{
    "case_number": "CAC-ADREU-006219",
    "time_of_filling": null,
    "domain_names": [
        "clarkssale.eu",
        "clarksstore.eu",
        "clarksonline.eu"
    ],
    "case_administrator": "Tereza Bartošková (Case admin)",
    "complainant": [
        "Mr. Jamie King (Smart Voucher Ltd t\/a Ukash)"
    ],
    "complainant_representative": null,
    "respondent": [
        "fragione philippe (NA)"
    ],
    "respondent_representative": null,
    "factual_background": "The Complainant is a registered company named “C. & J. Clark International Ltd,” and based in Great Britain. The Complainant is a shoe manufacturer and retailer and uses the domain Clarks.eu for commercial purposes and is owner of several Trademarks containing “Clarks” and is using them. \r\n\r\nThe Respondent registered domain names “clarkssale.eu”, “clarksstore.eu” and “clarksonline.eu” under which it hosted websites similar to the Complainant’s and sold products similar to those marketed by the Complainant.  \r\n\r\nOn 17 January 2012, the Complainant initiated ADR proceedings. The Complainant, represented by Safenames Ltd, submitted a complaint against the Respondent claiming that the Respondent registered the domain names without rights or legitimate interest and in bad faith and that, therefore the registration should be declared abusive within the meaning of Article 21 of EC Regulation No. 874\/2004 (hereinafter “Public Policy Rules”). \r\n\r\nThe Respondent did not submit a Response or any other communication. \r\n\r\nAccording to the ADR Rules, Paragraph B3 f) the Respondent and the Complainant were informed by the case administrator of the default. Even so the following five days after receiving this notification the Respondent did not react (challenge the notice of Respondent´s Default according to Paragraph B3 (g) of the ADR Rules).",
    "other_legal_proceedings": "The Panel is not aware of any pending Legal Proceedings relating to the disputed domain name.",
    "discussion_and_findings": "Given the facts and arguments of the parties, the Panel should decide whether the conditions of article 21 of Reg. No. 874\/2004 are satisfied to decide whether the disputed domain names should be transferred to the Complainant or not. \r\n\t\r\n1) ON THE PRIOR RIGHTS \r\n\r\nPursuant to Article 21. Reg. No. 874\/2004, “A registered domain name shall be subject to revocation […]  where that name is identical or confusingly similar to a name in respect of which a right is recognized or established by national and\/or Community law, such as the rights mentioned in Article 10.” \r\n\r\nThe Panel finds that the trademark rights vested in the name CLARKS claimed by the Complainant are clearly substantiated. \r\n\r\nThe Complainant justifies that it owns various trademark registrations for “Clarks” as well as several corresponding domain names in many extensions including .EU. \r\n\r\nBesides, CLARKS is the Complainant’s trade name, under which it has been running its business for many years, as established by the Documentary evidence submitted to the panel. \r\n\r\n\r\n2) ON THE IDENTITY OR CONFUSINGLY SIMILARITY OF THE DOMAIN NAME \r\n\r\na) The disputed “Clarkssale.eu”, “clarkstore.eu”, ”clarksonline.eu” domain names incorporate the trademarks that the Complainant claims it holds. \r\n\r\nb) It is well-established that the extension of a domain name “.eu” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to a trademark pursuant to Article 21 (1) of the Regulation (EC) No. 874\/2004 (cf case No. 00283, lastminute.eu). \r\n\r\nc) on the mentions of “online”, “sale” and “store” in the respective domain names. \r\n\r\n-\tIn ClarksOnline.eu, the word \"ONLINE\" appears in the Domain Name added to \"Clarks\". As outlined in ADR Case No. 04645 (“Airfranceonline.eu”), “the word \"ONLINE\" constitutes one of the most generic terms used to refer to information society services […] As a consequence, the word or string of characters \"ONLINE\" cannot be considered as distinctive or capable of dispelling a risk of confusion”. \r\n\r\n-\tIn ClarksSale.eu, the word “SALE” appears in the Domain name added to “Clarks”. The Panel refers to ADR Case No. 05546 Alkostore.eu: “Adding a generic and non-distinctive element to a protected name does not remove or indeed even lessen the confusing similarity between the disputed domain name and the Complainant’s registered rights, but rather informs the internet user that the website where the disputed domain name points is a place where the products […] are for sale”. \r\n\r\n-\tIn ClarksStore.eu, the word “STORE” appears in the Domain name added to “Clarks” and the Panel believes the same rationale applies.\r\n\r\nThe Panel thus finds that all domain names are confusingly similar to the trademarks invoked by the complainant and therefore deems the first requirement of Article 21 (1) of the Regulation (EC) No. 874\/2004 is satisfied. \r\n\r\n\r\n3) ON THE LEGITIMATE INTEREST IN THE NAME \r\n\r\n“A registered domain name shall be subject to revocation […] where it \r\n(a) has been registered by its holder without rights or legitimate interest in the name;   \r\n\r\nPursuant to Article 10 of the Regulation (EC) No. 874\/2004, the legitimate interest condition is considered as fulfilled when: \r\na) prior to any notice of an alternative dispute resolution procedure, the Respondent has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so \r\nb) the Respondent has been commonly known by the domain name \r\nc) the Respondent is making a legitimate and non commercial or fair use of the domain name, without intend to mislead consumers or harm the reputation of the name on which a right is recognized. \r\n\r\nThe Respondent, being in default, has not presented any justification for having registered or holding any of the disputed domain names. \r\n\r\nThe Panel therefore considers that there is no element in the present case which may be interpreted as justifying a finding that Respondent has any rights or legitimate interests in the disputed domain name. \r\n\r\n\r\n4) ON THE RESPONDENT’S BAD FAITH \r\n\r\n“A registered domain name shall be subject to revocation where it \r\n(b) has been registered or is being used in bad faith.” \r\n\r\n\r\nThe Complainant is a major shoe maker company and it asserts that it has been using its corporate name, trade name and trade mark CLARKS for many years all throughout the world. \r\n\r\nThe Panel agrees that the notoriousness of the name CLARKS is indisputable. \r\n\r\nIt is the Panel’s opinion that the Respondent necessarily had the Complainant’s trademarks in mind when it registered the disputed domain names for it could realistically ignore that there is only one CLARKS company in the world and that the name CLARKS is not free to use. \r\n\r\nThis is of course confirmed by both the screen shots offered by the Complainant that appear to show that all three domain names were linked to sites pretending to sell Clarks merchandise without any legitimate right to do so. It is moreover underlined by a search on “clarkssale.eu” which clearly shows that the site was identified as a “scam” site misleading customers that were willing to buy Clarks products and complaining that they never received them. \r\n\r\nIn the Panel’s view therefore, the Respondent’s behavior does not appear to have been dictated by a bona fide intent to use the disputed domain name. The Respondent did act in bad faith when it sought to register the disputed domain names. \r\n\r\n\r\n5) TRANSFER OF THE DOMAIN NAME \r\n\r\nThe Complainant is a company incorporated under the laws of England and Wales and having its place of business within the European Community. Therefore, the requirements for the requested transfer of the domain name to the Complainant are satisfied (Section B No. 1 (b) (12) of the ADR Rules). \r\n\r\nThe Panel finds that the Complainant satisfies the general eligibility criteria for registration set out in Paragraph 4(2)(b) of Regulation (EC) No 733\/2002.",
    "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that\r\n\r\nthe domain names CLARKSSALE, CLARKSSTORE, CLARKSONLINE be transferred to the Complainant",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2012-04-25 00:00:00",
    "informal_english_translation": "I.      Disputed domain name: clarksonline.eu, clarksstore.eu, clarkssale.eu\r\n\r\nII.     Country of the Complainant: UK, country of the Respondent: France\r\n\r\nIII.    Date of registration of the domain name: 4 November 2011, for all three domains\r\n\r\nIV.    Rights relied on by the Complainant (Art. 21 (1) Regulation (EC) No 874\/2004) on which the Panel based its decision:\r\n\r\nFigurative CTM reg. no 000167916 for the term Clarks registered on 16 July 1998\r\nWord CTM reg. no 000167940 for the term CLARKS registered on 16 July 1998\r\nWord CTM reg. no 001694793 for the term CLARKS registered on 7 March 2002\r\nFigurative CTM reg. no 003909744 for the term Clarks registered on 15 November 2005\r\nFigurative CTM reg. no 004256681 for the term Clarks registered on 20 January 2006\r\nFigurative CTM reg. no 004625844 for the term clarks registered on 13 July 2006\r\nFigurative CTM reg. no 004656518 for the term Clarks registered on 31 August 2006\r\nFigurative CTM reg. no 008133175 for the term Clarks registered on 23 December 2009\r\nFigurative CTM reg. no 009198748 for the term Clarks registered on 27 January 2011\r\n\r\nV.    Response submitted: No\r\n\r\nVI.   Domain names are confusingly similar to the protected rights of the Complainant\r\n\r\nVII.  Rights or legitimate interests of the Respondent (Art. 21 (2) Regulation (EC) No 874\/2004):\r\n        1. Why the Complainant considers the Respondent to lack the rights and legitimate interests: “Clarks” is a registered and famous trademark which was not licensed to the Respondent.\r\n\r\n        2. Rights or legitimate interests the Respondent claims to have: N\/A\r\n        3. Does the Panel consider the Respondent to have no rights or legitimate interests: No\r\n\r\nVIII. Bad faith of the Respondent (Art. 21 (3) Regulation (EC) No 874\/2004):\r\n        1. Why the Complainant considers the Respondent to have registered or use the domain names in bad faith: no prior right, no license.\r\n        2. How the Respondent rebuts the statements of the Complainant:\t N\/A\r\n        3. Does the Panel consider the Respondent to have registered or use the domain name\/s in bad faith: Yes\r\n\r\nIX.   Other substantial facts the Panel considers relevant: use of scamming sites\r\n\r\nX.    Dispute Result: Transfer of the disputed domain names\r\n\r\nXI.   Procedural factors the Panel considers relevant: None",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}