A. Consolidation of Respondents
According to Article 3(c) of Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), the Complaint may relate to more than one domain name, provided that the disputed domain names are registered by the same domain-name holder. According to Article 10(e) of Rules a Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.
The whois details for <todshopjp.com> domain are as follows:
Registrar: Dynadot
Registrant Name: shuo tina
E-mail address: saletoshop@163.com
Phone Number: 86.18606905216
Address Line 1: No. 28 Andingmen East Street
Address Line 2: Dongcheng District, Beijing
Registrant City: Bejing
Registrant State/Province: DongCheng
Registrant Postal Code: 100000
The whois details for <todsclearanshop.com> domain are as follows:
Registrar: Dynadot
Registrant Name: tina nono
E-mail address: servicestore@163.com
Phone Number: 376.18606905710
Address Line 1: No. 28 Andingmen East Street
Address Line 2: Dongcheng District, Beijing
Registrant City: Bejing
Registrant State/Province: DongCheng
Registrant Postal Code: 100000
Although the names of the disputed domain name registrants are different (even if they share the common female name Tina), the Panel is convinced that one single person controls both the disputed domain names since (i) the official address for both domains is identical, (ii) in both cases is used 163.com provider for the email addresses and (iii) considering that the websites connected to the domain names not only share the same objective (offering for sale alleged "TOD'S" goods) but also present identical layouts and graphic features.
The Panel therefore accepts the Complainant's request to address all the disputed domain names in one case under the Rules, paragraphs 10(e) and 3(c). Accordingly, the Respondents will be collectively referred to as the "Respondent" hereinafter.
The Panel outlines that in previous cases a similar decision was taken (please see Philip Morris USA Inc. v. Domain Administrator, Eastern Valley Limited / Domain Administrator, China Capital Investment Limited – WIPO Case No. D2017-1978, Cephalon Inc v. Alen Mironassyan, Vesju Pere, Michael Thornton, Mike Bento – CAC Case No. 100892, Pandora A/S v. Larry Sack and ot. - CAC Case No.103259, TOD'S S.p.A. v. Athena Reynolds – CAC Case No. 102892, TOD'S S.p.A. v.杨宏 – CAC Case No.102869).
B. Material Requirements of the Policy
Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, the Complainant must prove that each of the following elements is present:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
1a) <todshopjp.com>
The Complainant has demonstrated rights through registration and use on the "TOD'S" trademark. The Panel finds that the disputed domain name <todshopjp.com> is confusingly similar with the "TOD'S" trademark of the Complainant. Actually the disputed domain name incorporates the said trademark of the Complainant in its entirety (as correctly pointed out by the Complainant the omission of the apostrophe depends only to technical reasons due to the limited characters available in domain names). This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525). The word “shop” which is added in the disputed domain name does not avoid a finding of confusing similarity as it is a descriptive, non-distinctive term, denoting the operation of the website as an online shop (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). The fact that the first letter “s” of the “shop” part of the disputed domain name is also the last letter “s” of the “tods” part of the disputed domain name does not avoid a finding of confusing similarity either, as both wording “tods” and “shop” remain distinctly recognizable within the disputed domain name (Philip Morris Products S.A. v. Richard Chen, heatshop, WIPO Case No. D2018-2537). The word “jp” which is added in the disputed domain name is disregarded as it is a geographic, non-distinctive term (BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284, 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). 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 only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson InternationalLicensing AG v. C. J. Lovik, WIPO Case No. D2002-0122). Therefore, the Panel finds that the disputed domain name <todshopjp.com> is confusingly similar to the "TOD'S" trademark of the Complainant.
1b) <todsclearanshop.com>
As seen above, the Complainant has demonstrated rights through registration and use on the "TOD'S" trademark. The Panel finds that also the disputed domain name <todsclearanshop.com> is confusingly similar with the "TOD'S" trademark of the Complainant. Actually, even in this case, the disputed domain name incorporates the said trademark of the Complainant in its entirety and it is per se sufficient to establish confusing similarity. As seen above, the addition of the term “shop” does not prevent a finding of confusing similarity between the disputed domain name and the "TOD'S" trademark while, as a mere technical part of the disputed domain name, the gTLD “.com” may be disregarded in determining confusing similarity. The additional element "clearan", in the context of the disputed domain name clearly stands for "clearance". In this perspective it is important to consider that the addition of the above descriptive word does not serve in any way to distinguish the disputed domain name from the Complainant's trademark or lessen the likelihood that Internet users will be confused by the similarity. In fact because of the connotation associated with the word "clearance", implying the selling off of overstocked, old or otherwise unwanted inventory, the combination of the element "clearan" (especially because followed by the term "shop") with the Complainant's mark "TOD'S" increases the likelihood that Internet users will associate the disputed domain name with the Complainant's mark and therefore also increase confusing character of the disputed domain name (Swarovski Aktiengesellschaft v. swarovskiclearance.com swarovskiclearance.com, WIPO Case No. D2014-0857).
Accordingly, the Complainant has, to the satisfaction of the Panel, shown that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant therefore succeds on the first element of the Policy.
2) The Complainant demonstrated that the websites to which the disputed domain names are linked allegedly offer for sale authentic merchandise bearing the "TOD'S" trademark. The Complainant clearly considers that Respondent has the hope and the expectation that Internet users looking for the brand "TOD'S" will be directed to the websites corresponding to the disputed domain names. The Panel finds that said activity, of course, does not provide a legitimate interest in the disputed domain names under the Policy. Furthermore, the Complainant provided prima facie evidence that the Respondent does not have rights or legitimate interests in respect of the disputed domain names as it is not commonly known under the disputed domain names and was never authorized to use the "TOD'S" trademark by the Complainant. The Respondent, in the absence of any Response, has not shown any facts or element to justify prior rights or legitimate interests in the disputed domain names. The Complainant therefore succeeds on the second element of the Policy.
3) Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
The Respondent registered the disputed domain names years after the use and registration of the "TOD'S" mark by the Complainant. In consideration of the reputation achieved by "TOD'S" it is clear that the Respondent was surely aware of the Complainant’s trademark when he registered the domain names in dispute. Moreover, the Respondent appears to have attempted to benefit commercially from the appropriation of the "TOD'S" mark in the disputed domain names. The use of the famous mark "TOD'S", which is well-known worldwide in the fashion sector, for selling fashion items, clearly indicates that the disputed domain names were chosen by the Respondent to take advantage of the Complainant’s mark reputation. This finding leads to the obvious conclusion that the disputed domain names have been registered in bad faith (Research In Motion Limited v. Privacy Locked LLC/Nat Collicot - WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian - WIPO Case No. D2009-0113; AXA S.A. v. P.A. van der Wees - WIPO Case No. D2009-0206; BHP Billiton Innovation v. Ravindra Bala - WIPO Case No. D2008-1059).
The Panel also finds that, by linking the disputed domain names to websites offering for sale alleged "TOD'S" items, the Respondent has intentionally attempted to attract Internet users to its websites for commercial gain, by causing a likelihood of confusion with the trademark "TOD'S" as to the source, sponsorship, affiliation or endorsement of its websites and the products promoted therein.
Furthermore, the Respondent has ignored Complainant's attempt to resolve this dispute outside of this administrative proceeding by refusing to answer the cease and desist letters. Past UDRP panels have held that failure to respond to a cease and desist letter may properly be considered a factor in finding bad faith (see, for instance, Encyclopedia Britannica v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 and RRI Financial, Inc., v. Chen, WIPO Case No. D2001-1242).
As the conduct described above clearly falls within paragraph 4(b)(iv) of the Policy (Triumph International Vietnam Ltd v. Tran Quoc Huy - WIPO Case No. D2017-0340), the Panel concludes that the Respondent registered and is using the disputed domain names in bad faith pursuant to the paragraph 4(a)(iii) of the Policy. The Complainant therefore succeeds also on the third element of the Policy.
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