Juicy Couture, Inc. v. Wang Kunkun and Kunkun Wang
and LIN XIAOTONG
Claim Number: FA1005001323092
Complainant is Juicy Couture, Inc. (“Complainant”), represented by Holly Pranger, of Pranger Law Group, California, USA. Respondent is Wang Kunkun and Kunkun Wang and LIN XIAOTONG (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <myjuicycouture.com>, <juicycouturebuy.com>, <juicycoutureorder.com>, and <juicycoutureee.com>, registered with Xinnet, Hi China.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2010. The Complaint was submitted in both Chinese and English.
On May 6, 2010, Xinnet, Hi China confirmed by e-mail to the National Arbitration Forum that the <myjuicycouture.com>, <juicycouturebuy.com>, <juicycoutureorder.com>, and <juicycoutureee.com> domain names are registered with Xinnet, Hi China and that Respondent is the current registrant of the names. Xinnet, Hi China has verified that Respondent is bound by the Xinnet, Hi China registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 13, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 2, 2010 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@myjuicycouture.com, postmaster@juicycouturebuy.com, postmaster@juicycoutureorder.com, and postmaster@juicycoutureee.com. Also on May 13, 2010, the Chinese language Written Notice of the Complaint, notifying Respondent of the email 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 9, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <myjuicycouture.com>, <juicycouturebuy.com>, <juicycoutureorder.com>, and <juicycoutureee.com> domain names are confusingly similar to Complainant’s JUICY COUTURE mark.
2. Respondent does not have any rights or legitimate interests in the <myjuicycouture.com>, <juicycouturebuy.com>, <juicycoutureorder.com>, and <juicycoutureee.com> domain names.
3. Respondent registered and used the <myjuicycouture.com>, <juicycouturebuy.com>, <juicycoutureorder.com>, and <juicycoutureee.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Juicy Couture,
Inc., offers fashion apparel and related products. Complainant owns trademark registrations for
the JUICY COUTURE mark in over 80 countries.
Complainant also holds numerous trademark registrations with the United
States Patent and Trademark Office (“USPTO”) for the JUICY COUTURE mark (e.g., Reg. No. 2,348,674 registered on
May 9, 2000).
Respondent registered the disputed domain names on the following dates: <myjuicycouture.com> on January 1, 2010; <juicycouturebuy.com> on January 29, 2010; <juicycoutureorder.com> on March 10, 2010; and <juicycoutureee.com> on April 20, 2010. The disputed <myjuicycouture.com> and <juicycouturebuy.com> domain names resolve to a website that prominently displays Complainant’s mark and logo. In addition, these websites offer counterfeit versions of Complainant’s products and provide images of goods bearing the JUICY COUTURE mark. The <juicycoutureorder.com>, and <juicycoutureee.com> domain names resolve to inactive websites.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” All of the disputed domain names list the “Registrant Organization” as “Wang Kunkun.” In addition, the WHOIS information lists the same e-mail address and phone number for all of the disputed domain names. Finally, many of the disputed domain name registrations provide the same street address and postal code. Consequently, the Panel concludes the disputed domain name registrants are a single entity and, therefore, one Respondent.
Complainant asserts rights in the JUICY COUTURE mark through
its registration of the mark with the USPTO (e.g., Reg. No. 2,348,674 registered on
May 9, 2000). The Panel find this
registration sufficiently establishes Complainant’s rights in the JUICY COUTURE
mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat.
Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights
in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the
mark with the USPTO); see also Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that
the mark be registered in the country in which the respondent operates;
therefore it is sufficient that the complainant can demonstrate a mark in some
jurisdiction).
Respondent’s <myjuicycouture.com>, <juicycouturebuy.com>, <juicycoutureorder.com>, and <juicycoutureee.com> domain names are confusingly similar to its JUICY COUTURE mark. Respondent fully incorporates Complainant’s mark in each of the disputed domain names. Respondent also adds the generic terms “my,” “buy,” and “order” to Complainant’s mark in the <myjuicycouture.com>, <juicycouturebuy.com>, and <juicycoutureorder.com> domain names. In addition, Complainant adds the country code for Estonia, “ee,” to Complainant’s mark in the <juicycoutureee.com> domain name. Finally, Respondent affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in each of the disputed domain names. The Panel finds these additions do not render Respondent’s disputed domain names distinct from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds Respondent’s <myjuicycouture.com>, <juicycouturebuy.com>, <juicycoutureorder.com>, and <juicycoutureee.com> domain names are confusingly similar to Complainant’s JUICY COUTURE mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
According to Policy ¶ 4(a)(ii), Complainant must first show that Respondent has no rights or legitimate interests in the disputed domain names. After Complainant establishes this prima facie case, the burden shifts to Respondent to demonstrate it has rights or legitimate interests in the disputed domain names under the guidelines in Policy ¶ 4(c). The Panel may presume that a Respondent lacks rights or legitimate interests if Respondent fails to submit a Response. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶4(a)(ii).”). Although Respondent failed to submit a Response, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant states that it is not affiliated with Respondent and has not authorized Respondent to use its mark in a domain name. Furthermore, the WHOIS information lists the registrant of the disputed domain names as “Wang Kunkun,” “Kunkun Wang” or “LIN XIAOTONG.” Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant argues that Respondent’s <myjuicycouture.com> and <juicycouturebuy.com>
domain names resolve to a website that prominently displays Complainant’s mark
and logo. In addition, these websites
purport to offer “mirror image” versions of Complainant’s products, and the
sites provide images of products bearing the JUICY COUTURE mark. The Panel finds Respondent’s use of the <myjuicycouture.com>
and <juicycouturebuy.com> domain names to offer counterfeit
versions of Complainant’s products does not constitute a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Hewlett-Packard Co. v. Inversiones
HP Milenium C.A., FA 105775 (Nat. Arb.
Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name
[<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP]
products is not a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i).”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126
(Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name
for commercial benefit by diverting Internet users to a website that sold goods
and services similar to those offered by the complainant and thus, was not
using the name in connection with a bona fide offering of goods or
services nor a legitimate noncommercial or fair use).
Complainant also claims Respondent’s <juicycoutureorder.com> and <juicycoutureee.com> domain names currently resolve to inactive websites. The Panel finds Respondent’s failure to make active use of the <juicycoutureorder.com> and <juicycoutureee.com> domain names does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the disputed domain names to divert Internet users to Respondent’s websites for commercial gain. Respondent presumably profits from its use of the <myjuicycouture.com> and <juicycouturebuy.com> domain names to offer counterfeit goods. The Panel finds this use of the disputed domain names disrupts Complainant’s business and constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”).
Respondent
uses the <myjuicycouture.com> and <juicycouturebuy.com> domain
names to intentionally attract, for commercial gain, Internet users to
its website, by creating a likelihood of confusion with Complainant's mark as
to the source, sponsorship, affiliation, or endorsement of Respondent’s
website. The <myjuicycouture.com> and <juicycouturebuy.com> domain
names are confusingly similar to Complainant’s JUICY COUTURE mark. Respondent also prominently features
Complainant’s mark and logo on the websites resolving from the <myjuicycouture.com> and <juicycouturebuy.com>
domain names. The Panel finds this
behavior constitutes registration and use in bad faith pursuant to Policy ¶
4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent
[used “HP” in its domain name] to benefit from the goodwill associated with
Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part,
to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated
by commercial gain, constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).”); see also Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the
website, offering Usag products, together with the domain name may create the
(incorrect) impression that Respondent is either the exclusive distributor or a
subsidiary of Complainant, or at the very least that Complainant has approved
its use of the domain name.”).
The Panel finds that the enumerated Policy ¶ 4(b) factors are not exhaustive and the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence). Respondent’s <juicycoutureorder.com> and <juicycoutureee.com> domain names do not resolve to active websites. The Panel finds Respondent’s failure to make active use of these disputed domain names constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myjuicycouture.com>, <juicycouturebuy.com>, <juicycoutureorder.com>, and <juicycoutureee.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 18, 2010
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