Juicy Couture, Inc. v. Private Whois discount-juicy-coutures.com; Private Whois discount-juicy-couture.com; Private Whois juicy-couture-online.com; Private Whois juicy-couture-tracksuits.com; Create World Inc. / Dominic Zhou
Claim Number: FA1108001405232
Complainant is Juicy Couture, Inc. (“Complainant”), represented by Holly Pranger of Pranger Law Group, California, USA. Respondent is Private Whois discount-juicy-coutures.com; Private Whois discount-juicy-couture.com; Private Whois juicy-couture-online.com; Private Whois juicy-couture-tracksuits.com; Create World Inc. / Dominic Zhou (“Respondent”), Bahamas and China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <discount-juicy-coutures.com>, <discount-juicy-couture.com>, <juicy-couture-online.com>, and <juicy-couture-tracksuits.com>, registered with Internet.bs Corp., and <juicy-coutureoutlets.com>, registered with eNom, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 29, 2011; the National Arbitration Forum received payment on August 29, 2011.
On August 30, 2011, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <discount-juicy-coutures.com>, <discount-juicy-couture.com>, <juicy-couture-online.com>, and <juicy-couture-tracksuits.com> domain names are registered with Internet.bs Corp. and that Respondent is the current registrant of the names. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 August 31, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <juicy-coutureoutlets.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 September 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 2011 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@discount-juicy-coutures.com, postmaster@discount-juicy-couture.com, postmaster@juicy-couture-online.com, postmaster@juicy-couture-tracksuits.com, and postmaster@juicy-coutureoutlets.com. Also on September 6, 2011, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <discount-juicy-coutures.com>, <discount-juicy-couture.com>, <juicy-couture-online.com>, <juicy-couture-tracksuits.com>, and <juicy-coutureoutlets.com> domain names are confusingly similar to Complainant’s JUICY COUTURE mark.
2. Respondent does not have any rights or legitimate interests in the <discount-juicy-coutures.com>, <discount-juicy-couture.com>, <juicy-couture-online.com>, <juicy-couture-tracksuits.com>, and <juicy-coutureoutlets.com> domain names.
3. Respondent registered and used the <discount-juicy-coutures.com>, <discount-juicy-couture.com>, <juicy-couture-online.com>, <juicy-couture-tracksuits.com>, and <juicy-coutureoutlets.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant began operation in 1997 under its JUICY COUTURE mark by offering women’s casual attire, specializing in maternity wear and comfortable jeans. Since that time, Complainant has expanded its product offerings and now markets jewelry, men’s and children’s apparel, toiletries and soaps, paper and printed matter, and accessories all under its JUICY COUTURE marks. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its JUICY COUTURE mark (e.g., Reg. No. 3,146,100 registered September 19, 2006).
Respondent registered the <discount-juicy-coutures.com>, <discount-juicy-couture.com>, <juicy-couture-online.com>, <juicy-couture-tracksuits.com>, and <juicy-coutureoutlets.com> domain names no earlier than January 19, 2011. All of the disputed domain names resolve to websites that offer counterfeit versions of Complainant’s products.
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.
Preliminary Issue: Multiple Respondents
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.” The Panel finds that the <discount-juicy-coutures.com>, <discount-juicy-couture.com>, <juicy-couture-online.com>, <juicy-couture-tracksuits.com>, and <juicy-coutureoutlets.com> domain names are in fact controlled by a single entity based on the WHOIS information and the content of the resolving websites.
Complainant holds numerous trademark registrations with the USPTO for its JUICY COUTURE mark (e.g., Reg. No. 3,146,100 registered September 19, 2006). Based on these registrations, the Panel determines that Complainant has established rights in its JUICY COUTURE mark under Policy ¶ 4(a)(i), even though Respondent does not reside or operate in the United States. 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 Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); 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 <discount-juicy-coutures.com>, <discount-juicy-couture.com>, <juicy-couture-online.com>, <juicy-couture-tracksuits.com>, and <juicy-coutureoutlets.com> domain names all contain Complainant’s JUICY COUTURE mark along with inconsequential alterations, such as the addition of hyphens, the addition of the letter “s,” the addition of the generic terms “discount,” “online,” or “outlets,” the addition of the descriptive term “tracksuits,” the deletion of the space between the terms, and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel determines that such additions fail to significantly distinguish the disputed domain names from Complainant’s mark. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)); see also 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 Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Thus, the Panel concludes that Respondent’s <discount-juicy-coutures.com>, <discount-juicy-couture.com>, <juicy-couture-online.com>, <juicy-couture-tracksuits.com>, and <juicy-coutureoutlets.com> domain names are confusingly similar to Complainant’s JUICY COUTURE mark for the purpose of Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged Respondent does not have rights or legitimate interests in the <discount-juicy-coutures.com>, <discount-juicy-couture.com>, <juicy-couture-online.com>, <juicy-couture-tracksuits.com>, and <juicy-coutureoutlets.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
The WHOIS information for the <discount-juicy-coutures.com>, <discount-juicy-couture.com>, <juicy-couture-online.com>, <juicy-couture-tracksuits.com>, and <juicy-coutureoutlets.com> domain names does not provide any evidence that Respondent is commonly known by the disputed domain names and Respondent has also not presented any evidence of this fact. Complainant, on the other hand, argues that Respondent is not known to the public by the disputed domain names and has not been licensed by Complainant to use the JUICY COUTURE mark. Therefore, the Panel finds that Respondent is not commonly known by the <discount-juicy-coutures.com>, <discount-juicy-couture.com>, <juicy-couture-online.com>, <juicy-couture-tracksuits.com>, and <juicy-coutureoutlets.com> domain names under Policy ¶ 4(c)(ii). See 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); see also 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).
Respondent’s <discount-juicy-coutures.com>, <discount-juicy-couture.com>, <juicy-couture-online.com>, <juicy-couture-tracksuits.com>, and <juicy-coutureoutlets.com> domain names resolve to websites that offer counterfeit versions of Complainant’s wide array of products for sale. The Panel determines that the use of confusingly similar disputed domain names to sell counterfeit products is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names pursuant to 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 Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the <discount-juicy-coutures.com>, <discount-juicy-couture.com>, <juicy-couture-online.com>, <juicy-couture-tracksuits.com>, and <juicy-coutureoutlets.com> domain names to sell counterfeit versions of Complainant’s products necessarily disrupts and competes with Complainant’s business as potential customers buy these counterfeit versions instead of Complainant’s actual products. In fact, Complainant asserts that its business has been disrupted by Respondent’s registration and use of the disputed domain names. Consequently, the Panel holds that Respondent’s registration and use of the <discount-juicy-coutures.com>, <discount-juicy-couture.com>, <juicy-couture-online.com>, <juicy-couture-tracksuits.com>, and <juicy-coutureoutlets.com> domain names was, and is, in bad faith under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Respondent’s use of confusingly similar disputed domain names to sell counterfeit products implies an attempt to profit by creating confusion as to Complainant’s affiliation with the disputed domain names and the counterfeit products. As the Panel presumes that Respondent has, in fact, actually profited from this created confusion, the Panel concludes that Respondent registered and uses the <discount-juicy-coutures.com>, <discount-juicy-couture.com>, <juicy-couture-online.com>, <juicy-couture-tracksuits.com>, and <juicy-coutureoutlets.com> domain names in bad faith under Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also 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).”).
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 <discount-juicy-coutures.com>, <discount-juicy-couture.com>, <juicy-couture-online.com>, <juicy-couture-tracksuits.com>, and <juicy-coutureoutlets.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: October 12, 2011
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