{
    "case_number": "CAC-UDRP-104701",
    "time_of_filling": "2022-07-13 08:53:51",
    "domain_names": [
        "uniqlobd.com"
    ],
    "case_administrator": "  Iveta Špiclová   (Czech Arbitration Court) (Case admin)",
    "complainant": [
        "Fast Retailing Co., Ltd."
    ],
    "complainant_representative": "RODENBAUGH LAW",
    "respondent": [
        "Director Mohd Moniruggaman"
    ],
    "respondent_representative": null,
    "factual_background": "The Complainant is a Japanese multinational company that offers innovative clothing, footwear, headwear and fashion accessories to consumers worldwide, under the internationally famous brand UNIQLO. \r\n\r\nComplainant operates in many places internationally including Bangladesh and its online store for Bangladesh is at <grameenuniqlo.com> which incorporates its famous trademark UNIQLO and which is used for the Complainant’s business in that country.\r\n\r\nComplainant has a partnership in Bangladesh with the company Grameen to produce and supply its products in Bangladesh.\r\n\r\nRespondent has registered the domain name <uniqlobd.com> which is an obvious copy of the UNIQLO trademark with the addition of the letters “bd” which constitute the internet country code designation for Bangladesh.\r\n\t\r\nThe Complainant is concerned at the damage that is and can be done to its trademark and brand if the Respondent is permitted to continue using the disputed domain name and to pretend falsely that it is associated with the Complainant and it has therefore brought this proceeding to have the domain name transferred to the Complainant.",
    "other_legal_proceedings": "The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.",
    "no_response_filed": " No administratively compliant Response has been filed.\r\n\r\n\r\n A summary of the Parties' contentions is as follows.\r\n\r\n\r\nCOMPLAINANT\r\n\r\nTHE DISPUTED DOMAIN NAME IS CONFUSINGLY SIMILAR TO A TRADEMARK IN WHICH THE COMPLAINANT HAS RIGHTS\r\n\r\nThe Complainant submits that it has trademark rights in the UNIQLO mark that are derived from its registration of the mark with many trademark authorities around the world. Evidence has been tendered to that effect. Among those international registrations, the Complainant relies in particular on its registration of the mark in Bangladesh as it appears from the record that the Respondent lives in Bangladesh.\r\n\r\nThe Complainant also submits that the domain name is confusingly similar to the UNIQLO mark as it is an exact copy of the mark with the addition of the letters \" bd\" and the \".com\" gTLD.\r\n\r\nThe Complainant submits that the domain name and the trademark are confusingly similar. They are similar because the entire trademark is included and they are confusingly so because the addition of the letters \"bd\" invokes Bangladesh and implies that the domain name and any website to which it leads will be official and will deal with the legitimate promotion of the Complainant's goods and services in Bangladesh.\r\n\r\nMoreover, the addition of the generic top-level domain “.com” does nothing to distinguish the disputed domain name from the UNIQLO mark.\r\n\r\nIn summary, a simple comparison of the UNIQLO mark and the disputed domain name demonstrates that they are confusingly similar, and the addition of the \"bd\" country code and the .com top-level domain is negligible. Therefore, the Complainant has established the first element of the Policy under paragraph 4(a).\r\n\r\n\r\nRESPONDENT HAS NO RIGHTS OR LEGITIMATE INTEREST IN THE DISPUTED DOMAIN NAME\r\n\r\nThe second element of a UDRP claim only requires that the complainant make prima facie showing that respondent lacks a right or legitimate interest in the disputed domain name. \r\n\r\nThe Respondent has no rights or legitimate interests in the disputed domain name as the Respondent registered it more than a decade after Complainant’s rights in the famous and distinctive UNIQLO mark were established and registered in Bangladesh.\r\n\r\nAlso, the Respondent is using the disputed domain name to offer access to an apparent web store that could be linked with the Complainant’s business in the retail fashion industry in Bangladesh. Thus, Complainant has demonstrated longstanding, exclusive use of the UNIQLO trademark, and Complainant’s rights predate any registration or use of the disputed domain name by Respondent by 20 years at least. \r\n\r\nThe Complainant submits that the respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, is not commonly known by the disputed domain and is not making a legitimate noncommercial use or fair use of the disputed domain name. \r\n \r\nThe website available at the disputed domain name provides only a rudimentary retail fashion store, which is in direct competition with Complainant.\r\n\r\nUse of a domain name that is confusingly similar to a complainant’s mark to promote the sales of competitive products online, is not a bona fide use of the disputed domain name and the Complainant submits that this is very apparent on the evidence in the present case. \r\n\r\nThe evidence is that the Respondent is not commonly known by the disputed domain name. That is so because the WHOIS record lists ‘uniqlobd’ as the registrant organization, and the Infringing Website contains Uniqlobd in the top line, with an address, phone, e-mail and logo that is primarily in the same color red as Complainant’s famous logo. The Complainant is not aware of any such organization in Bangladesh or elsewhere. It is highly doubtful that any such organization exists.\r\n\r\nMoreover, the disputed domain name is confusingly similar to Complainant’s UNIQLO mark, indicating that Respondent is attempting to use it to profit from Complainant’s goodwill in that famous mark. Such blatantly infringing use cannot be legitimate under the Policy.\r\n\r\nThere is simply no evidence that the Respondent is or ever was commonly known by the domain name.\r\n\r\nAlso, the evidence is that the website at the disputed domain name is not used for a non-commercial fair use such as parody or comment but to go into competition with the Complainant. Use of a domain name that is confusingly similar to a complainant’s mark to promote the sales of competitive products online, is not a bona fide use.\r\n\r\nComplainant has therefore made out prima facie showing that the Respondent has no rights or legitimate interests in the domain name. \r\n\r\n\r\nRESPONDENT REGISTERED AND USED THE DISPUTED DOMAIN NAME IN BAD FAITH\r\n\r\nRespondent Intentionally attempted to divert internet users by creating a likelihood of confusion.\r\n\r\nThis case comes clearly within the meaning of paragraph 4(b)(iv) of the Policy as the Respondent has attempted to create confusion between the Complainant's mark and the nature of the website to which the domain name resolves.\r\n\r\nThe Respondent has merely put on the internet a rudimentary online retail fashion store, which is in direct competition with Complainant. This shows that the intention of the Respondent was to give the false impression that the domain name would lead to an official website of the Complainant promoting its goods and services, which is false and the Respondent must be taken to have known that it was false. Thus, the Respondent, in doing so, registered and then used the domain name in bad faith.\r\n\r\nMoreover, Respondent has been taking advantage of the Complainant’s fame and goodwill, not only its global fame but in particular the fame of Complainant’s business operations in Bangladesh and Respondent has been doing so to attract users to Respondent’s website. \r\n\r\nThe evidence will also show that the Respondent registered the disputed domain name primarily for the purpose of disrupting complainant’s business.\r\n\r\nBy its prominent use of Complainant’s globally famous and coined UNIQLO trademark, Respondent is using the disputed domain name for no other reason than to disrupt Complainant’s business by trying to confuse internet users into believing that they might be led to, or have arrived at, a website run by the Complainant or its subsidiary. This practice alone is enough to cause a disruption to Complainant’s business, as any reasonable person is likely to be confused about the source or affiliation of this domain name and the website run on it. \r\n\r\nRespondent is also using the disputed domain name for no other reason than to disrupt Complainant’s business by trying to confuse internet users into believing they might be led to, or have arrived at, a website run by the Complainant or its subsidiary. This practice alone is enough to cause a disruption to Complainant’s business, as any reasonable person is likely to be confused about the source or affiliation of this disputed domain name and the website run thereon.\r\n\r\nMoreover, 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 registration. Such a use results in a disruption to Complainant’s business and demonstrates Respondent’s bad faith registration and use of the disputed domain name. \r\n\r\nMoreover, the fact that Respondent has undertaken such actions decades after Complainant’s trademark rights arose is further evidence of bad faith registration for the sole purpose of disrupting Complainant’s business for Respondent’s own commercial gain.\r\n\r\nIt can also reasonably be inferred that Respondent was aware of Complainant’s rights given the way the Respondent has been using the domain name. It also impossible that a name as specific and unique as UNIQLO could have been found or chosen by chance. Given that UNIQLO is not a dictionary and\/or commonly used term but a trademark with a famous worldwide reputation, the Panel should infer that the Respondent must have had the Complainant's trademark in mind when registering the disputed domain name. The disputed domain name was therefore registered in bad faith.\r\n\r\nIndeed, how could the Respondent not have known of the UNIQLO trademark when it registered and then used the disputed domain name? Thus, Respondent failed to discharge its duty to ensure that its registration of the domain name would not infringe Complainant’s famous trademark, and the registration and use of the domain name was thus in bad faith.\r\n\r\nFor all of these reasons the Respondent registered and used the domain name in bad faith.\r\n\r\nWith respect to each of the foregoing elements, the Complainant has cited several prior UDRP decisions in support of its contentions. \r\n\r\n\r\nRESPONDENT\r\n\r\nRespondent did not file a Response in this proceeding.",
    "rights": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is 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 Policy).",
    "no_rights_or_legitimate_interests": "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 name (within the meaning of paragraph 4(a)(ii) of the Policy).",
    "bad_faith": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).",
    "procedural_factors": "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.",
    "decision": "Accepted",
    "panelists": [
        "The Hon. Neil Brown, QC"
    ],
    "date_of_panel_decision": "2022-08-11 00:00:00",
    "informal_english_translation": "Complainant has established extensive trademarks registrations around the world in the UNIQLO mark.\r\n\r\nThe Complainant has been using the UNIQLO mark in global commerce globally and continuously for many decades. Complainant has also registered the UNIQLO mark in many jurisdictions throughout the world, including but not limited to China, the United States and Bangladesh. \r\n\r\nAs one of those international registrations, the Complainant relies on the trademark registration for\r\n\r\nUNIQLO, Trademark number 129969 which was registered on February 3, 2010 with the Department of Patents, Designs and Trademarks of the People's Republic of Bangladesh. Evidence has been tendered to establish that fact and the Panel accepts that evidence. Therefore, although the Panel will take notice of all of the international registrations, the present discussion need only have regard to one such registration, as the Complainant is required only to adduce evidence of \"a trademark\" and the Complainant's registration in Bangladesh is clearly the most significant of the registrations for that purpose.\r\n\r\nThus, the Panel finds that the Complainant has rights in the UNIQLO mark as registered in Bangladesh and internationally. \r\n\r\nNotably, the Complainant registered its mark in Bangladesh more than ten years before the disputed domain name was registered.\r\n\r\nComplainant submits that it has invested copious amounts of time and money to promote the ubiquitous UNIQLO brand, both in Bangladesh and worldwide. As such, consumers around the world have come to associate Complainant with the UNIQLO marks and brand. Through such longstanding and exclusive use by Complainant, the UNIQLO mark is famous in Bangladesh as well as China, the United States, and throughout the world.\r\n\r\n\r\nThe WHOIS records in evidence prove that the Disputed Domain was registered in December, 2021. The domain name invokes Complainant’s aforementioned business operations and website in Bangladesh. Indeed, the Respondent apparently resides in Dhaka, Bangladesh. The disputed domain name resolves to a website published on Wordpress, which seems to have listings for clothing items available for sale. The bottom of the website indicates the intent of the website: “We are online shopping market place where consumer can shopping their products with trust and satisfaction.” \r\n\r\nThe use of the name Uniqlo BD for this website is only for the purpose of taking unfair advantage of Complainant’s famous name and trademarks, and constitutes passing off and\/or free riding.\r\n\r\nNo Business Relationship Exists Between the Parties\r\n\r\nObviously, Respondent does not have, and never has had, Complainant’s permission to use the UNIQLO trademark in such manner, or at all.  ",
    "decision_domains": {
        "UNIQLOBD.COM": "TRANSFERRED"
    },
    "panelist": null,
    "panellists_text": null
}