{ "case_number": "CAC-UDRP-105760", "time_of_filling": "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": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "FAST RETAILING CO., LTD." ], "complainant_representative": "Kristian Elftorp (Zacco Sweden AB)", "respondent": [ "Web Commerce Communications Limited", "anne zimmerman", "frank dreher" ], "respondent_representative": null, "factual_background": "

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.<\/span><\/p>\n

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.<\/span><\/p>\n

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<\/span>). 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”).<\/p>", "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 names.<\/p>", "no_response_filed": "

COMPLAINANT:<\/p>\n

A. The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s trademarks <\/span><\/u><\/p>\n

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.<\/p>\n

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.<\/p>\n

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>).<\/p>\n

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.<\/p>\n

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.<\/p>\n

B. The Complainant states that the Respondents have no rights or legitimate interests in respect of the disputed domain names <\/span><\/u><\/p>\n

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.<\/p>\n

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. <\/p>\n

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.<\/p>\n

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.”.<\/p>\n

C. The Complainant contends that the disputed domain names have been registered and are being used in bad faith<\/span><\/u><\/p>\n

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.<\/p>\n

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.<\/p>\n

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.”<\/p>\n

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.<\/p>\n

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.<\/p>\n

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.<\/p>\n

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.<\/p>\n

RESPONDENTS:<\/p>\n

No administrative Complaint Response has been filed by the Respondents.<\/span><\/p>", "rights": "

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).<\/p>", "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 names (within the meaning of paragraph 4(a)(ii) of the UDRP).<\/p>", "bad_faith": "

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).<\/p>", "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.<\/p>", "decision": "Accepted", "panelists": [ "Radim Charvát" ], "date_of_panel_decision": "2023-10-11 00:00:00", "informal_english_translation": "

The Complainant is the owner of the following trademark registrations (hereinafter “Complainant’s trademarks” or “UNIQLO trademark”):<\/span><\/p>\n