Luxury fashion brand J. Choo Limited, owner of the internationally desired JIMMY CHOO brand continues its success in its fight against cybersquatting with another favourable decision from the World Intellectual Property Organisation (WIPO). This decision is the latest in a long line of successful domain name complaints filed by the company.
Choo Limited, represented by A. A. Thornton & Co., filed a UDRP complaint in relation to the domain jimmy-choos.com which had been registered by a Chinese Registrant by the name of Qin Chuang. The complaint argued that in light of the public’s recognition of the complainant as a luxury and high fashion brand and its worldwide repute in the JIMMY CHOO brand the respondent must have been aware of the Complainant when it registered the domain name and that the domain name was chosen specifically to mislead consumers into believing they were purchasing genuine JIMMY CHOO branded goods. The complainant highlighted that the website was offering for sale goods which it believed to be counterfeit due to the significantly discounted prices.
Sole panellist Sok Link Moi stated that:
“the Complainant’s JIMMY CHOO trade mark enjoys a significant reputation in many countries worldwide as well as a strong Internet presence. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. A cursory Internet search would have disclosed the JIMMY CHOO trade mark and its extensive use by the Complainant.”
This approach from WIPO recognises that, whilst trade mark rights are territorial, reputation is not restricted by geographical borders. It is refreshing to see WIPO taking a practical approach which acknowledges that in the modern world the Internet plays an important role and that role is not territorially restricted. This approach should be welcomed by all trade mark owners, but will be particularly beneficial to International businesses.
WIPO went on to conclude that the Respondent’s actions in providing false contact details, combined with the Complainant’s allegations were sufficient for a finding that the Respondent registered and used the domain name in bad faith. It is encouraging to see that WIPO is making the effort to check the contact details rather than putting this onus on the trade mark owner and that it is willing to accept the provision of false contact details, which of course is in breach of ICANN regulated domain name registration agreements, as a relevant factor to be considered when making a decision on bad faith.
In its decision of 10 February 2017, WIPO confirmed that the domain name was confusingly similar to the complainant’s mark JIMMY CHOO, that the Respondent had no rights or legitimate interests in the mark and that, all circumstances considered, the domain name had been registered in bad faith and should be transferred to the complainant.