Barefoot Dreams, Inc. v. Christy Jarvis / CozyNChic
Claim Number: FA2107001956496
Complainant is Barefoot Dreams, Inc. (“Complainant”), represented by Merri Moken of Paul Hastings LLP, New York, USA. Respondent is Christy Jarvis / CozyNChic (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cozynchicshop.com>, registered with Tucows Domains Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Jonathan Agmon as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 23, 2021; the Forum received payment on July 23, 2021.
On July 26, 2021, Tucows Domains Inc. confirmed by e-mail to the Forum that the <cozynchicshop.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@cozynchicshop.com. Also on July 29, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on August 16, 2021.
On August 18, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jonathan Agmon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
On August 23, 2021, the Panelist issued a Procedural Order requesting for the Respondent to provide clearer copies of its Exhibits in its Response by August 25, 2021.
On August 25, 2021, the Respondent submitted the Exhibits as requested to the Forum.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant argues that the disputed domain name is identical to Complainant’s COZYCHIC trademarks as it wholly integrates Complainant’s COZYCHIC with the addition of the letter “N” and descriptive term “shop” and a gTLD “.com” which do not distinguish the disputed domain name from Complainant’s trademarks.
Complainant also argues that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant further argues that the disputed domain name was registered and is being used in bad faith. Complainant contends that Respondent is using the Complainant’s trademarks to attract consumers to the sale of unauthorized goods bearing Complainant’s trademarks.
B. Respondent
Respondent submitted a Response to Complainant’s contentions, asserting that she has been running a small business to sell second-hand clothing under the disputed domain name since 2017 and that she is neither infringing upon nor profiting from Complainant’s trademarks.
Complainant, Barefoot Dreams, Inc., was founded in 1994 by Annette Cook who created a line of children’s clothing products. Currently, the Complainant sells blankets, loungewear and apparel for children and adults under the COZYCHIC trademark. In 2020, the Complainant opened its first brick-and-mortar store in Malibu.
Complainant owns the following trademark registrations:
- U.S. Trademark Registration No. 2848767 for “COZYCHIC” registered on June 1, 2004;
- U.S. Trademark Registration No. 2846131 for “COZYCHIC” registered on May 25, 2004;
- U.S. Trademark Registration No. 2961872 for “COZYCHIC” registered on June 14, 2005; and
- U.S. Trademark Registration No. 4699932 for “COZYCHIC” registered on March 10, 2015.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 4(a)(i) of the Policy requires Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate. Complainant is the owner of the registered U.S. trademarks for “COZYCHIC”.
Complainant asserts that the disputed domain name incorporates its mark in its entirety and that Respondent is engaging in cybersquatting. Complainant argues that the only distinctions between Complainant’s trademark and the disputed domain name are the letter “n”, short for the word “and”; and the word “shop”, which are likely to be perceived by consumers as creating a mere variation of Complainant’s mark. Complainant further argues that the addition of the letter “n” or the word “and”, and the word “shop” to Complainant’s mark serves to pique the curiosity of consumers as to whether the products available on the disputed domain name are also a variation of Complainant’s products and serves as an invitation to view the Respondent’s website under the disputed domain name.
Respondent argues that the words “COZY”, “N” or “CHIC” are not a trademark of Complainant but admits that “COZYCHIC” is Complainant’s trademarked line of clothing. Respondent further argues that a reasonable person would not equate the domain name with Complainant’s <barefootdreams.com>.
The legal test under UDRP Policy 4(a)(i) is whether the domain name itself is identical or confusingly similar to a trademark of service mark in which Complainant has rights. It is well established that the addition of merely descriptive terms would not prevent a finding of confusing similarity under the first element (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.). Past Panelists have found that such changes are not typically sufficient to distinguish a domain name from an incorporated mark. See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trademark pursuant to the Policy.”). It is also established that an addition of a gTLD to a trademark is irrelevant in the analysis under Paragraph 4(a)(i) of the Policy.
In the present case, there is confusing similarity between Complainant’s registered word trademark and Respondent’s disputed domain name as the latter wholly incorporates Complainant’s “COZYCHIC” mark with the addition of the letter “n”, a descriptive term “shop” and a gTLD “.com”. The letter “n” between the words “COZY” and “CHIC” does not serve to sufficiently distinguish the disputed domain name from the registered trademark of Complainant.
Therefore, the Panel finds Respondent’s <cozynchicshop.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
In the present case, Complainant has demonstrated a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain name through providing evidence of its trademark registrations and use of the COZYCHIC trademarks well before Respondent registered the disputed domain name.
Complainant has also showed that Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the COZYCHIC mark in any way. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017).
Once Complainant establishes a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to Respondent to show that it has rights or legitimate interests in respect of the disputed domain name. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy 4(a)(ii)); Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”); WIPO Overview 3.0, section 2.1.
Complainant argues that Respondent fails to use the <cozynchicshop.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is attempting to pass off as Complainant to sell competing goods.
Prior Panels have held that using a disputed domain name to deceive Internet users as to the affiliation between a respondent and complainant to sell competing goods may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”); see also Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshots of the <cozynchicshop.com> domain name’s resolving webpage, which shows clothing bearing the mark COZYNCHICK that competes with Complainant’s and other good bearing marks owned by competitors of Complainant. See Amend. Compl. Ex. 3. Respondent’s sale of competing goods and goods of competitors of the Complainant, under a disputed domain name which is confusingly similar to the Complainant’s registered trademarks cannot generate rights or legitimate interests. Therefore, the Panel may find Respondent fails to use the <cozynchicshop.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Having reviewed the evidence submitted by Complainant and Respondent, the Panel finds that the Respondent failed to show she has rights or legitimate interests in the disputed domain name. Respondent is neither known by the disputed domain name nor is she authorized or licensed by Complainant to use the disputed domain name.
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(a)(iii) of the Policy requires Complainant to show that Respondent registered and is using the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
Finding of registration and use in bad faith requires a showing that Respondent is taking an unfair advantage or otherwise abusing the complainant’s mark (WIPO Overview 3.0, 3.1). UDRP paragraph 4(b) provides non-exclusive scenarios that constitute evidence of a respondent’s bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
Complainant centers its arguments on UDRP paragraph 4(b)(iv).
Respondent asserts that the disputed domain name <cozynchicshop.com> was not modeled after any of Complainant’s goods and that the name of Complainant was not a factor in the naming of her disputed domain name. Respondent also asserts that “COZY N CHIC” was derived from the initials of herself and her sons, and that she had purchased the domain name on Shopify in 2017. Respondent did not support these arguments with evidence. Nothing in the evidence tendered by Respondent mentions the sons’ names as the source of inspiration for the disputed domain name.
Respondent also countered in relation to a sale she performed, on an unrelated website, under the mark BAREFOOT DREAMS COZYNCHIC, that she made a typographical error and had meant to identify the goods, which was a pre-owned Complainant-branded-cardigan bought by Respondent, as “Barefoot Dreams COZYCHIC Lite Cardigan”. Based on Respondent’s explanation, the Panel draws the adverse inference that Respondent was in fact aware of Complainant and its registered trademark when she registered the disputed domain name. As noted previously, in the view of this Panel, the fact that Respondent added the letter “n” and “shop.com” does not obviate likelihood of confusion. Respondent therefore registered the disputed domain name having knowledge of the Complainant and its trademarks.
Evidence provided by the parties indicates that Respondent is well familiar with the clothing industry and has been running for several years a successful YouTube channel under the name “Christy J” where she has been promoting or selling various clothing goods. Complainant submitted evidence that BAREFOOT DREAMS and COZYCHIC are well established quality luxury brands, that are known and bought by celebrities and have been featured in publications, such as The New York Times. As addressed under the first limb above, the additions of the letter “n” and descriptive term “shop” are insufficient to distinguish the disputed domain name from Complainant’s marks. Therefore, the Panel agrees that Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to her website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Finally, the fact that Complainant’s trademark registrations was secured long before Respondent registered the disputed domain name is suggestive of Respondent’s bad faith registration and use of the disputed domain name. The Panel’s position on this point is made in view of the absence of Respondent’s statement that she was unfamiliar with the Complainant or its registered trademarks prior to registering the disputed domain name.
Based on the evidence presented to the Panel and the total circumstances of this case, including the close similarity between the Complainant’s registered trademark and the disputed domain name, the registration of the disputed domain name long after the registration of Complainant’s marks, the long use of Complainant’s mark on similar goods, the familiarity by Respondent of the Complainant and its registered trademarks, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cozynchicshop.com> domain name be TRANSFFERED from Respondent to Complainant.
Jonathan Agmon, Panelist
Dated: September 2, 2021
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