Sterling Jewelers Inc. v. JARED CRUZ
Claim Number: FA1412001596504
Complainant is Sterling Jewelers Inc. (“Complainant”), represented by John J. Cunniff of Hahn Loeser + Parks LLP, Ohio, USA. Respondent is JARED CRUZ (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youwenttojared.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.
Natalia Stetsenko as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 22, 2014; the National Arbitration Forum received payment on December 22, 2014.
On December 29, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <youwenttojared.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 December 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 20, 2015 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@youwenttojared.com. Also on December 31, 2014, 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 January 19, 2015.
On January 26, 2015 an Additional Submission was received from Complainant, which is considered timely under the Supplemental Rule 7.
On January 22, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Natalia Stetsenko 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
4(a)(i). Complainant has registered HE WENT TO JARED with several trademark authorities including the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,321,229, registered Apr. 16, 2013). Complainant has also registered JARED THE GALLERIA OF JEWELRY with the USPTO (Reg. No. 1,872,975, registered Jan. 10, 1995). Complainant uses these marks to identify its jewelry and jewelry store services.
The JARED THE GALLERIA OF JEWELRY mark, to which the mark HE WENT TO JARED refers, has been in use since at least 1993.
The domain name youwenttojared.com is identical or confusingly similar to the Complainant’s trademarks or service mark HE WENT TO JARED.
Complainant is the owner of the domain name <jared.com>, which hosts a website or forwards to websites relating to Sterling’s jewelry business.
The domain name <hewenttojared.com> is also under the control of Complainant, and resolves to the <jared.com> domain.
The domain name <youwenttojared.com> is confusingly similar to Complainant’s HE WENT TO JARED mark as the only difference between these signs is in the substitution of the personal pronoun “HE” by the personal pronoun “YOU”.
4(a)(ii). Respondent has no rights or legitimate interests in respect of the domain name.
There is no evidence to suggest Respondent is commonly known by the “youwenttojared” name. While Respondent’s first name appears to be “Jared,” this name is distinct from “You Went to Jared.”
The domain name <youwenttojared.com> resolves to a page containing an advertising portion that presumably has a pay-per-click function. Complainant contends that Respondent's use in connection with this website takes advantage of Complainant's well-known mark by creating Internet user confusion as to Complainant's sponsorship or association with the website. Respectively, Respondent is not making a legitimate non-commercial or fair use of the domain name in dispute.
4(a)(iii). Respondent's adoption and use of the <youwenttojared.com> domain name is in bad faith.
The Respondent's only use of the domain name in question as of 11December 2014 appears to provide a webpage indicating that the domain was recently registered and including an advertising function.
The Respondent is using the Complainant's marks in order to attract internet traffic to its website and thereby generate business by utilizing Complainant’s mark. By utilizing the domain name in this manner, the Respondent has created a likelihood of confusion with Sterling’s marks regarding the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Respondent had at least constructive knowledge of Complainant’s mark at the time the disputed domain name was registered.
B. Respondent
4(a)(i). The <youwenttojared.com> domain name is not confusingly similar to the HE WENT TO JARED mark. Respondent’s usage of “you” instead of “he” is distinctive. Prior panels have found no confusing similarity where the disputed domain name does not include the trademark in its entirety.
4(a)(ii). Complainant has failed to substantiate its allegations that Respondent is without rights or legitimate interests. In fact, Respondent does have rights or legitimate interests in the subject domain name as Respondent has been known as “Jared” and “Jared Cruz,” Respondent’s legal name, since birth on August 14, 1971. Further, Respondent has been using the “youwenttojared” moniker as his “gamer tag,” which serves to identify Respondent’s account in gaming circles. Respondent has spent the last eight years cultivating his reputation as a competitive player in these gaming forums, participating in competitive leagues. Respondent plans to use the disputed domain name for a web blog with video gaming content. Such planned use, wholly unrelated to Complainant’s jewelry offerings, establishes Respondent’s legitimate interests in the subject domain name.
4(a)(iii). Respondent has not engaged in bad faith. Complainant has failed to prove that Respondent is using the disputed domain name in bad faith; notably, Complainant has failed to provide any evidence that Respondent is using the disputed domain name to attract Internet traffic and thereby generate business by using Complainant’s mark.
C. Additional Submissions
In the Additional Submission, Complainant addresses the arguments and prior decisions that purportedly support Respondent’s contentions.
According to Complainant, the cited decisions are entirely distinguishable from the present Complaint.
Respondent alleges that the Complaint fails because the domain name is not identical to Complainant’s trademark, which is contrary to both the requirements of UDRP Rules and Policy and Complainant’s previous statements, particularly that the signs are confusingly similar, rather than identical.
Although Respondent maintains that the “he” portion of the mark is the “distinguishing element” of the mark, Respondent fails to provide any demonstration that the “went to Jared” portion of the mark is somehow descriptive in any way, such that the “he” portion of the mark is dominant.
Complainant further points out that Respondent provides no decisions or any other precedent that would support his contention that being known under the “youwenttijared” game tag (which is rather a limited use) is sufficient to establish that he has “rights or legitimate interests” in “youwenttojared” under UDRP Policy 4(a)(ii).
Although Respondent provides a purported transcript of a “chat’ with “Xbox Customer Support” that purports to show that Respondent used this “gamer tag” since July 3, 2008, this document is not independently verifiable. All this document purports to show is that Respondent registered this “moniker” in 2008., which does not demonstrate that the moniker was actually used, much less that it was used sufficiently so that Respondent can be considered to be known under the “youwenttojared” name.
As established based on evidences provided in Annex A to the Complaint, Complainant is the holder of the following trademark registrations for services worldwide, namely:
HE WENT TOJARED, United States Registration No.4,321,229
HE WENT TO JARED, Canadian Application No.1,621,167
HE WENT TO JARED, OHIM (European Community) Application No.11714714 JARED THE GALLERIA OF JEWELRY, Canadian Registration No. 727,810
JARED THE GALLERIA OF JEWELRY, United Kingdom Registration No. 2592062
JARED THE GALLERIA OF JEWELRY, Russian Registration No.496133 JARED THE GALLERIA OF JEWELRY, Korean Registration No.41-247421 JARED THE GALLERIA OF JEWELRY, Mexican Registration No.1288976 JARED THE GALLERIA OF JEWELRY, Japan Registration No.5475248 JARED THE GALLERIA OF JEWELRY, OHIM (European Community) Registration No.10197424
JARED THE GALLERIA OF JEWELRY, Israeli Registration No. 239988 JARED THE GALLERIA OF JEWELRY, Malaysian Registration No. 2011015032 JARED THE GALLERIA OF JEWELRY, United States Registration No. 1,872,975
Based on the records of the case and pursuant to the provisions of the Lanham Act, the Panel finds that the Complainant has benefited from exclusive rights to its JARED THE GALLERIA OF JEWELRY mark since December 29, 1993 (the application filing date) (US reg. no. 1,872,972, registered Jan. 10, 1995).
The Panel also determines that Complainant has rights in the trademark HE WENT TO JARED, and has benefited from exclusive rights in this mark since October 5, 2012 (US reg. no. 4,321,229, registered Apr. 16, 2013).
The Panel thus finds that Complainant’s USPTO registrations for the HE WENT TO JARED and the JARED THE GALLERIA OF JEWELRY marks sufficiently demonstrate Complainant’s rights in the marks pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The disputed domain <youwenttojared> is not related to any website related to Respondent, but resolves to a parked page displaying links which are not related to Complainant, including “Best Loans for Bad Credit,” “Commercial Ice Machine,” and “WhoisGuard Privacy Protection Service”, etc.
Respondent’s <youwenttojared> domain name is confusingly similar to Complainant’s mark.
Respondent has not demonstrated rights or legitimate interests in the disputed domain name.
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 argues that the disputed domain name <youwenttojared.com> is confusingly similar to its HE WENT TO JARED mark.
In fact, the difference between the cited trademark and the disputed domain name lies in the omission of spacing and addition of the generic top-level domain (“gTLD”), as well as in substitution of the personal pronoun “he” by the personal pronoun “you”.
Previous Panels have found that since spacing is not acceptable in domain names and all of them require some form of TLD, omission of spacing and addition of gTLD to the trademark does not affect the confusing similarity analysis. See 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.”).
Regarding the substitution of “you” for “he,” the Panel notes that the portion “WENT TO JARED” is the dominant distinctive part of the mark. The words “HE” and “YOU” are the same parts of the speech (personal pronouns), which adds to confusing similarity. Thus, the disputed domain name <youwenttojared.com> retains the dominant portion of the mark despite the singular pronoun modification, and therefore is confusingly similar to the HE WENT TO JARED mark pursuant to Policy ¶ 4(a)(i). See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that there is no evidence to suggest Respondent is commonly known by the “youwenttojared” name.
If, for example, it had been for another <jared.gTLD> or <jaredcruz.gTLD> domain, it would have been a pure dispute involving conflict of two lawful interests. However, the sign <youwenttojared>, which corresponds to a full sentence “You went to Jared”, is clearly distinct from just the first name “Jared” as seen in the WHOIS.
The Panel notes that Respondent purports to have used the moniker “youwenttojared” as his gamer tag to identify his online gaming activities since July 3, 2008. See Resp., at Attached Exs. 1-2. However, the provided evidence should be disregarded since there is no way it can be verified by the Panel.
At the same time, even if this document had been accepted as a due evidence, it would have been of no help in proving rights and legitimate interests for Respondent, since the scope of such use is rather limited to form grounds allowing to suppose that someone might become commonly known under this name.
In a comparable case, the panel found that the respondent’s evidence that he used the name “Sting” as a login name at a gaming site was “at the weaker end of the spectrum of such evidence” and thus did “not establish that he has been ‘commonly known’ by the domain name as contemplated by” the Policy.
The Panel thus determines that Respondent’s use of the “youwenttojared” name as a gamer tag for his Xbox account does not sufficiently demonstrate Respondent is commonly known by the disputed <youwenttojared.com> name as contemplated by Policy ¶ 4(c)(ii).
The Panel further notes that the <youwenttojared.com> domain name domain name resolves to a parked page displaying links unrelated to Complainant, including “Best Loans for Bad Credit,” “Commercial Ice Machine,” and “WhoisGuard Privacy Protection Service.” See Compl., at Attached Ex. C. Such type of use of the disputed domain name shows that Respondent is not using it for a bona fide offering of goods or services under Policy ¶ 4(c)(i), or for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”).
Since Respondent has not proven to the contrary, the Panel finds that he lacks rights and legitimate interests in the disputed domain name within the meaning of Policy ¶ 4(a)(ii).
With reference to the factors listed in Policy ¶ 4(b), Complainant points out that Respondent is using the disputed domain name to attract Internet traffic to Respondent’s own website and thereby generate business (i.e. click-through revenues) by utilizing Complainant’s mark.
The <youwenttojared.com> domain name domain name resolves to a parked page displaying links, which presumably generate pay-per-click fees.
Prior panels have found evidence of bad faith pursuant to Policy ¶ 4(b)(iv) where the confusingly similar domain name resolves to promotes links from which the respondent likely profits. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds that the records include evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Further, the records show that Respondent had at least constructive knowledge of Complainant’s mark at the time the disputed domain name was registered. Thus, it is possible to infer that Respondent registered the disputed domain name based on the fame of the mark and/or the apparent allusion to Complainant’s mark and the commercial.
Although previous panels have declined to find evidence of bad faith based solely on constructive knowledge, panels have found Policy ¶ 4(a)(iii) bad faith where the circumstances support an inference of actual knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under 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 <youwenttojared.com> domain name be TRANSFERRED from Respondent to Complainant.
Natalia Stetsenko, Panelist
Dated: February 5, 2015
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