Jessica London, Inc., a subsidiary of Redcats USA, Inc. v. The Trustee for Australian Style IP Discretionary Trust c/o Domain
Claim Number: FA0911001294255
Complainant is Jessica
London, Inc., a subsidiary of Redcats
USA, Inc. (“Complainant”), represented by Stephen M. Werner of Redcats USA,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwjessicalondon.com>, registered with Bottle Domains, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 12, 2009; the National Arbitration Forum received a hard copy of the Complaint November 13, 2009.
On November 24, 2009, Bottle Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwjessicalondon.com> domain name is registered with Bottle Domains, Inc. and that Respondent is the current registrant of the name. Bottle Domains, Inc. verified that Respondent is bound by the Bottle Domains, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 25, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 15, 2009, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@wwwjessicalondon.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 22, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." 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:
1. The domain name that Respondent registered, <wwwjessicalondon.com>, is confusingly similar to Complainant’s JESSICA LONDON mark.
2. Respondent has no rights to or legitimate interests in the <wwwjessicalondon.com> domain name.
3. Respondent registered and used the <wwwjessicalondon.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Jessica London, Inc., provides online retail store services featuring women’s apparel, footwear, and accessories. Complainant has operated in this business since February of 1997. Complainant has used the JESSICA LONDON mark in connection with its apparel, footwear, and accessories. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its JESSICA LONDON mark (e.g., Reg. No. 2,210,503 issued December 15, 1998).
Respondent registered the <wwwjessicalondon.com> domain name February 20, 2008. The disputed domain name resolves to a website featuring hyperlinks to Complainant’s competitors in the women’s apparel, footwear, and accessories business and other unrelated third-parties.
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."
Given 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 will draw such inferences as the Panel 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.”).
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 registered its JESSICA LONDON mark with the
USPTO (e.g., Reg. No. 2,210,503 issued December 15, 1998). While Respondent resides in
Complainant claims that Respondent’s <wwwjessicalondon.com> domain name is confusingly similar to
Complainant’s JESSICA LONDON mark. The
disputed domain name contains Complainant’s mark and adds the prefix “www” and
the generic top-level domain (“gTLD”) “.com.”
The Panel finds that addition of the prefix and the gTLD fail to
adequately distinguish the disputed domain name from Complainant’s mark. See Neiman Marcus
Group, Inc. v. S1A, FA
128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing
similarity has been established because the prefix “www” does not sufficiently
differentiate the <wwwneimanmarcus.com> domain name from the
complainant's NEIMAN-MARCUS mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding
that the mere addition of the generic top-level domain “.com” is insufficient
to differentiate a disputed domain name from a mark). Therefore, the Panel finds that Respondent’s
disputed <wwwjessicalondon.com> domain name is confusingly similar to Complainant’s JESSICA LONDON mark.
The Panel finds Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <wwwjessicalondon.com> domain name. Where Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights to or legitimate interests pursuant to Policy ¶ 4(a)(ii) The Panel finds that Complainant made a sufficient prima facie case. Given Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel still examines the record to determine whether or not the evidence suggests that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”).
Complainant asserts that Respondent has never been authorized to use the JESSICA LONDON mark. Respondent failed to provide any evidence to show that it is commonly known by the <wwwjessicalondon.com> domain name and the record does not suggest that to be the case. The WHOIS information for the registrant of the disputed domain name is not similar to the disputed domain name. Furthermore, the Panel fails to find evidence in the record suggesting that Respondent is commonly known by the <wwwjessicalondon.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name and has not established rights or legitimate interests in the <wwwjessicalondon.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The <wwwjessicalondon.com> domain name resolves to a website containing hyperlinks to Complainant’s competitors in the women’s apparel, footwear, and accessories industry and unrelated third-parties. Respondent likely receives click through fees from the aforementioned hyperlinks. The Panel finds that Respondent’s use of the confusingly similar disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent uses the <wwwjessicalondon.com> domain name to resolve to a website featuring hyperlinks to third-parties, some of which are Complainant’s competitors in the women’s apparel, footwear, and accessories industry. Internet users interested in Complainant’s products may instead purchase women’s apparel, footwear, and accessories from Complainant’s competitors as a result of Respondent’s use of the disputed domain name, containing in its entirety, Complainant’s protected mark. The Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s apparel, footwear, and accessories business, which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Under such use, the Panel is permitted to make an inference
that Respondent receives click-through fees from displaying the aforementioned
hyperlinks. Internet users may become
confused as to Complainant’s sponsorship of and association with the disputed
domain name, resolving website, and featured hyperlinks. Respondent attempts to profit from this
confusion. The Panel finds that Respondent’s
use of the disputed domain name constitutes bad faith registration and use
under Policy ¶ 4(b)(iv). See
Therefore, the Panel finds that Complainant satisfied the elements of ICANN 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 <wwwjessicalondon.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 5, 2010.
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