Gangnam Inc. v. park jiang d/b/a promdress industry
Claim Number: FA1308001516327
Complainant is Gangnam Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington D.C., USA. Respondent is park jiang dba promdress industry (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jjshousee.com>, registered with GODADDY.COM, LLC.
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 August 23, 2013; the National Arbitration Forum received payment on August 23, 2013.
On August 26, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <jjshousee.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 August 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 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@jjshousee.com. Also on August 26, 2013, 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 19, 2013, 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 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
1. Respondent’s <jjshousee.com> domain name is confusingly similar to Complainant’s JJ’S HOUSE mark.
2. Respondent does not have any rights or legitimate interests in the <jjshousee.com> domain name.
3. Respondent registered and uses the <jjshousee.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns its JJ’S HOUSE mark through its trademark registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,134,340, registered February 14, 2012). Complainant has used the mark since 2010 to promote and sell bridal and other types of clothing and accessories.
Respondent registered <jjshousee.com> on May 5, 2013, and uses it in connection with a commercial website to sell bridal clothing and accessories.
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.”).
The Panel finds that Complainant’s USPTO registration is sufficient to establish Complainant’s rights in the JJ’S HOUSE mark pursuant to Policy ¶ 4(a)(i). The Panel notes that Respondent appears to reside in China. Previous panels have determined that a USPTO registration is sufficient to establish the complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i), even if the respondent resides outside of the United States. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Respondent’s <jjshousee.com> domain name is confusingly similar to Complainant’s JJ’S HOUSE mark, as it is a common misspelling of the mark. The domain name differs from the mark in that it eliminates the apostrophe and spaces in Complainant’s mark, adds a second “e” to the end of Complainant’s mark, and adds the generic top-level domain (“gTLD”) “.com”. Previous panels have determined that such alterations are insufficient to differentiate the domain name from the incorporated mark. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel finds that the <jjshousee.com> domain name is confusingly similar to Complainant’s JJ’S HOUSE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 argues that Respondent has no rights or legitimate interests in the disputed domain name and is not licensed or otherwise authorized to use Complainant’s mark. Respondent is is shown as “park jiang d/b/a promdress industry” in the WHOIS record. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant asserts that the disputed domain name resolves to a website that uses photographs from Complainant’s website, including Complainant’s watermark, to sell products that compete with Complainant in the bridal industry. The Panel notes a screenshot of the resolving webpage from the disputed domain name in Exhibit E, which shows that the disputed website attempts to sell prom and weddings dresses and related attire using Complainant’s watermark. Previous panels have refused to find a bona fide offering of goods or services, or a noncommercial or fair use where the respondent is using the disputed domain name in connection with the complainant’s mark to sell products that compete with the complainant. In Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010), the panel wrote, “The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” The Panel finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services, or a noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s bad faith is demonstrated by its pattern of cybersquatting. Complainant asserts that Respondent owns the domain name <MagicMoentsProm.com>, which takes advantage of a typographical error of <MagicMomentsProm.com>. However, Complainant has not included relevant UDRP decisions implicating Respondent’s use of the <MagicMoentsProm.com> domain name. Therefore, the Panel declines to find evidence of bad faith pursuant to Policy ¶ 4(b)(ii).
Respondent is using the domain name with a commercial website that competes directly with Complainant to sell bridal and other clothing and accessories. In similar circumstances where the respondent uses the disputed domain name to sell goods that compete with Complainant, previous panels have found evidence of bad faith. 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).”). Thus, the Panel finds evidence of Respondnet’s bad faith pursuant to Policy ¶ 4(b)(iii).
Respondent adds to the likelihood of confusion regarding Complainant’s sponsorship of the disputed domain name by using, without authorization, watermarked photographs from Complainant’s website on Respondent’s resolving webpage. Previous panels have found evidence of bad faith in similar circumstances. See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services). The Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent uses photographs from Complainant’s website to confuse users as to the source of the disputed domain name, and commercially benefits from the confusion.
Respondent’s <jjshousee.com> domain name is an obvious typographical error of Complainant’s JJ’S HOUSE mark and is further evidence of Respondent’s bad faith. Panels have consistently held that typosquatting is meant to take advantage of typographical errors, and is thus motivated by bad faith. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel thus finds that Respondent’s typosquatting is bad faith under Policy ¶ 4(a)(iii).
Complainant asserts that Respondent had actual knowledge of Complainant’s rights in the mark as the domain name <jjshousee.com> is a common misspelling of Complainant’s mark, and Respondent is using watermarked photographs of Complainant’s products on the infringing website. The Panel agrees and finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See 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 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 <jjshousee.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 25, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page