Decision for dispute CAC-UDRP-104475

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the owner of, inter alia, the following trademark registrations:
- People's Republic of China ("China") trademark and device UNIQLO with nr. 1621299 of May 19, 2000 for goods in class 25;
- Chinese trademark UNIQLO with nr. 1606281 of May 19, 2000 for goods in class 9;
- United States trademark UNIQLO with nr. 2,720,333 filed on April 18, 2000 and registered on June 3, 2003 for goods in classes 24 and 25; and
- United States trademark UNIQLO with nr. 3,254,014 filed on September 9, 2000 and registered on June 19, 2007 for services in class 35.

The Complainant offers clothing, footwear, headwear and fashion accessories worldwide, under the brand UNIQLO. The Complainant was originally founded in Yamaguchi, Japan, in 1949, but now operates more than 2,000 retail fashion stores worldwide. The Complainant earned global revenues in excess of 600 billion yen in its fiscal year ending 2021. As of November, 2021, there were more than 850 UNIQLO branded stores throughout China, including four global flagship stores in Shanghai. The Complainant has partnerships with both the Smithsonian Institute museum in the United States, and the Musée de Louvre in Paris, France.

The Respondent registered the disputed domain name on October 17, 2020, which currently resolves to a website published on Wordpress, which seems to have listings for clothing. The bottom of the website indicates a purported copyright owner named "Uniqlo Museum", but there is no other means provided to identify or contact the purported owner of the disputed domain name or website.

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

1. The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks "UNIQLO " which were registered prior to the registration of the disputed domain name. The disputed domain name wholly incorporates the Complainant's trademarks "UNIQLO". The fact that the word "museum" is added does not eliminate the similarity between Complainant's trademarks and the disputed domain name, and on fact may enhance the similarity between the Complainant's trademarks "UNIQLO" and the disputed domain name in view of the cooperation between the Complainant on the one hand and The Smithsonian National Air and Space Museum and the Musée du Louvre on the other hand with respect to the Complainant's products under the trademarks "UNIQLO".

2. The Panel finds that the Complainant successfully submitted evidence that the Respondent has made no use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, neither is Respondent making a legitimate non-commercial or fair use of the disputed domain name, nor is Respondent commonly known under the disputed domain name. The Complainant's allegations were not challenged by the Respondent.

3. In the absence of a Response, and given that "UNIQLO" is not a dictionary and/or commonly used term but a trademark with a certain reputation which is, inter alia, used for museum collections, the Panel infers that the Respondent must have had the Complainant's trademark in mind when registering the disputed domain name, which was therefore registered in bad faith. Further, the Panel agrees with the Complainant's assertion that the Respondent has made active use of the disputed domain name to provide the rudimentary outline of a retail fashion store, which if it were real would be in direct competition with the Complainant. Use of a domain name that is confusingly similar to a complainant’s mark to promote the sales of competitive products online, is not a bona fide use of the disputed domain name. Instead, Respondent is merely taking advantage of the Complainant’s fame and goodwill, in particular its museum collection partnerships, to attract users to Respondent’s website, which constitutes use in bad faith of the disputed domain name.