Russell & Bromley Limited v. Li Wei Wei
Claim Number: FA1710001752021
Complainant is Russell & Bromley Limited (“Complainant”), represented by David Powell of Stevens Hewlett & Perkins, United Kingdom. Respondent is Li Wei Wei (“Respondent”), People’s Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <russellandbromley.store>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
The undersigned certifies that he has acted independently and impartially, and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 4, 2017; the Forum received payment on October 4, 2017.
On October 9, 2017, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <russellandbromley.store> domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the name. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@russellandbromley.store. Also on October 11, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name(s) be transferred from Respondent to Complainant.
A. Complainant
Complainant is a UK retailer of footwear and handbags. Complainant uses the RUSSELL & BROMLEY mark in conjunction with its business practices. Complainant registered the RUSSELL & BROMLEY mark with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. UK00001380002, registered Apr. 10, 1992). Complainant also registered the RUSSELL & BROMLEY mark with the European Union Intellectual Property Office (“EUIPO”) (Reg. No. 002773745, registered Nov. 17, 2003) and the Swiss Federal Institute of Intellectual Property (Reg. No. P-401712, registered Oct. 21, 1992). Respondent’s <russellandbromley.store> is identical to Complainant’s RUSSELL & BROMLEY mark because it incorporates the mark in its entirety, substituting the word “and” for the ampersand and adding the “.store” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in <russellandbromley.store>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the RUSSELL & BROMLEY mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <russellandbromley.store> resolves to a website that attempts to pass itself off as Complainant, offering counterfeit versions of Complainant’s products. Moreover, orders users have placed on the disputed domain name have gone unfulfilled, but the payments have been taken from credit cards.
Respondent registered and is using <russellandbromley.store> in bad faith. Respondent has engaged in a pattern of bad faith registrations infringing on the marks of other third parties. The disputed domain name attempts to attract internet users to Respondent’s website for commercial gain. Respondent is attempting to pass itself off as Complainant, offering counterfeit versions of Complainant’s products under the RUSSELL & BROMLEY mark. Respondent registered <russellandbromley.store> with actual knowledge of Complainant and its rights to the RUSSELL & BROMLEY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Russell & Bromley Limited of Kent, United Kingdom. Complainant is the owner of domestic and international registrations for the mark RUSSELL & BROMLEY, which it has used continuously since at least as early as 1989, in connection with the offering of goods and services in the footwear and handbag sectors.
Respondent is Li Wei Wei, of People’s Republic of China. Respondent’s registrar’s address is listed as Singapore. The Panel notes that Respondent registered <russellandbromley.store> on or about April 3, 2017.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Panel Note: Supported Language Request
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been provided by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstances of the present case, the Panel decides that the proceeding should be in English.
Complainant is a UK retailer of footwear and handbags. Complainant uses the RUSSELL & BROMLEY mark in conjunction with its business practices. Complainant registered the RUSSELL & BROMLEY mark with UKIPO (Reg. No. UK00001380002, registered Apr. 10, 1992). Complainant also registered the RUSSELL & BROMLEY mark with the EUIPO (Reg. No. 002773745, registered Nov. 17, 2003) and the Swiss Federal Institute of Intellectual Property (Reg. No. P-401712, registered Oct. 21, 1992). Registrations with multiple government trademark entities are sufficient to show rights in a mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). The Panel here finds that Complainant’s registrations with multiple government entities, including UKIPO and EUIPO, are sufficient to show rights in the RUSSELL & BROMLEY mark.
Complainant asserts that Respondent’s <russellandbromley.store> is identical to Complainant’s RUSSELL & BROMLEY mark because it incorporates the mark in its entirety, substituting the word “and” for the ampersand and adding the “.store” gTLD. “The ampersand is a prohibited character in a domain name so there is no difference between the ampersand (in the mark) and the word ‘and’ (in the domain name).” Russell & Bromley Limited v. KIM H. SUK, FA 1729773 (Forum June 12, 2017). Likewise, “[a]ppending a top-level domain that describes a complainant’s business adds to confusing similarity.” Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA 1732665 (Forum July 1, 2017). The Panel here finds that Respondent’s <russellandbromley.store> is identical to Complainant’s RUSSELL & BROMLEY mark.
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant has met this burden.
Complainant asserts that Respondent does not have rights or legitimate interests in <russellandbromley.store>. Complainant indicates that WHOIS information associated with this case identifies Respondent as “Li Wei Wei.” The respondent is not commonly known by the disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent is commonly known by that name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Therefore, “[g]iven the WHOIS contact information for the disputed domain [name],” the Panel may “infer that Respondent . . . is not commonly known by the [disputed domain name] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003). Because Respondent has failed to contest Complainant’s assertions, and the WHOIS contact data does not reflect the disputed domain name, the Panel here finds that Respondent is not commonly known by the disputed domain name.
Complainant further avers it has not authorized or licensed Respondent to use the RUSSELL & BROMLEY mark in any regard, nor is Respondent affiliated with Complainant. Complainant argues that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. In support of its argument, Complainant offers evidence that Respondent’s <russellandbromley.store> resolves to a website that attempts to pass itself off as Complainant, offering counterfeit versions of Complainant’s products. The respondent’s use of the disputed domain name to pass itself off as the complainant to advertise and sell unauthorized products of the complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008). Moreover, Complainant states that orders users have placed on the disputed domain name have gone unfulfilled, but the payments have been taken from credit cards. Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use. The Panel here finds that Respondent does not have rights or legitimate interests in <russellandbromley.store>.
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant asserts that the disputed domain name attempts to attract internet users to Respondent’s website for commercial gain. Moreover, Complainant maintains that Respondent is attempting to pass itself off as Complainant, offering counterfeit versions of Complainant’s products under the RUSSELL & BROMLEY mark. The disputed domain name is registered and used in bad faith where the respondent hosts a website that “duplicate[s c]omplainant’s mark and logo, giving every appearance of being associated or affiliated with [c]omplainant’s business.” Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003). Likewise, the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion. See H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009). The Panel here finds that Respondent registered and is using <russellandbromley.store> in bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant maintains that Respondent registered <russellandbromley.store> with actual knowledge of Complainant and its rights to the RUSSELL & BROMLEY mark. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” panels have found “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). In light of the fame, notoriety, and long-standing use of Complainant's RUSSELL & BROMLEY mark, and the nature of the disputed domain name, it is inconceivable that Respondent could have registered the disputed domain names without actual and/or constructive knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <russellandbromley.store> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 17, 2017
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