registrant’s locale.
DKH Retail Limited, United Kingdom filed a UDRP to get the domain, along with Superdry.cc. The Complainant operates the domain Superdry.com.
Both domains resolve in domains selling imitation clothes, thus abusing the Superdry brand and trademark. It wasn’t difficult for the WIPO panel to order them transferred to the Complainant.
DKH Retail Limited v. 陈梦怡 (chen mengyi) / 解玉宏 (jie yu hong)
Case No. D2021-1185
1. The Parties
The Complainant is DKH Retail Limited, United Kingdom, represented internally.
The Respondents are 陈梦怡 (chen mengyi), China and 解玉宏 (jie yu hong), China (“the Respondent”).
2. The Domain Names and Registrar
The disputed domain names <superdry.cc>, <superdryclothing.com> are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2021. On April 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 21, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 27, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 4, 2021.
On May 4, 2021, the Complainant limited the scope of this administrative proceeding to the disputed domain names, and excluded another domain name, which was initially part of this proceeding (namely <superdryoutletaustralia.com>), from the scope of this administrative proceeding, and filed a separate UDRP proceeding for this domain name. The Center notified the Parties and the Registrar of this limitation of the present administrative proceeding via email on May 11, 2021.
On April 27, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on May 4, 2021. The Respondent did not comment on the language of the proceeding.
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 the Respondent of the Complaint in English and Chinese, and the proceedings commenced on May 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2021.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on June 28, 2021. 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 company headquartered in the United Kingdom, and is a subsidiary of Superdry PLC, which is a company active in the fashion industry. The Complainant and its group companies first launched the SUPERDRY brand as a clothing brand in 2003. Over the years, the Complainant’s business has grown significantly, and the Complainant now has its headquarters in Cheltenham, United Kingdom and has over 635 branded stores selling clothing and accessories across 62 different countries. The Complainant combines this with its e-commerce business, mainly conducted through its website linked to the Complainant’s official domain name <superdry.com>, from which it sells its products to over 215 countries.
The Complainant provides evidence that it owns a trademark portfolio for SUPERDRY (both word marks and figurative marks), see inter alia United Kingdom trademark registration number 2430291, registered on April 17, 2009; European Union trademark registration number 3528403, registered on June 22, 2005 and United States trademark registration number 77571765, registered on April 30, 2014.
The disputed domain names were created on, respectively, March 10, 2020 (for <superdry.cc>) and on May 15, 2020 (for <superdryclothing.com>). The disputed domain names currently both direct to active webpages, offering for sale SUPERDRY-branded clothing.
5. Parties’ Contentions
The Complainant essentially contends that the disputed domain names are confusingly similar to its trademarks for SUPERDRY, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered, and are being used in bad faith.
The Complainant particularly claims that its trademarks are distinctive and used intensively, and submits company and marketing information as well as press articles about its business operations. The Complainant contends that that the Respondent is using the disputed domain names to sell unauthorized goods, that it is abusing the Complainant’s copyrighted texts and photographs and it is misleading Internet users as to the origin of the goods sold on the websites linked to the disputed domain names. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the disputed domain names and constitutes use in bad faith.
The Complainant requests the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. First Preliminary Issue: Consolidation of Respondent
The Complainant requests consolidation in regard to the Respondent, as the disputed domain names are currently owned by multiple persons. In this regard, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) states in section 4.11.2: “where a complaint is filed against multiple Respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”
The Panel has carefully reviewed all elements of this case, giving particular weight to the following elements: the websites to which the disputed domain names direct both have common contents and contents that are very similar, similar layout, look and feel and both use the same Name Servers namely 9,451,576 and both have the same IP address; both disputed domain names target the same SUPERDRY trademarks of the Complainant; both disputed domain names were registered with the same Registrar and the registered owners of both disputed domain names are both based in Guangzhou, China. The Panel notes that the Respondent did not submit any arguments and did not contest the request for consolidation.
In view of these elements, the Panel rules that the websites linked to the disputed domain names are under common control, and that, in this particular case, consolidation would be fair and equitable to all parties involved and would safeguard procedural efficiency. The Panel therefore accepts the request for consolidation.
6.2. Second Preliminary Issue: Language of the proceeding
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement. However, the Panel is given the authority to determine a language of proceeding other than the language of the Registration Agreement, taking into account the circumstances of every individual case.
The Complainant stated in its Complaint that to the best of its knowledge the Registration Agreement was in English. Nevertheless, on April 27, 2021 the Center notified the Parties that the Registration Agreement for both disputed domain names was in Chinese. On May 4, 2021, the Complainant confirmed its request that the language of proceeding be English.
In considering the Complainant’s request that the language of the proceeding be English, the Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of the proceeding be English; the lack of comment on the language of the proceeding and the lack of response on the merits of the Respondent (the Panel notes that the Respondent had the opportunity to put forward arguments in either English or Chinese); the fact that the disputed domain names both resolve to active webpages, which only contain text in English (and contain no text in Chinese), from which the Panel concludes that the Respondent is able to understand and communicate in English; and the fact that Chinese as the language of the proceeding could lead to unwarranted costs for the Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English.
6.3. Discussion and Findings on the merits
The Policy requires Complainant to prove three elements:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Based on the evidence and arguments submitted, the Panel’s findings are as follows:
A. Identical or Confusingly Similar
The Panel finds that the Complainant has shown that it has valid rights in the mark SUPERDRY based on its intensive use and registration of the same as a trademark.
As to whether the disputed domain names are identical or confusing similar to the Complainant’s trademarks, the Panel notes that the first disputed domain name (i.e. <superdry.cc>) consists of only the Complaint’s trademark for SUPERDRY, followed by the applicable generic Top-Level Domain (“gTLD”) (namely “.cc” in this case). The Panel notes that the second disputed domain name (i.e. <superdryclothing.com>) consists of two elements, namely the Complainant’s trademark for SUPERDRY, combined with the merely descriptive word “clothing”, followed by the gTLD “.com”. The Panel refers to the WIPO Overview 3.0, section 1.8, which states: “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” The Panel concludes that in both disputed domain names, the Complainant’s trademark for SUPERDRY remains easily recognizable as the main, dominant element. The Panel also notes that the particular gTLD used in a domain name is viewed as a standard registration requirement, and may, as such, be disregarded by the Panel, see in this regard the WIPO Overview 3.0, section 1.11.1.
Accordingly, the Panel finds that the disputed domain names are both confusingly similar to the Complainant’s registered trademarks for SUPERDRY. The Panel rules that the Complainant has satisfied the requirements of the first element under the Policy.
B. Rights or Legitimate Interests
On the basis of the evidence and arguments submitted, the Panel holds that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, is not a good faith provider of goods or services under the disputed domain names and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. The Panel also notes that the Respondent is not commonly known by the disputed domain names. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply.
Moreover, reviewing the facts, the Panel notes that the disputed domain names both direct to active webpages showing a clear intent on the part of the Respondent to obtain unlawful commercial gains from diverting consumers to its e-commerce platforms and offering for sale unauthorized products branded and sold with the Complainant’s trademark for SUPERDRY. The Panel finds that this shows that the Respondent uses the disputed domain names to take unfair advantage of the goodwill and reputation of the Complainant’s trademarks for SUPERDRY. The Panel finds that such use does not convey rights or legitimate interests in the disputed domain names to the Respondent.
On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the registration of the disputed domain names was clearly intended to take unfair advantage of the Complainant’s trademark, by using it to mislead and divert consumers to the websites linked to the disputed domain names. Given the distinctiveness and fame of the Complainant’s trademark, the Panel finds that the registration of the disputed domain names, clearly targeting the Complainant’s well-known trademarks, was obtained in bad faith. Moreover, even a cursory Internet search at the time of registration of the disputed domain names would have made it clear to the Respondent that the Complainant owned registered trademarks in SUPERDRY and used these extensively. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain names.
As to use of the disputed domain names in bad faith, the Panel notes that both disputed domain names direct to active e-commerce websites, prominently displaying the SUPERDRY logo, offering unauthorized SUPERDRY-branded products for sale, and prominently using the Complainant’s text and photos, thereby apparently also violating its copyrights. The Panel also notes that the Respondent provides misleading information at the websites linked to the disputed domain names, purporting to be the Complainant, or to be at least to be connected to the Complainant, particularly in the Copyright Notice at the bottom of the page, and at the “Privacy Notice” and the “About Superdry” sections of the websites hosted at the disputed domain names. The Panel concludes that the Respondent attempts to pass its websites linked to the disputed domain names off as official websites operated by the Complainant. The foregoing elements lead the Panel to conclude that the Respondent is using the disputed domain names in bad faith, to take unfair advantage of the Complainant’s trademarks and reputation for commercial gain. The Panel therefore rules that it has been demonstrated that the Respondent is using the disputed domain names in bad faith.
Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore finds that the Complainant has satisfied the requirements of the third element under the Policy.
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 <superdry.cc> and <superdryclothing.com> be transferred to the Complainant.
Deanna Wong Wai Man
Date: July 5, 2021
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