1. The Parties The Complainant is Chelsea Football Club Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Mathys & Squire LLP, United Kingdom.
The Respondent is hai le of Xining, Qinghai, China.
2. The Domain Name and Registrar The disputed domain name is registered with Century Oriental International Co., Ltd. (the “Registrar”).
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2015. On July 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 21, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 22, 2015, the Complainant submitted Part 6 to the Complaint which had been omitted. In response to notifications by the Center regarding apparent typographical errors, the Complainant filed amended Complaints on July 22 and 29, 2015 respectively.
On July 22, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On July 24, 2015, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amended Complaints 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on July 31, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on September 3, 2015. 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 the Rules, paragraph 7.
4. Factual Background The Complainant is the owner of a well-known UK-based football club (“the Club”). The Club plays in famous football leagues such as the UK Premier League and the European Champions League. The operation of the Club has been, and continues to be the primary business activity of the Complainant. The Club is commonly referred to as “Chelsea”.
The Club was formed in 1905 and has operated under the name “Chelsea” as a football club since that date, delivering all aspects of football club services. Since 1905, the Club has won the FA Cup seven times, the Football League title five times, the European Cup in 1971 and 1998, the Union of European Football Associations (“UEFA”) Super Cup in 1998, the UEFA Champions League in 2012 and the Europa League in 2013. The Club has supporters worldwide and based upon this strong global presence, is a well-known club within its sphere throughout the world.
The UK Premier League is among the most viewed leagues in the world, with over 380 matches broadcast live in over 212 territories, into 725 million homes. The cumulative audience of the UK Premier League is over 3.62 billion across a 10-month season.
The Complainant is the owner of trade mark registrations throughout the world for its trade mark, CHELSEA, in respect of clothing and retail services. These include Chinese trade mark registration No. 11107195, Korean trade mark registration No. 40-0652621 and Russian Federation trade mark registration Nos. 448425 and 448992. The Complainant also owns trade mark registrations in various countries across the globe for the marks CHELSEA FC and CHELSEA FOOTBALL CLUB. In addition to its registered trade mark rights, the Complainant asserts it has unregistered trade mark rights in the mark CHELSEA insofar as it has been used upon clothing and football/sports clothing over a significant period of time.
The Complainant started licensing its trade marks to third parties to use on merchandise items. This activity started in the United Kingdom but has extended globally.
The disputed domain name was registered on December 25, 2014.
5. Parties’ Contentions A. Complainant The Respondent’s website to which the disputed domain name resolves is being used as a retail outlet for the sale of football shirts and jerseys. As part of the online store, the Complainant’s “Chelsea Football Club Crest” appears at the top of the webpage.
The Complainant submits that:
(i) the disputed domain name is confusingly similar to a trade mark in which it has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
The grounds for its contention follow.
The disputed domain name utilizes the trade mark CHELSEA alongside the word “jersey”, a word which is descriptive of football tops and a specific clothing item. The Complainant’s CHELSEA trade mark is being used alongside a generic word, suggesting that the former word is a brand identifier or a descriptor for those goods. This renders the word “Chelsea” the most distinctive element of the disputed domain name and therefore consumers coming upon the Respondent’s website will believe the disputed domain name to be related to the Complainant and the offering to derive therefrom. There will be a likelihood of confusion as well as a misrepresentation to the public.
The Complainant can find no evidence to suggest that the Respondent has any rights or legitimate interests in the disputed domain name. The Respondent’s activity does not constitute a bona fide offering of goods: the use of the Complainant’s CHELSEA trade mark within the disputed domain name as well as the product offering on its website have not been authorized by the Complainant; the Respondent is in no way associated with or endorsed by the Complainant; and there is clearly use in trade by the Respondent with a view to commercial gain.
The Complainant submitted a Witness Statement from its Licensing Manager confirming that the products sold upon from the Respondent’s website are counterfeit items. This shows that the Respondent is using the disputed domain name in bad faith. Such activity falls within paragraph 4(b)(iii) of the Policy and serves to disrupt the genuine and official trade of the Complainant and is actually competing with the Complainant’s genuine commercial offering. The Respondent’s activity also runs foul of paragraph 4(b)(iv) of the Policy. The Respondent has used a well-known trade mark in conjunction with another of the Complainant’s trade marks on the landing page of the website (i.e., the CHELSEA FOOTBALL CLUB CREST) in order to induce consumers to buy counterfeit football jerseys seemingly from the Complainant. This activity falls squarely within the activities outlined in paragraph 4(b)(iv) of the Policy and thus, the activity in question constitutes registration and use in bad faith.
The Respondent’s website provides no disclaimer informing consumers that the items are not genuine and/or that the site has no affiliation with the Complainant. Consumers landing will therefore be confused and misled, and business would be diverted away from the Complainant.
The Complainant attempted to contact the Respondent by email on two occasions, with a cease and desist letter and requesting the cancellation of the disputed domain name. However, one of these attempts was returned as undeliverable and the other communication was never been responded to.
B. Respondent The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Language of the Proceeding The Complaint was filed in English but the language of the Registration Agreement is Chinese. The Complainant requested that English be the language of the proceeding, the reasons being that the Respondent’s website has been presented in English and is aimed at selling goods that bear the trade marks of the Club. Further, the default currency stipulated was United States dollars. If the Complainant were required to incur the expense of translating the Complaint, this would unfairly disadvantage the Complainant, putting it to unjustified expense when taking into account the fact that the Respondent has presumably been making an income from the sale of counterfeit products on its website.
Paragraph 11(a) of the Rules stipulates that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
Paragraph 10(b) and (c) of the Rules stipulate, respectively, that:
“(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. […]”.
In the exercise of its discretion under paragraph 11 of the Rules, the Panel holds that English shall be the language of the proceeding. The disputed domain name comprises the English words “Chelsey” and “jersey” and the content of the website has been in English. These circumstances demonstrate (more likely than not) that the Respondent has a rather high level of familiarity with and knowledge of English. There is a need to balance the Policy consideration for the proceeding to take place with due expedition against the parties’ right to be treated fairly and given a fair opportunity to present their case. Whilst the language requirement is enshrined to protect the interest of respondents that are not familiar with the language adopted by the complainant, it should not cause any undue burden on the parties. The significant costs that would be placed on the Complainant to have to translate the Complaint and evidence into Chinese would be an undue burden on it when the circumstances indicate that the Respondent has sufficient knowledge of English.
The Respondent has been given the opportunity to respond on the issue but has not.
The Panel therefore finds it apt to rule that English should be the language of the proceeding.
B. Identical or Confusingly Similar The disputed domain name comprises the CHELSEA trade mark and the generic term “jersey”. The Panel finds that the Complainant has established it has trade mark rights in CHELSEA and that the addition of the generic term “jersey” and the generic Top-Level Domain (“gTLD”) “.net” does not negate the confusing similarity between the disputed domain name and the said trade mark. The word “chelsea” is clearly identifiable and incorporated in its entirety in the disputed domain name.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s CHELSEA trade mark.
The Complainant has therefore fulfilled the first condition of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests The Complainant has also shown that the CHELSEA trade mark is well-known in the world of football. The fact that the Respondent’s website reflects the Complainant’s trade mark and crest and is used as a means to sell football jerseys purportedly emanating from or authorized and/or licensed by the Complainant (but which have been verified to be counterfeit in nature) goes against any possibility in finding that the Respondent has rights or legitimate interests in the disputed domain name. Such use of the disputed domain name does not constitute a bona fideoffering of goods or services; neither does it constitute a legitimate noncommercial or fair use of the disputed domain name (paragraph 4(c)(i) and (iii) of the Policy). Of course the Respondent is entitled and could have taken every opportunity made available to it to demonstrate that it has rights or legitimate interests in the disputed domain name but did not. The Panel finds however that it would be highly improbable that the Respondent would have been able to offer a valid and justifiable reason for its choice of the disputed domain name.
The Panel therefore agrees with the Complainant’s submission that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name.
The Complainant has therefore fulfilled the second condition of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith The Panel agrees with the Complainant that the circumstances of this case fall within those described in paragraph 4(b)(iv) of the Policy:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The Complainant is an internationally well-known football club and it is abundantly clear from the content of the Respondent’s website that the Respondent was well aware of the Complainant and its trade mark, and it has in fact been trying to reap commercial benefits from the confusion that is likely to arise from the fact that the disputed domain name gives the false impression that the Respondent is officially linked to and/or endorsed by the Complainant. Where such a well-known trade mark has been incorporated into a domain name, the risk of Internet users being confused as to the origin and ownership of the domain name is very high. In light of this, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant has therefore fulfilled the third condition of paragraph 4(a) of the Policy.
7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.