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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cotton on Clothing Pty Ltd v. T H LOH

Case No. D2009-1132

1. The Parties

The Complainant is Cotton on Clothing Pty Ltd, of North Geelong, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.

The Respondent is T H LOH, of Singapore, Singapore.

2. The Domain Name and Registrar

The disputed domain name <cottonon.com> is registered with Blue Razor Domains.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 24, 2009. On August 25, 2009, the Center transmitted by email to Blue Razor Domains a request for registrar verification in connection with the disputed domain name. On August 25, 2009, Blue Razor Domains transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 31, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 20, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent`s default on September 21, 2009.

The Center appointed Brigitte Joppich as the sole panelist in this matter on September 24, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.

4. Factual Background

The Complainant belongs to the Cotton On Group, a multinational fashion retail group which has branched into clothing, footwear, cosmetics, toiletries, stationary and gifts. The Cotton On Group operates over 500 stores in Australia, New Zealand, Singapore, Hong Kong and Malaysia and employs over 8,000 employees. The Cotton On Group was created in 1991, is headquartered in Geelong, Australia, and operates a website at <cottonon.com.au>. Cotton On`s global operations generated turnover of in excess of AUD$400 million and over AUD$600 million in the financial years ending 2008 and 2009 respectively.

In addition to the domain name <cottonon.com.au>, the Complainant is the registrant of numerous other domain names consisting of, or containing "cottonon" and of numerous trade marks consisting of, or containing COTTON ON (the "COTTON ON Marks"), including the following trade mark registrations for COTTON ON in class 25 with a priority of as early as February 21, 2001:

- Australia: trademark registration No. 866898,

- China: registration No. 5699072,

- Hong Kong: registration No. 300387360,

- Singapore: registration No. T0706713Z,

- United States: registration No. 3616131.

The disputed domain name was first registered on June 10, 2002 and transferred to the Respondent on or about November 3, 2008.

The Respondent appears to have registered numerous domain names that contain third parties` trademarks.

5. Parties` Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

(1) The Complainant contends that it owns rights in the COTTON ON Marks which are not only highly distinctive but have over the years become well known for clothing and the retailing thereof. The disputed domain name is supposed to be confusingly similar to the COTTON ON Marks, and the addition of the gTLD .com does not affect the assessment that a domain name is confusingly similar to a particular trademark.

(2) The Complainant also contends that the Respondent does not have any right or legitimate interest in the disputed domain name as such name is not similar or in any way connected with the name under which the Respondent holds the domain name registration, as the Respondent has not at any time been commonly known by the disputed domain name, and as the Complainant is not aware of any trademarks in which the Respondent may have rights that are identical or similar to the disputed domain name. The Complainant further submits that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name and refers to the Respondent`s websites at <cottonon.com> which consist of standard linking pages containing sponsored links.

(3) The Complainant finally contends that the disputed domain name was registered and is being used in bad faith: given the annual turnover of the Complainant and the fact that it operates a number of retail outlets in Singapore, the Respondent, who is also located in Singapore, must have been aware of the Respondent and its COTTON ON Marks when registering the disputed domain name. As to bad faith use, it is submitted that the Respondent registered the disputed domain name with the primary aim of diverting Internet traffic intended for COTTON ON to the Respondent`s website containing sponsored links to many articles, including clothing. By using the disputed domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent`s website, by creating a likelihood of confusion with the Complainant`s trademark. The Complainant finally states that the Respondent is engaging in a pattern of conduct in registering domain names identical or similar to third party trademarks.

B. Respondent

The Respondent did not reply to the Complainant`s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the domain name is identical or confusingly similar to the Complainant`s trade mark; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name fully incorporates the Complainant`s COTTON ON Marks.

It is well established that the specific top level domain name generally is not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant`s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).

Therefore, the Panel finds that the disputed domain name is identical to the Complainant`s COTTON ON Marks and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.

The Complainant has asserted that the Respondent cannot have any legitimate interests in the domain name as such name is not similar or in any way connected with the name under which the Respondent holds the domain name registration, that the Respondent is not known by the disputed domain name, and that the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.

The Respondent did not deny these assertions in any way.

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent`s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant`s mark as to the source, sponsorship, affiliation, or endorsement of the respondent`s website or location or of a product or service on its website or location.

The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith. This point is clear from the wording of the Policy and has been confirmed in many cases Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (cf. also Telstra Corporation Limited v. Adult Web Development and Telstraexposed, WIPO Case No. D2002-0952; Telstra Corporation Ltd v. David Whittle, WIPO Case No. D2001-0434; Prada S.A. v. Mr. Chuan Sheng Wang, WIPO Case No. D2003-0758).

Evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another`s trademark by attracting Internet users to a website for commercial gain (cf. America Online, Inc. v. Tencent Communications Corporation, NAF Case No. 93668; Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694; Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101).

The Complainant has established substantial business activities in Australia, New Zealand, Singapore, Hong Kong and Malaysia since its creation in 1991. Given the fact, that the Complainant operates a number of retail outlets in Singapore, where the Respondent is located, it is inconceivable to this Panel that the Respondent registered the disputed domain name without knowing of the Complainant`s COTTON ON Marks. Therefore, the Panel concludes that the Respondent registered the domain name <cottonon.com> with full knowledge of the COTTON ON Marks and therefore in bad faith.

As to bad faith use, by fully incorporating the COTTON ON Marks into the disputed domain name and by using the website at such domain name as a parking website the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant`s website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant`s website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (cf. L`Oréal, Biotherm, LancГґme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, with further references). The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.

Furthermore, the Complainant provided evidence that the Respondent registered further domain names including third parties` marks and therefore acted in a pattern of preventing owners of a trademark or service mark from reflecting their mark in a corresponding domain name as required under paragraph 4(b)(ii) of the Policy.

Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <cottonon.com> be transferred to the Complainant.

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Brigitte Joppich
Sole Panelist

Dated: October 5, 2009