Case number | CAC-UDRP-105760 |
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Time of filing | 2023-09-04 09:37:42 |
Domain names | uniqlouksale.com, uniqlousastores.com, uniqloaustralia.com, uniqlocanada.com, uniqlodeutschland.com, uniqloespana.com, uniqloitalia.com, uniqlonederland.com, uniqlonewzealand.com, uniqlo-turkiye.com, uniqlodanmark.com, uniqlohungary.com, uniqlomexico.com, uniqlonorge.com, uniqlopolska.com, uniqloportugal.com, uniqloargentina.com, uniqlochile.com, uniqlocolombia.com, uniqlogreece.com, uniqloindia.com, uniqloireland.com, uniqloosterreich.com, uniqloschweiz.com, uniqlobelgium.com, uniqlouae.com, uniqlohrvatska.com, uniqlo-us.com, uniqlo-uk.com, uniqloecuador.com, uniqlousastore.com, uniqlo-argentina.com, uniqlo-australia.com, uniqlobelgie.com, uniqlo-belgie.com, uniqlo-canada.com, uniqlo-chile.com, uniqlocolombiabogota.com, uniqlocostarica.com, uniqlo-costarica.com, uniqlo-danmark.com, uniqlodenmark.com, uniqlodubai.com, uniqlo-ecuador.com, uniqloenargentina.com, uniqloenchile.com, uniqlo-espana.com, uniqlofrance.com, uniqlo-greece.com, uniqlo-hrvatska.com, uniqlo-hungary.com, uniqlo-ireland.com, uniqloirelandonline.com, uniqlomagyarorszag.com, uniqlomilano.com, uniqlo-nederland.com, uniqlo-norge.com, uniqlonz.com, uniqloonlineturkiye.com, uniqlo-osterreich.com, uniqloperu.com, uniqlo-peru.com, uniqlo-polska.com, uniqlo-portugal.com, uniqloromania.com, uniqlo-schweiz.com, uniqloslovensko.com, uniqlosrbija.com, uniqlo-srbija.com, uniqlo-suomi.com, uniqlosuomioutlet.com, uniqlosverige.com, uniqloswitzerland.com, uniqlo-turkey.com, uniqlo-uae.com, uniqlouk.com, uniqlouruguay.com, uniqlo-uruguay.com, uniqlowinkels.com, uniqloslovenija.com, uniqlocanadasale.com, uniqlosaleuk.com, uniqlo-jp.com, uniqlousasale.com, uniqlooutletuk.com, uniqloromania.ro, uniqlo-romania.ro |
Case administrator
Organization | Iveta Špiclová (Czech Arbitration Court) (Case admin) |
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Complainant
Organization | FAST RETAILING CO., LTD. |
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Complainant representative
Organization | Kristian Elftorp (Zacco Sweden AB) |
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Respondents
Organization | Web Commerce Communications Limited |
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Name | anne zimmerman |
Name | frank dreher |
The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.
The Complainant is the owner of the following trademark registrations (hereinafter “Complainant’s trademarks” or “UNIQLO trademark”):
- Japanese trademark registration No. 4433062 on November 17, 2000 – submitted extract from the trademark register does not sufficiently identify the named trademark, therefore, the Panel is not taking this trademark registration into account in further proceeding;
- US trademark registration No. 2720333 “UNIQLO”, registered on June 3, 2003, designated for Class 25;
- EUTM trademark registration No. 001663749 “UNIQLO”, registered on December 4, 2001, designated for Classes 9, 18, 24, 25;
- Malaysian trademark registration No. 95007082 “UNIQLO”, registered on July 18, 1995, designated for Class 25;
- Chinese trademark registration (IR) No. 1022988 “UNIQLO”, registered on August 25, 2009, designated for Classes 9, 14, 18, 24, 25, 35.
Except for the Japanese trademark registration No. 4433062, the Complainant proved its ownership of the trademark registrations by the submitted extracts from Trademark Registers.
The Complainant is Fast Retailing Co., Ltd. which is a global developer of fashion brands that achieved consolidated annual sales of ¥2.3011 trillion for FY2022. The Complainant owns and operates, among others, Uniqlo Co., Ltd., the world’s third-largest fashion apparel retailer, which is listed on the First Section of the Tokyo Stock Exchange. The first Uniqlo retail clothing store opened in Japan in 1984. UNIQLO operation boasts 2,394 stores worldwide and has FY2022 sales of ¥1.9290 trillion. Driven by its LifeWear concept for ultimate everyday clothes, UNIQLO offers unique products made from high-quality, highly functional materials, and offers them at reasonable prices by managing everything from procurement and design to production and retail sales. In Malaysia, where at least one of the Respondent appears to be located, the Complainant opened its first store in Kuala Lumpur in 2010. Today the Complainant operates over 50 stores in Malaysia.
The UNIQLO trademark as such has been used intensively since its inception for a wide variety of products and services. In ADNDRC case No. HK-1400616 concerning the domain name <uniqlothes.com> in which it was stated that “The Complainant has rights in the UNIQLO trademarks, which are worldwide well-known.”. Further, the UNIQLO trademark is generally regarded as one of the world’s most valuable brands in various global rankings/surveys (e.g. “The World's Most Valuable Brands|2020 by Forbes”, which in 2020 ranked the UNIQLO trademark as the number 86 of the world’s most valuable brands.
In the present case, the Complainant filed a complaint regarding 88 disputed domain names (hereinafter “disputed domain names”) against multiple Respondents. The disputed domain names were mostly registered during the spring and summer of 2023 (especially on April 25, 2023, and June 8, 2023). The Respondents are ‘Web Commerce Communication Ltd.’ (seated in Malaysia), ‘frank dreher’ (seated in Germany) and ‘anna zimmerman’ (seated in Germany) (all the Respondents hereinafter “the Respondents”).
COMPLAINANT:
A. The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s trademarks
The Complainant states that the disputed domain names are confusingly similar to its trademark “UNIQLO”. Indeed, the disputed domain names include the UNIQLO trademark in its entirety.
The Complainant adds that the UNIQLO trademark is also combined with a number of geographical terms and generic terms such as “sale”, “outlet” and “stores”. The geographical terms consist of different countries and cities in which the Complainant is selling its products and marketing the UNIQLO trademark. Further, the disputed domain names closely correspond with the Complainant’s own domain name <uniqlo.com>. In the Complainant’s view, it is obvious that the use of various country-related terms is intended to give potential visitors the impression that the disputed domain names represent local e-commerce stores in the relevant territories.
The Complainant suggests that it is a well-established practice under the UDRP that a domain name that consists of a combination of a well-known trademark and a descriptive and/or geographic term shall be considered to be confusingly similar to the trademark (the WIPO Case No. D2011-0203 concerning the domain name <buyvogue.com>; or the WIPO Case No. D2020-2930 concerning the domain name <instagramchina.com>).
The Complainant asserts that the additions of the generic Top-Level Domain (“gTLD”) “.com” and the country code Top-Level Domain “.ro” do not have any impact on the overall impressions of the dominant portions of the disputed domain names and are therefore irrelevant when determining the confusing similarity between the trademark and the disputed domain names.
The Complainant concludes that there is a considerable risk that the trade public will perceive the disputed domain names either as domain names owned by the Complainant or that there is some kind of commercial relationship with the Complainant. By using the Complainant’s trademark as the dominant part of the disputed domain names, the Respondents exploit the goodwill and the image of the Complainant’s trademark, which may result in dilution and other damage to the trademark. In fact, some of the Complainant’s customers have reported that they assumed that the disputed domain names and their respective sites were the Complainant’s official website. This happened before or unfortunately, after they tried to order various clothing products from the respective websites. As a side note, customers who tried to order the product at the said website all failed to purchase, after they had included their credit card information on the respective site.
B. The Complainant states that the Respondents have no rights or legitimate interests in respect of the disputed domain names
The Complainant states that there is no information indicating that the Respondents are somehow trading under a name corresponding to the disputed domain names. Under such circumstances, the Respondents cannot claim to be commonly known by the disputed domain names or to names corresponding to the disputed domain names. Furthermore, the owner information in the whois details does not resemble "UNIQLO" or similar in any way. The Respondent ‘Web Commerce Communications Ltd’ appears to be a reseller of domain names (https://www.webnic.cc/). Thus, the Complainant assumes that they have an underlying customer who registered the disputed domain names.
The Complainant argues that no license or authorization of any other kind has been given by the Complainant to the Respondents to use the UNIQLO trademark. Furthermore, the Respondents are not, based on the available information, authorized dealers of the Complainant’s products or services and have never had a business relationship with the Complainant. As no evidence has been found indicating that the Respondents are using the name “UNIQLO”, or similar, as a company name or that it has any other legal rights in the names, it is quite clear that the Respondents are simply trying to “sponge off” the Complainant’s trademark for their own commercial benefit.
The Respondents are not using the disputed domain names in connection with a bona fide offering of goods or services. Instead, the Respondents have intentionally chosen the disputed domain names based on another trademark in order to generate traffic and income through websites displaying a clear copy of the Complainant’s own website, including the use of the Complainant’s logotype, images, name, design, and corporate colors. It is thus clear that the disputed domain names are being used for a commercial purpose which will risk diluting and damaging the UNIQLO trademark. Such use does not give rise to a legitimate interest in the disputed domain names.
In the WIPO Case No. D2021-3213 the panel held: “The disputed domain name redirected to a website using Complainant’s name and logo and referencing the name of its “MBC Dream” television show, and to other game-related websites. More recently, the disputed domain name redirects to a website at which Respondent identifies itself as “Modern Broadcast Company LLC” and offers for sale products used in the broadcast and media industries. The Panel is satisfied that such redirection has been created with the intention of diverting Internet users seeking information about Complainant’s “Dream” television show. Such use can never confer rights or legitimate interests. See WIPO Overview 3.0, section 2.13.1, and cases cited thereunder.”.
C. The Complainant contends that the disputed domain names have been registered and are being used in bad faith
The Complainant holds worldwide registrations of the UNIQLO trademark and variations thereof, including in Malaysia, the USA, China, and the EU. The UNIQLO trademark has the status of a prominent trademark within, but not limited to, Malaysia and Germany. The Respondents registered the disputed domain names around the spring/summer of 2023. This date is subsequent to when the Complainant obtained registered trademark rights for the UNIQLO trademark. It is obvious that it is the fame and value of the UNIQLO trademark that has motivated the Respondents to register the disputed domain names. The fact that the disputed domain names refer to websites copying the Complainant’s own website makes it obvious that the Respondents were fully aware of the Complainant and the UNIQLO trademark at the time of registration. Accordingly, the Respondents cannot claim to have been using the UNIQLO trademark without being aware of the Complainant’s rights to it.
In June 2023, the Complainant became aware of the disputed domain names and websites. It immediately initiated take-down attempts via the domain name registrar and the hosting providers. Accordingly, it seems clear that the Respondents have noticed the Complainant’s concerns with the use of the disputed domain names but have chosen to ignore the attempts of contacts made. It has been mentioned in earlier disputes that the failure of a respondent to respond to a cease-and-desist letter, or a similar attempt of contact, has been considered relevant in a finding of bad faith, e.g. WIPO Case No. D2011-1304.
As mentioned, the disputed domain names are currently connected to websites copying the Complainant’s own websites and displaying similar content for the purpose of selling clothes but in different languages, in an attempt to target and deceive local consumers in the relevant countries into believing that the disputed domain names are operated by the Complainant (some of the previous websites have however been shut down following the Complainant’s takedown attempts and thus are now connected to inactive websites). This is also true for the two <.ro> disputed domain names included in this complaint. The Complainant can only presume that the Respondents are intentionally creating the mistaken impression that they are affiliated with, or endorsed by, the Complainant to drive sales of clothing (presumably fake products, even though the Complainant has not completed any test purchases, and it is also possible that they are not actually selling any clothes but are only trying to obtain credit card information from customers trying to make a purchase). In a similar case, WIPO Case No. D2019-1720, the Panel concluded that: “The Respondent has established and maintains a website to which the disputed domain name resolves, which creates an impression of an association with the Complainant. There is nothing posted on the website to indicate that the Complainant has no association with the website. Furthermore, images and text posted on the Respondent’s website have been taken from the Complainant’s website and used without authorization.”
Furthermore, given that most websites are clear copies of the Complainant’s own website, it is quite possible the disputed domain names have been involved in phishing scams, even though the Complainant cannot say so for sure. However, it is without a doubt the case that the Respondents are trying to deceive potential visitors into believing that the disputed domain names and their corresponding websites are run by the Complainant, which is certainly not the case.
Finally, the Respondents have engaged in a clear pattern of registering the Complainant’s mark given that they have registered at least 88 different domain names (plus a few additional ccTLDs which are not subject to this UDRP dispute), all of which contain the UNIQLO trademark.
Given the current use of the disputed domain names, it is not possible to conclude that the disputed domain names are being used for good faith purposes. All these circumstances must lead to the conclusion that the disputed domain names were registered and are being used in bad faith.
Consequently, it is the Complainant’s view that the Respondents, by using the disputed domain names, has intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondents' websites. Further, the Complainant claims that the Respondents have registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, given that it has engaged in a clear pattern of such conduct. The disputed domain names must therefore be considered to have been registered and to be used in bad faith.
RESPONDENTS:
No administrative Complaint Response has been filed by the Respondents.
The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the UDRP).
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the UDRP).
The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the UDRP).
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.
- Preliminary Procedural Issue: Request for Consolidation of the Complaint
There is a preliminary procedural issue in this case whether the Complainant is entitled to bring a consolidated complaint against multiple Respondents or whether it is necessary for the Complainant to bring individual complaints.
- GENERAL PRINCIPLES FOR CONSOLIDATION
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (hereinafter referred to as “The WIPO Overview 3.0”) in Paragraph 4.11.2 states: “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.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including e-mail address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).“
- APPLICATION OF THE PRINCIPLES TO THIS COMPLAINT
In the present case, the Complainant filed a complaint regarding 88 disputed domain names against multiple Respondents. For the purpose of further consideration, the following table shows each of the Respondents, the number of the disputed domain names owned by them, the name of the registrar, and the date of registration.
Respondent |
Number of domain names |
Name of the Registrar |
Dates of registrations |
Web Commerce Communication Ltd. (seated in Malaysia) |
86; e.g.: <uniqlouksale.com> <uniqlocanada.com> <uniqlo-turkiye.com> |
ALIBABA.COM |
2023-04-25; 2023-06-08; 2023-06-12; etc. |
frank dreher (seated in Germany) |
1 <uniqlo-romania.ro> |
1API GmBH |
2023-06-08
|
anne zimmerman (seated in Germany) |
1 <uniqloromania.ro> |
1API GmBH |
2023-04-25 |
Besides the mentioned information, the Complainant asserts that both <uniqlo-romania.ro> and <uniqloromania.ro> were previously connected to identical websites compared to the rest (86) of the disputed domain names (evidenced by screenshots).
The Panel finds that both ‘frank dreher’ and ‘anne zimmerman’ are seated in Germany; their contact e-mail consists of pseudonym+number@yeah.net; the content of the websites connected to <uniqlo-romania.ro> and <uniqloromania.ro> is (was) similar to the websites connected to the rest of the disputed domain names (which was evidenced by screenshots) and so targets the same sector of the market (clothing); naming patterns <uniqlo-romania.ro> and <uniqloromania.ro> are similar to the rest of the disputed domain names [e.g. <uniqlocanada.com>, <uniqlo-turkiye.com>]; and the dates of registration of both <uniqlo-romania.ro> and <uniqloromania.ro> are similar to the most of dates of registration of the rest of the disputed domain names (26 of the other disputed domain names were registered on April 25, 2023, and about 33 were registered on June 8, 2023).
All the Respondents are aiming at the Complainant’s “UNIQLO” trademark and associated relevant market (clothing). The disputed domain names of all the Respondents have similar name patterns and were registered at the same time. No administrative Response was submitted by any of the Respondents. The Panel agrees with the Complainant that it cannot be a mere coincidence that the <.ro> disputed domain names coincide in registration dates and website content. It can be presumed that all of the disputed domain names are controlled by the same entity/individual.
The Panel determines that this complaint consists of multiple Respondents that should, for the reasons discussed above, be permitted to be dealt with in a single complaint for the purpose of the present proceedings under the UDRP. Overall, this is clearly a case fitting within the “common control” category in which it would be equitable and fair to permit consolidation.
- Decision on the case
In the present case, the Respondents have not submitted any Response and consequently have not contested any of the contentions made by the Complainant. The Panel proceeds therefore to decide only on the basis of the Complainant’s factual statements and the documentary evidence provided in support of them (Paragraph 5(f) of The Rules).
- CONFUSING SIMILARITY
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks.
The WIPO Overview 3.0 in Paragraph 1.2.1 states: “Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”.
The WIPO Overview 3.0 in Paragraph 1.7 states: “[…] in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The WIPO Overview 3.0 in Paragraph 1.8 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 nature of such additional term(s) may however bear on assessment of the second and third elements.”
In the WIPO Case No. D2003-0888, Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, the Panel stated that: “In numerous cases, it has been held that a domain name that wholly incorporates a Complainant´s registered mark may be sufficient to establish confusing similarity for purposes of the UDRP.”
In the WIPO Case No. D2006-0451, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., the Panel stated that: “It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”.
The Complainant has established that owns numerous trademark registrations for the “UNIQLO” mark, designated for the classes in connection with fashion and clothing (proven by extracts from the trademark registers).
Most of the 88 disputed domain names consist of “uniqlo” and geographical indication, e.g. <uniqlocanada.com>, <uniqlo-turkiye.com>, etc. Some of the disputed domain names also contain additional generic terms such as “sale”, “online” or “store” (evidenced by extract from the Who is database). However, any of the added features do not prevent the finding of confusing similarity.
The addition of the gTLD <.com> and ccTop-Level Domain <.ro> do not change the overall impression of the disputed domain names either.
Therefore, the disputed domain names, as they reproduce the UNIQLO trademark in its entirety, with the addition of the geographical/generic terms are considered to be confusingly similar to the UNIQLO trademark.
As a result, the Panel finds that the Complainant has satisfied Paragraph 4(a)(i) of the UDRP.
- THE RESPONDENTS LACK OF RIGHTS OR LEGITIMATE INTERESTS IN THE DISPUTED DOMAIN NAMES
The Panel finds that the Respondents lack rights or legitimate interests in the disputed domain names.
According to Paragraph 4(a)(ii) of the UDRP, a complainant shall make a case that a respondent lacks rights and legitimate interests in a domain name. If the complainant fulfills this demand, the burden of proof shifts to the respondent and so the respondent shall demonstrate rights or legitimate interests in the domain name. If the respondent fails to prove its rights or legitimate interests, it is assumed that the complainant satisfied the element of Paragraph 4(a)(ii) of the UDRP (see CAC Case No. 102430, Lesaffre et Compagnie v. Tims Dozman). Moreover, past panels were of the view that it is difficult or sometimes impossible to prove negative facts, i.e., absence of rights or legitimate interest on the part of the Respondent. In this respect, past panels referred to the WIPO Case No. D2000-1769, Neusiedler Aktiengesellschaft v. Vinayak Kulkarni. Within the meaning of Paragraph 4(a)(ii) of the UDRP, once the complainant has made something credible (prima facie evidence), the burden of proof shifts to the Respondent to show that he has rights or legitimate interests in the domain name at issue by providing concrete evidence.
In the CAC Case No. 102279, FileHippo s.r.o. v. whois agent, the Panel stated that “[i]n the absence of a response, the Panel accepts the Complainant's allegations as true that the Respondent has no authorization to use the Complainant’s trademarks in the disputed domain name. Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under Paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain name, the Panel concludes that the Complainant has satisfied the requirements of Paragraph 4(a)(ii) of the Policy.”
In the present case, the Respondents are not related in any way to the Complainant and the Complainant has never granted any license nor authorization to the Respondents to use the Complainant’s trademark or apply for registration of the disputed domain names.
Moreover, the Respondents are not authorized dealers of the Complainant’s products or services and have never had a business relationship with the Complainant. As there is no evidence indicating that the Respondents are using the UNIQLO trademark as a company name or that it has any other legal rights in the name, it is evident that the Respondents are simply trying to benefit from the Complainant’s worldwide reputation. Additionally, the websites connected to the disputed domain names display clear copies of the Complainant’s own websites (evidenced by extracts of the Complainant’s websites and screenshots of the websites related to the disputed domain names).
Therefore, the Respondents are using the disputed domain names for the purpose of commercial gain while diluting and damaging the UNIQLO trademark.
The Respondents did not reply to the complaint and so failed to demonstrate their rights or legitimate interests in the disputed domain names.
Therefore, the Panel finds that the Complainant has satisfied Paragraph 4(a)(ii) of the UDRP.
- THE REGISTRATION AND USE OF THE DISPUTED DOMAIN NAMES IN BAD FAITH
The Panel finds that the Respondents registered and used the disputed domain names in bad faith.
The WIPO Overview 3.0 in Paragraph 1.15 states: “The content of the website associated with the domain name is usually disregarded by panels when assessing confusing similarity under the first element. In some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name. Such content will often also bear on assessment of the second and third elements, namely whether there may be legitimate co-existence or fair use, or an intent to create user confusion.“
The WIPO Overview 3.0 in Paragraph 3.1.4 states: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”
The WIPO Overview 3.0 in Paragraph 3.3 states: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.”
In the WIPO Case No. D2006-1440, National Football League v. Thomas Trainer, the Panel stated: “when a registrant, such as the Respondent here, obtains a domain name that is confusingly similar to a famous mark, with no apparent rights or legitimate interests in the name, and then fails to respond to infringement claims and a UDRP Complaint, an inference of bad faith is warranted.”
In the WIPO Case No. D2015-1167, Valero Energy Corporation and Valero Marketing and Supply Company v. Sharad Bhat, the Panel stated that: “In accordance with previous UDRP decisions, inactive or passive holding of a domain name, under the circumstances does not prevent a finding of bad faith use.”
In the WIPO Case No. D2019-1720, The Aldo Group Inc. v. Xinyue Tao, the panel stated that: “The Respondent has established and maintains a website to which the disputed domain name resolves, which creates an impression of an association with the Complainant. There is nothing posted on the website to indicate that the Complainant has no association with the website. Furthermore images and text posted on the Respondent’s website have been taken from the Complainant’s website and used without authorization.”
In the WIPO Case No. D2011-1304, LEGO Juris A/S v. Colin Heggie, the Panel stated: “It has been mentioned in earlier disputes that the failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith.”
In the present case, it was already established that the Complainant owns numerous trademark registrations for the “UNIQLO” mark, registered from 1995 onwards. The Complainant’s trademarks are well-known globally (see the ADNDRC case No. HK-1400616) and the UNIQLO brand is one of the 100 World’s most valuable brands in 2020 (proven by extract from Forbes).
Therefore, this Panel states that the Respondents must have been aware of the Complainant’s trademarks and Its reputation before the registration of the disputed domain names during the spring and summer of 2023.
As has been mentioned above, most of the websites associated with the disputed domain names are copies the Complainant’s own websites. This declares, on one hand, that the Respondents must have been aware of the Complainant, its trademarks, and business activities and, on the other hand, that the Respondents registered the disputed domain names to attract Internet users, cause confusion in their minds and so obtain a commercial gain. Such an activity cannot be understood as being in good faith.
Moreover, the Respondents did not respond to the complaint.
Following the above-mentioned, the Panel finds that the Complainant has satisfied Paragraph 4(a)(iii) of the UDRP.
- uniqlouksale.com: Transferred
- uniqlousastores.com: Transferred
- uniqloaustralia.com: Transferred
- uniqlocanada.com: Transferred
- uniqlodeutschland.com: Transferred
- uniqloespana.com: Transferred
- uniqloitalia.com: Transferred
- uniqlonederland.com: Transferred
- uniqlonewzealand.com: Transferred
- uniqlo-turkiye.com: Transferred
- uniqlodanmark.com: Transferred
- uniqlohungary.com: Transferred
- uniqlomexico.com: Transferred
- uniqlonorge.com: Transferred
- uniqlopolska.com: Transferred
- uniqloportugal.com: Transferred
- uniqloargentina.com: Transferred
- uniqlochile.com: Transferred
- uniqlocolombia.com: Transferred
- uniqlogreece.com: Transferred
- uniqloindia.com: Transferred
- uniqloireland.com: Transferred
- uniqloosterreich.com: Transferred
- uniqloschweiz.com: Transferred
- uniqlobelgium.com: Transferred
- uniqlouae.com: Transferred
- uniqlohrvatska.com: Transferred
- uniqlo-us.com: Transferred
- uniqlo-uk.com: Transferred
- uniqloecuador.com: Transferred
- uniqlousastore.com: Transferred
- uniqlo-argentina.com: Transferred
- uniqlo-australia.com: Transferred
- uniqlobelgie.com: Transferred
- uniqlo-belgie.com: Transferred
- uniqlo-canada.com: Transferred
- uniqlo-chile.com: Transferred
- uniqlocolombiabogota.com: Transferred
- uniqlocostarica.com: Transferred
- uniqlo-costarica.com: Transferred
- uniqlo-danmark.com: Transferred
- uniqlodenmark.com: Transferred
- uniqlodubai.com: Transferred
- uniqlo-ecuador.com: Transferred
- uniqloenargentina.com: Transferred
- uniqloenchile.com: Transferred
- uniqlo-espana.com: Transferred
- uniqlofrance.com: Transferred
- uniqlo-greece.com: Transferred
- uniqlo-hrvatska.com: Transferred
- uniqlo-hungary.com: Transferred
- uniqlo-ireland.com: Transferred
- uniqloirelandonline.com: Transferred
- uniqlomagyarorszag.com: Transferred
- uniqlomilano.com: Transferred
- uniqlo-nederland.com: Transferred
- uniqlo-norge.com: Transferred
- uniqlonz.com: Transferred
- uniqloonlineturkiye.com: Transferred
- uniqlo-osterreich.com: Transferred
- uniqloperu.com: Transferred
- uniqlo-peru.com: Transferred
- uniqlo-polska.com: Transferred
- uniqlo-portugal.com: Transferred
- uniqloromania.com: Transferred
- uniqlo-schweiz.com: Transferred
- uniqloslovensko.com: Transferred
- uniqlosrbija.com: Transferred
- uniqlo-srbija.com: Transferred
- uniqlo-suomi.com: Transferred
- uniqlosuomioutlet.com: Transferred
- uniqlosverige.com: Transferred
- uniqloswitzerland.com: Transferred
- uniqlo-turkey.com: Transferred
- uniqlo-uae.com: Transferred
- uniqlouk.com: Transferred
- uniqlouruguay.com: Transferred
- uniqlo-uruguay.com: Transferred
- uniqlowinkels.com: Transferred
- uniqloslovenija.com: Transferred
- uniqlocanadasale.com: Transferred
- uniqlosaleuk.com: Transferred
- uniqlo-jp.com: Transferred
- uniqlousasale.com: Transferred
- uniqlooutletuk.com: Transferred
- uniqloromania.ro: Transferred
- uniqlo-romania.ro: Transferred
PANELLISTS
Name | Radim Charvát |
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