Decisión del Panel Administrativo nº DAU2015-0026 of WIPO Arbitration and Mediation Center, September 29, 2015 (case Arcadia Group Brands Limited trading as Topshop, Top Shop/Top Man Limited trading as Topshop v. Andrew Cooper, Topshop Holdings Pty Ltd)
| Resolution Date | September 29, 2015 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Transfer |
| Dominio | Australia (.au) |
The Complainants (collectively, the “Complainant”) are Arcadia Group Brands Limited trading as Topshop and Top Shop/Top Man Limited trading as Topshop of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Griffith Hack, Australia.
The Respondent is Topshop Holdings Pty Ltd of Carindale, Queensland, Australia, represented by King & Wood Mallesons, Australia.
The disputed domain name [topshop.com.au] is registered with Netregistry Pty Ltd (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2015. On July 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 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.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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, and the proceeding commenced on July 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2015. The Response was filed on August 4, 2015.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on August 11, 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.
On August 24, 2015, the Complainant’s representatives sent an email to the Center, copied to the Respondent’s representatives, requesting suspension of the proceeding pending settlement negotiations between the parties. Accordingly, on August 25, 2015 the Panel issued a Panel Order suspending the proceeding until September 4, 2015.
On September 8, 2015, the Center sent an email to the parties advising the period of suspension had expired. On the same date, the Respondent’s representatives sent an email in reply to the Center advising that the parties had not reached agreement and that no further suspension was required.
On September 25, 2015, the Center notified the parties that the decision due date had been extended to September 28, 2015.
The Complainant is a company incorporated in the United Kingdom and is a leading international retailer of women’s clothing, shoes, accessories and related products under the trade mark TOPSHOP (the “Trade Mark”). The Complainant is the owner of registrations for the Trade Mark in numerous jurisdictions worldwide, including registration No. 1438141 registered in Australia since September 30, 2010 in Classes 3, 14, 18, 25 and 35. The Complainant is also the owner of registration No. 738191 for the trade mark TOP SHOP in Australia (with a space between “TOP” and “SHOP”), registered since July 2, 1997 in Class 25.
The Respondent is a company incorporated in Australia.
The disputed domain name was first registered on March 17, 2000 by an entity related to the Respondent and was transferred to the current Respondent on or about March 17, 2010.
The disputed domain name resolves to a website offering for sale a wide range of third party branded women’s clothing, shoes, accessories and related products; men’s clothing, shoes, accessories and related products; children’s clothing, shoes, accessories and related products; bed and bath products; luggage and travel products; offices supplies; and sports and outdoors products (the “Respondent’s Website”).
The Complainant contended as follows.
The disputed domain name is identical to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered or subsequently used in bad faith.
The Complainant’s predecessors began using the Trade Mark in London in 1964 and, by 1970, had opened the first standalone Topshop store in London. In 1994, the Complainant’s predecessors opened the flagship Topshop store in Oxford Circus, London, which has become one of the most iconic stores in London, inhabiting a 90,000 square ft. space.
The Complainant contends that the disputed domain name was registered on March 17, 2000, and was registered by the Respondent on or about March 13, 2010. (The Complainant has not adduced any evidence in relation to the former contention. In relation to the latter, the Complainant relies on a Domain Tools search report in respect of the disputed domain name with records dating from 2006.)
Today, there are over 450 Topshop stores across over 35 countries, including stores in Australia, in Sydney, Melbourne, Brisbane and Perth.
In 2006, the Complainant launched its website at “www.topshop.com” (the “Complainant’s Website”). The Complainant sells substantial and increasing quantities of products via the Complainant’s Website to over 100 countries around the world. The Complainant first sold products under the Trade Mark to Australia via the Complainant’s Website in 2006 and continues to do so today.
Prior to opening a Topshop store in Australia, the Complainant was selling products under the Trade Mark through its key wholesale partner Incu Pty Ltd (“Incu”). Incu launched its first store in Paddington (Australia) in October 2009. Incu then launched a further store in Melbourne in July 2010. In 2009 and 2010, the approximate value of goods branded under the Trade Mark sold by the Complainant to Incu was around GBP 150,000 (AUD 311,000).
The Complainant opened Topshop stores in Australia in Melbourne in 2011, in Sydney in 2012, in Brisbane in 2013 and in Perth in 2014.
The Trade Mark was famous in Australia since at least the 1990s and well in advance of the launch of the Complainant’s Website in 2006 and the opening of the Complainant’s Topshop stores in Australia in 2011. When the Complainant’s first store opened in Melbourne in 2011, shoppers queued all night for the store opening.
This fame is due to the following non-exhaustive list of factors:
(a) The fame of the Trade Mark in the United...
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