J Brand, Inc. v. youchao wang / wang you chao
Claim Number: FA1301001480894
Complainant is J Brand, Inc. (“Complainant”), represented by I. Morley Drucker of FULWIDER PATTON LLP, California, USA. Respondent is youchao wang / wang you chao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jbrandstock.com>, registered with CHENGDU WEST DIMENSION DIGITAL TECHNOLOGY CO., LTD.
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 January 17, 2013; the National Arbitration Forum received payment on January 17, 2013. The Complaint was submitted in both Chinese and English.
On January 22, 2013, CHENGDU WEST DIMENSION DIGITAL TECHNOLOGY CO., LTD. confirmed by e-mail to the National Arbitration Forum that the <jbrandstock.com> domain name is registered with CHENGDU WEST DIMENSION DIGITAL TECHNOLOGY CO., LTD. and that Respondent is the current registrant of the name. CHENGDU WEST DIMENSION DIGITAL TECHNOLOGY CO., LTD. has verified that Respondent is bound by the CHENGDU WEST DIMENSION DIGITAL TECHNOLOGY CO., LTD. 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 January 29, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 19, 2013 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@jbrandstock.com. Also on January 29, 2013, the Chinese language 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 February 25, 2013, 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.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <jbrandstock.com> domain name, the domain name at issue, is confusingly similar to Complainant’s J BRAND mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, J Brand Inc., is a world famous manufacturer of high quality clothing for men and women, particularly pants and jeans, which are sold through the world under its trademark J BRAND. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the J BRAND mark (Reg. No. 3,250,947, registered June 12, 2007), and is also the owner of trademark registrations with China’s State Administration for Industry and Commerce (“SAIC”) for the J BRAND mark (Reg. No. 1,252,977, registered March 1, 2007). Respondent’s <jbrandstock.com> domain name is confusingly similar to Complainant’s J BRAND mark as it incorporates, in its entirety, Complainant’s J BRAND mark and adds the descriptive term “stock.” Respondent’s addition of the generic top-level domain (“gTLD”) “.com” to Complainant’s names and marks does not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).
The WHOIS record for the disputed domain records “Wang You Chao” as the registrant. Respondent operates an online retail store prominently displaying Complainant’s J BRAND mark. Respondent’s disputed domain name resolves to a commercial website selling Complainant’s products without its authorization, from which sales Respondent presumably profits. Respondent clearly had actual knowledge of Complainant’s rights in the J BRAND mark. Respondent registered the <jbrandstock.com> domain name on August 22, 2012.
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, J Brand Inc., is a world famous manufacturer of high quality clothing for men and women, particularly pants and jeans, which are sold through the world under its trademark J BRAND. Complainant is well and widely-known throughout the world as a maker of fine clothing items. Complainant is the owner of trademark registrations with the USPTO for the J BRAND mark (Reg. No. 3,250,947, registered June 12, 2007) and is the owner of trademark registrations with China’s SAIC for the J BRAND mark (Reg. No. 1,252,977, registered March 1, 2007). Complainant also owns other trademark registrations with various countries throughout the world for the J BRAND. Registrations with the USPTO and SAIC sufficient establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”). Thus, Complainant has sufficiently demonstrated its rights in the J BRAND mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <jbrandstock.com> domain name is confusingly similar to Complainant’s J BRAND mark, as it incorporates, in its entirety, Complainant’s J BRAND mark and adds the descriptive term “stock.” The descriptive term “stock” refers to “inventory,” so the domain name at issue is reasonably interpreted as “J BRAND inventory.” The addition of a descriptive term to a mark is insufficient to distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Additionally, Respondent removes the space between J and BRAND in Complainant’s mark. Respondent’s addition of the gTLD “.com” to Complainant’s mark does not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). In Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), the panel found that the disputed domain name was confusingly similar to the complainant’s mark as spaces are impermissible in domain names and a gTLD such as ‘.com’ or ‘.net’ is required in domain names. Respondent’s removal of a space and attaching “.com” to the domain is inconsequential to a Policy ¶ 4(a)(i) analysis. Accordingly, Respondent’s <jbrandstock.com> domain name is confusingly similar to Complainant’s J BRAND 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.”).
The WHOIS record for the disputed domain records “wang you chao” as the registrant. Complainant contends that it has no relationship with Respondent, nor has Complainant given permission or authorized Respondent to register and use the contested domain name. The Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Thus, Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Respondent operates an online retail store prominently displaying Complainant’s J BRAND mark. The goods being offered on Respondent’s website are identical to the goods that are being offered by Complainant. The opening screens of Respondent’s website display the J BRAND trademark and the clothing designs of “J Brand, Inc.” in the most prominent manner—by copying photographs of J BRAND jeans and shorts. In view of exactly the same goods being offered, the public is highly likely to believe that Respondent’s website is owned, sponsored, operated by, authorized by, or otherwise connected with Complainant. Accordingly, Respondent’s use of the <jbrandstock.com> domain name to operate a commercial store that attempts to pass itself off as Complainant is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s disputed domain name resolves to a commercial website selling Complainant’s products without its authorization, from which sales Respondent presumably profits. Respondent’s website creates confusion among Internet users as to the likelihood of Complainant’s affiliation with the disputed domain name. Accordingly, Respondent has registered and is using the disputed domain name to commercially benefit through sales of clothing. Therefore, the Panel finds that Respondent is using the disputed domain name to intentionally attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s marks as to the source or sponsorship of the website which evidences bad faith under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
Respondent clearly had actual knowledge of Complainant’s rights in the J BRAND mark, as evidenced by Respondent’s explicit copying of Complainant’s images on the resolving website. Thus, the Panel holds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's 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 <jbrandstock.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 28, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page