J Brand, Inc. v. REDACTED
Claim Number: FA1207001454925
Complainant is J Brand, Inc. (“Complainant”), represented by I. Morley Drucker of Fulwider Patton LLP, California, USA. Respondent is REDACTED (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jbrandjeansoutlets.info>, registered with GoDaddy.com, LLC.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 24, 2012; the National Arbitration Forum received payment on July 24, 2012.
On July 24, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <jbrandjeansoutlets.info> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 2012 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@jbrandjeansoutlets.info. Also on July 25, 2012, 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 14, 2012.
Complainant filed an Additional Submission on August 21, 2012, which was considered by the Panel.
On August 22, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Respondent’s <jbrandjeansoutlets.info> domain name, the domain name at issue, is confusingly similar to Complainant’s J BRAND mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent filed an email Response in this and five other essentially identical proceedings stating that his identity had been stolen and misused to register the domain name at issue and five other domains infringing the J BRAND mark. Respondent asserts no defenses under the Policy and does not oppose the transfer of the domain name at issue to the Complainant. Accordingly, the Panel elects to decide this case as if it were a default proceeding.
Complainant began operating in 2004 under the J BRAND mark, which Complainant uses in connection with clothing in countries throughout the world.
Complainant holds trademark registrations with trademark authorities around the world, including with the United States Patent and Trademark Office (“USPTO”), European Union’s Office for Harmonization of the Internal Market (“OHIM”), and Canadian Intellectual Property Office (“CIPO”) for the J BRAND mark as follows:
i. USPTO (Reg. No. 3,250,947 registered June 12, 2007);
ii. OHIM (Reg. No. 4,994,885 registered April 11, 2007); and
iii. CIPO (Reg. No. TMA736,886 registered March 25, 2009).
Respondent registered the <jbrandjeansoutlets.info> domain name on June 15, 2012 and Respondent’s <jbrandjeansoutlets.info> domain name is confusingly similar to Complainant’s J BRAND mark. Respondent is not commonly known by the <jbrandjeansoutlets.info> domain name, is not related to Complainant and is not permitted or authorized to use Complainant’s J BRAND mark. The WHOIS information identifies the registrant of the disputed domain name as “REDACTED,” which is not similar to the <jbrandjeansoutlets.info> domain name. Respondent does not make an active use of <jbrandjeansoutlets.info>, and this is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Respondent’s failure to make an active use of the <jbrandjeansoutlets.info> domain name also demonstrates bad faith registration and use. Respondent had actual knowledge of Complainant’s J BRAND mark because of Complainant’s widespread use of Complainant’s J BRAND mark in connection with Complainant’s jeans. Respondent asserts that he did not register the disputed domain name, and this is a case of mistaken identity or stolen identity.
Preliminary Issue: Redaction of Respondent’s Identity
Respondent contends that it has been the victim of identity theft. Respondent argues that it did not register the disputed domain name and that the home address in the WHOIS information is Respondent’s address, but the e-mail cited for Respondent is not correct. Accordingly, Respondent contends that this is a case of mistaken identity or identity theft. The Panel finds that Respondent is a victim of identity theft and elects to redact Respondent’s personal information from the decision to prevent the further victimization of Respondent. In Wells Fargo & Co. v. Doe, FA 362108 (Nat. Arb. Forum Dec. 30, 2004) and Wells Fargo & Co. v. Doe, FA 453727 (Nat. Arb. Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents. See also Nat’l Westminster Bank plc v. [Redacted], FA 1028337 (Nat. Arb. Forum July 25, 2007). According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” Consequently, the Panel determines that the circumstances of the present case, including the claim of identity theft by Respondent, warrant the redaction of Respondent’s personal information from the Panel’s decision.
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.
Complainant began operating in 2004 under the J BRAND mark, which Complainant uses in connection with clothing in countries throughout the world, including jeans. Complainant holds trademark registrations with trademark authorities around the world, including with the USPTO, OHIM, and CIPO:
USPTO (Reg. No. 3,250,947 registered June 12, 2007);
OHIM (Reg. No. 4,994,885 registered April 11, 2007); and
CIPO (Reg. No. TMA736,886 registered March 25, 2009).
Based on Complainant’s trademark registrations, the Panel finds that Complainant owns rights in the J BRAND mark for the purposes of Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Respondent’s <jbrandjeansoutlets.info> domain name is confusingly similar to Complainant’s J BRAND mark. The disputed domain name only differs from Complainant’s mark by the removal of a space, the addition of the descriptive terms “jeans” and “mall,” and the addition of the generic top-level domain (“gTLD”) “.com.” These alterations to Complainant’s mark do not prevent a finding of confusing similarity. Accordingly, Respondent’s <jbrandjeansoutlets.info> domain name is confusingly similar to Complainant’s J BRAND mark under Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends, with no contradiction by Respondent, that Respondent is not related to Complainant and is not permitted or authorized to use Complainant’s J BRAND mark. The WHOIS information identifies the registrant of the disputed domain name as [REDACTED] and Complainant argues that the WHOIS information is not similar to the <jbrandjeansoutlets.info> domain name. Respondent does not assert that it is known by the disputed domain name. Accordingly, Respondent is not commonly known by the <jbrandjeansoutlets.info> domain name according to 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).
Complainant alleges that Respondent is making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <jbrandjeansoutlets.info> domain name because it does not make an active use of the <jbrandjeansoutlets.info> domain name. The Panel agrees with Complainant and finds that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <jbrandjeansoutlets.info> domain name. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
The enumerated Policy ¶ 4(b) factors are not exhaustive, and thus 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 failure to make an active use of the <jbrandjeansoutlets.info> domain name demonstrates bad faith registration and use. The Panel finds Respondent guilty of Policy ¶ 4(a)(iii) bad faith registration and use. See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
Respondent had actual knowledge of Complainant’s J BRAND mark because of Complainant’s widespread use of Complainant’s J BRAND mark in connection with Complainant’s jeans. Accordingly, the Panel finds that actual knowledge is adequate evidence of bad faith registration under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jbrandjeansoutlets.info> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 29, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page