Charles & Keith International Pte. Ltd. v Milen Radumilo

WIPO Case No. D2023-4966

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Charles & Keith International Pte. Ltd. v. Milen Radumilo

Case No. D2023-4966

1. The Parties

The Complainant is Charles & Keith International Pte. Ltd., Singapore, represented by Strategic IP

Information Pte Ltd., Singapore.

The Respondent is Milen Radumilo, Romania.

2. The Domain Name and Registrar

The disputed domain name <charleskeith.asia> is registered with Dynadot Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2023. On November 29, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 2023, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 5, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 8, 2023.

The Center verified that the Complaint together with the amended 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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 13, 2023. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2024.

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The Center appointed Masato Dogauchi as the sole panelist in this matter on January 23, 2024. 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

Whereas the Respondent has not submitted any formal response, the following information from the
Complaint is found to be the factual background of this case.

The Complainant is a Singapore-based label which manufactures and retails footwear, bags and fashion accessories globally and online through its website. The Complainant was incorporated in Singapore in 2005.

The Complainant is the owner of the CHARLES & KEITH trademark in many parts of the world, including:

- European Union Registration No. 004520672, registered on July 3, 2006;

- Philippines Registration No. 5485, registered on May 21, 2007;

- International Registration No. 1070666, registered on December 17, 2010.

The Complainant has used its CHARLES & KEITH trademark for over 23 years, and the mark remains in extensive use worldwide.

The Complainant owns a generic Top-Level domain name <charleskeith.com>.

The disputed domain name was registered on June 6, 2022, and resolves to a landing page on which it hosts multiple pay-per-click (“PPC”) links to third-party websites.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In accordance with the Rules, paragraph 15(a), a panel shall decide a case on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Since the Respondent has not made any arguments in this case, the following

decision is rendered on the basis of the Complainant’s contentions and other evidence submitted by the
Complainant.

In accordance with the Policy, paragraph 4(a), in order to qualify for a remedy, the Complainant must prove each of the following:

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(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of the CHARLES & KEITH trademark for the purposes of the
Policy. WIPO Overview 3.0, section 1.2.1.

The disputed domain name reproduces the Complainant’s CHARLES & KEITH trademark without just “&” in the middle. The Panel finds the dominant feature of the trademark is recognizable in the disputed domain name. Accordingly, the disputed domain name is determined to be confusingly similar to that mark for purposes of UDRP standing. WIPO Overview 3.0, section 1.7.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The use of a domain to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of a complainant’s mark or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9.

The Panel finds the second element of the Policy has been established.

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C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, in consideration of the business activities of the Complainant’s business in footwear, bags and fashion accessories using the CHARLES & KEITH trademark for over 23 years, it is highly unlikely that the Respondent could have been unaware of the Complainant’s trademark at the time of registration of the disputed domain name on June 6, 2022. Therefore, it is found that the Respondent registered the disputed domain name in bad faith.

With regard to the requirement that the Respondent is using the disputed domain name in bad faith, the
Panel considers the fact that the confusingly similar disputed domain name resolves to a page displaying
PPC links shows that the Respondent’s use of the disputed domain name is done in bad faith.

Since the Respondent did not reply to the Complaint in this proceeding and noting the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

The Panel finds the third element of the Policy has been established.

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, <charleskeith.asia>, be transferred to the Complainant.

/Masato Dogauchi/
Masato Dogauchi
Sole Panelist
Date: January 29, 2024