St. John Knits, Inc. v. Wang Songxu
Claim Number: FA1209001461221
Complainant is St. John Knits, Inc. (“Complainant”), represented by Kristine Ejecito, California, USA. Respondent is wang songxu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stjohncn.com>, 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 September 4, 2012; the National Arbitration Forum received payment on September 5, 2012.
On September 6, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <stjohncn.com> 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 September 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 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@stjohncn.com. Also on September 7, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 2, 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. 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Respondent’s <stjohncn.com> domain name, the domain name at issue, is confusingly similar to Complainant’s ST. JOHN 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 failed to submit a Response in this proceeding.
Complainant established its brand, St. John Knits, Inc. (“St. Johns”) in 1962. Complainant manufactures and distributes women’s clothing and accessories to countries around the world to sell in boutiques and department stores under the ST. JOHN trademark. Complainant owns trademark registrations for its ST. JOHNS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,124,122 registered October 26, 1982), as well as with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 3,230,951 registered January 21, 2004). See Annexes B-1 and D-1. Complainant’s products include ladies’ apparel such as knitted dresses, pantsuits, blouses, and swimwear, as well as purses, shoulder bags, accessories, cosmetics, and fragrances.
Respondent registered the <stjohncn.com> domain name on April 20, 2012. The <stjohncn.com> domain name is confusingly similar to Complainant’s ST. JOHN trademark and Respondent is not commonly known by the disputed domain name. Respondent does not have any legitimate rights or interests in the disputed domain name. Respondent uses the ST. JOHN mark to attract Internet users to its own website in order to make a commercial gain.
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.
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.”).
Complainant owns trademark rights in the ST. JOHN mark through its registrations with the USPTO (e.g., Reg. No. 1,124,122 registered October 26, 1982) and with the SAIC (e.g., Reg. No. 3,230,951 registered January 21, 2004). In Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007), the panel concluded that the complainant’s rights in the mark were established by registration of the mark with the USPTO. The panel in Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010), stated that the complainant’s trademark registration with the SAIC sufficiently demonstrated the complainant’s rights in the mark. Complainant has secured trademark rights in its ST. JOHN mark pursuant to Policy ¶ 4(a)(i) through its trademark registrations with the USPTO as well as the SAIC.
The <stjohncn.com> domain name is confusingly similar to Complainant’s ST. JOHN mark despite the addition of the country code “cn.” The <stjohncn.com> domain name includes the generic top-level domain (“gTLD”) “.com,” and removes the period as well as the space between the words of the mark. The <stjohncn.com> domain name is confusingly similar to Complainant’s mark for the purposes of Policy ¶ 4(a)(i) by the additions of a country code abbreviation and a gTLD and removal of the punctuation and the space in the mark. See 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 Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”); see also Dawson v. Doctor, FA 521036 (Nat. Arb. Forum Sept. 1, 2005) (finding that the <drgem.com> domain name was identical to Complainant’s DR. GEM mark because “…the domain name fully incorporates the mark and merely removes the period after the abbreviation “DR.”); 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.”).
Respondent is not commonly known by the <stjohncn.com> domain name and that Respondent is not affiliated with or sponsored by Complainant. The WHOIS information associated with the <stjohncn.com> domain name, identifies “wang songxu” as the registrant. The panel in St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), held that the WHOIS information and other information in the record did not demonstrate that the respondent was commonly known by the disputed domain name and therefore the respondent failed to demonstrate that it had rights or legitimate interests in the domain name. Because the WHOIS information does not match the disputed domain name, Respondent is not commonly known by the <stjohncn.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant claims that Respondent lacks rights or legitimate interests in the <stjohncn.com> domain name because Respondent fails to make a legitimate noncommercial or fair use of the domain name. Complainant asserts that Respondent improperly diverts consumers to its website by taking advantage of the goodwill associated with Complainant’s mark. However, Complainant does not provide evidence of Respondent’s use of the disputed domain name and does not describe Respondent’s use of the domain name in its Complaint. Based upon the evidence put forward in the Complaint, there is no way for the Panel to determine whether Respondent’s use of the <stjohncn.com> domain name capitalizes on the reputation associated with Complainant’s ST. JOHN mark. The Panel has no basis to conclude that Respondent does not use the disputed domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). The Panel finds that Complainant’s lack of evidence and arguments relating to Respondent’s use of the disputed domain name are sufficient grounds for the Panel to find that Complainant has not submitted a prima facie case in support of its allegations. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).
The Panel finds that Policy ¶ 4(a)(ii) has not been established.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED WITHOUT PREJUDICE.
Accordingly, it is Ordered that the <stjohncn.com> domain name remain with Respondent.
James A. Carmody, Esq., Panelist
Dated: October 5, 2012
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