Juicy Couture, Inc. v. Chen Hao / Hao Chen / Liuqing Wu / Lu Mingren
Claim Number: FA1101001367045
Complainant is Juicy Couture, Inc. (“Complainant”), represented by Holly Pranger of Pranger Law Group, California, USA. Respondent is Chen Hao / Hao Chen / Liuqing Wu / Lu Mingren (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <juicycoutureoutlet.cc>, <juicyacouture.com>, <juicycouturea.com>, <juicycoutureb.com>, <juicycouturec.com>, <juicycoutured.com>, <juicycouturef.com>, <juicycoutureg.com>, <juicycoutureh.com> and <juicyoutletonline.com>, registered with Xin Net Technology Corporation.
The domain names at issue are <juicy-coutureoutlet.org>, <juicycouturefactory.com>, <juicycouturei.com>, and <juicycoutureus.com>, <juicycouture-sale.org> registered with Bizcn.com, Inc.
The domain name at issue is <juicycouture-handbags.org> registered HiChina Zhicheng Technology Limited.
The domain name at issue is <juicycouture-outlet.org>, registered with Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 11, 2011; the National Arbitration Forum received payment on January 12, 2011. The Complaint was submitted in both Chinese and English.
On January 12, 2011, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <juicycoutureoutlet.cc>, <juicyacouture.com>, <juicycouturea.com>, <juicycoutureb.com>, <juicycouturec.com>, <juicycoutured.com>, <juicycouturef.com>, <juicycoutureg.com>, <juicycoutureh.com> and <juicyoutletonline.com> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 12, 2011, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <juicy-coutureoutlet.org>, <juicycouturefactory.com>, <juicycouturei.com>, <juicycoutureus.com>, and <juicycouture-sale.org> domain names are registered with Bizcn.com, and that Respondent is the current registrant of the names. Bizcn.com, has verified that Respondent is bound by the Bizcn.com, 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 January 12, 2011, HiChina Zhicheng Technology Limited confirmed by e-mail to the National Arbitration Forum that the <juicycouture-handbags.org> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 12, 2011, Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn confirmed by e-mail to the National Arbitration Forum that the <juicycouture-outlet.org> domain name is registered with Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn and that Respondent is the current registrant of the name. Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn has verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn 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 14, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 3, 2011 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@juicycoutureoutlet.cc, postmaster@juicycouture-handbags.org, postmaster@juicy-coutureoutlet.org, postmaster@juicyacouture.com, postmaster@juicycouturea.com, postmaster@juicycoutureb.com, postmaster@juicycouturec.com, postmaster@juicycoutured.com, postmaster@juicycouturef.com, postmaster@juicycouturefactory.com, postmaster@juicycoutureg.com, postmaster@juicycoutureh.com, postmaster@juicyoutletonline.com, postmaster@juicycouturei.com, postmaster@juicycoutureus.com, postmaster@juicycouture-sale.org, and postmaster@juicycouture-outlet.org. Also on January 14, 2011, the Chinese language Written Notice of the Complaint, notifying Respondent of the email 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 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 Complain and Commencement Notification and, absent a Response, determines that the remained of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <juicycoutureoutlet.cc>, <juicycouture-handbags.org>, <juicy-coutureoutlet.org>, <juicyacouture.com>, <juicycouturea.com>, <juicycoutureb.com>, <juicycouturec.com>, <juicycoutured.com>, <juicycouturef.com>, <juicycouturefactory.com>, <juicycoutureg.com>, <juicycoutureh.com>, <juicycouturei.com>, <juicycoutureus.com>, <juicycouture-sale.org> and <juicycouture-outlet.org> domain names are confusingly similar to Complainant’s JUICY COUTURE mark.
Respondent’s <juicyoutletonline.com> domain name is confusingly similar to Complainant’s JUICY mark.
2. Respondent does not have any rights or legitimate interests in the <juicycoutureoutlet.cc>, <juicycouture-handbags.org>, <juicy-coutureoutlet.org>, <juicyacouture.com>, <juicycouturea.com>, <juicycoutureb.com>, <juicycouturec.com>, <juicycoutured.com>, <juicycouturef.com>, <juicycouturefactory.com>, <juicycoutureg.com>, <juicycoutureh.com>, <juicyoutletonline.com>, <juicycouturei.com>, <juicycoutureus.com>, <juicycouture-sale.org> and <juicycouture-outlet.org> domain names.
3. Respondent registered and used the <juicycoutureoutlet.cc>, <juicycouture-handbags.org>, <juicy-coutureoutlet.org>, <juicyacouture.com>, <juicycouturea.com>, <juicycoutureb.com>, <juicycouturec.com>, <juicycoutured.com>, <juicycouturef.com>, <juicycouturefactory.com>, <juicycoutureg.com>, <juicycoutureh.com>, <juicyoutletonline.com>, <juicycouturei.com>, <juicycoutureus.com>, <juicycouture-sale.org> and <juicycouture-outlet.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Juicy Couture, Inc., operates an international clothing business selling everything from sunglasses and handbags to men’s and women’s apparel. Complainant registered its JUICY (e.g., Reg. No. 2,285,232 issued October 12, 1999) and JUICY COUTURE (e.g., Reg. No. 2,348,674 issued May 9, 2000) marks with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the <juicycoutureoutlet.cc>, <juicycouture-handbags.org>, <juicy-coutureoutlet.org>, <juicyacouture.com>, <juicycouturea.com>, <juicycoutureb.com>, <juicycouturec.com>, <juicycoutured.com>, <juicycouturef.com>, <juicycouturefactory.com>, <juicycoutureg.com>, <juicycoutureh.com>, <juicyoutletonline.com>, <juicycouturei.com>, <juicycoutureus.com>, <juicycouture-sale.org> and <juicycouture-outlet.org> domain names between May 22, 2010 and December 9, 2010.
The <juicycoutureoutlet.cc>, <juicycouture-handbags.org>, <juicy-coutureoutlet.org>, <juicyacouture.com>, <juicycoutureb.com>, <juicycouturef.com>, <juicycoutureh.com>, <juicycouturei.com>, <juicycoutureus.com>, <juicycouture-sale.org> and <juicycouture-outlet.org> domain names all resolve to websites that are being used to offer, sell, and promote counterfeit goods.
The <juicycouturec.com> domain name resolves to a website selling discount shoes. The <juicycoutured.com> website resolves to a website selling teacups. The <juicycouturefactory.com> domain name resolves to a website selling seaweed. The <juicycoutureg.com> domain name resolves to a website selling shipping products and the <juicyoutletonline.com> domain name resolves to a website selling miscellaneous items that are unrelated to Complainant’s business.
Lastly, the <juicycouturea.com> domain name resolves to a parked website.
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."
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.”).
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that all of the named Respondents are actually one Respondent. Of the disputed domain names, all but <juicycouture-sale.org> and <juicycouture-outlet.org> share the same email address. The domain names that share this email address are associated with the names “Chen Hao,” “Hao Chen,” and “Liuqing Wu.” Furthermore, of these domain names sharing the same email address, most also share the same telephone and fax number. Based on these similarities, Complainant alleges that “Chen Hao,” “Hao Chen,” and “Liuqing Wu” are the same entity. The remaining two domains, <juicycouture-sale.org> and <juicycouture-outlet.org>, which are registered by “Lu Mingren.” are associated with the other named Respondents because the disputed domain <juicyacouture.com> automatically redirects to <juicycouture-sale.org>. By redirecting <juicyacouture.com> automatically to <juicycouture-sale.org>, Complainant alleges that these named Respondents are a single entity.
Based on the foregoing, the Panel finds that Complainant has presented sufficient evidence to support a determination that the disputed domain names are controlled a single entity and thus chooses to proceed with the instant proceedings.
Complainant has submitted sufficient evidence to establish rights in its JUICY (e.g., Reg. No. 2,285,232 issued October 12, 1999) and JUICY COUTURE (e.g., Reg. No. 2,348,674 issued May 9, 2000) marks under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. The Panel finds that Complainant’s registration with the USPTO has established rights in the JUICY and JUICY COUTURE marks pursuant to Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant alleges that Respondent’s <juicyoutletonline.com> domain name is confusingly similar to its JUICY mark. Respondent used Complainant’s entire mark and merely added the generic terms “outlet” and “online” to the mark. Furthermore, Respondent added the generic top-level domain (“gTLD”) “.com” to Complainant’s JUICY mark. The Panel finds that adding generic terms, in addition to a gTLD fails to result in a unique domain name that is not confusingly similar to Complainant’s mark. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); 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).
Complainant contends that Respondent’s <juicycoutureoutlet.cc>, <juicycouture-handbags.org>, <juicy-coutureoutlet.org>, <juicyacouture.com>, <juicycouturea.com>, <juicycoutureb.com>, <juicycouturec.com>, <juicycoutured.com>, <juicycouturef.com>, <juicycouturefactory.com>, <juicycoutureg.com>, <juicycoutureh.com>, <juicycouturei.com>, <juicycoutureus.com>, <juicycouture-sale.org> and <juicycouture-outlet.org> domain names are confusingly similar to its JUICY COUTURE mark. Each of the foregoing domain names incorporates Complainant’s entire mark in addition to including the gTLDs “.org,” or “.com” to Complainant’s mark. Additionally, the <juicycoutureoutlet.cc> domain name contains the country code top-level domain (“ccTLD”) “.cc,” which Complainant alleges is insufficient in creating a unique domain name. Furthermore, Complainant alleges that Respondent removed the space between the terms of the JUICY COUTURE mark in addition to inserting letters, geographic terms such as “us”, hyphens, and generic terms such as “outlet”, “factory”, “handbags” and “sale” into the disputed domain names. The Panel finds that Respondent’s domain names do not fall outside the realm of confusing similarity to Complainant’s JUICY COUTURE mark and that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). 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.”); see also World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from the complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent.”); see also Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Am. Online, Inc. v. Oxford Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002) (“Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent’s domain name into separate and distinct marks for the purpose of a Policy ¶ 4(a)(i) analysis.”); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
According to Policy ¶ 4(a)(ii), Complainant must first demonstrate that Respondent has no rights or legitimate interests in the disputed domain names. Once Complainant has made this prima facie showing in support of its allegations, the burden shifts to Respondent to demonstrate it has rights or legitimate interests in the disputed domain names under the provisions set forth in Policy ¶ 4(c). Furthermore, the Panel may presume that Respondent lacks rights or legitimate interests if Respondent fails to submit a response. 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 Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Respondent failed to submit a response but the Panel chooses to examine the record to determine whether Respondent has any rights or legitimate interests in the disputed domain names pursuant to Policy 4(c).
Complainant alleges that Respondent is not commonly known by the disputed domain names and that Complainant has not authorized Respondent to use the JUICY or JUICY COUTURE marks. Respondent failed to respond to these allegations and the Panel can find no evidence in the record that would provide a solid foundation for determining that Respondent is commonly known by the disputed domain names. The WHOIS information lists the registrants of the disputed domain names as “Chen Hao,” “Hao Chen,” “Liuqing Wu,” and “Lu Mingren” which Complainant alleges are not similar to the disputed domain names. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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).
Complainant alleges that Respondent’s <juicycoutureoutlet.cc>, <juicycouture-handbags.org>, <juicy-coutureoutlet.org>, <juicyacouture.com>, <juicycoutureb.com>, <juicycouturef.com>, <juicycoutureh.com>, <juicycouturei.com>, <juicycoutureus.com>, <juicycouture-sale.org> and <juicycouture-outlet.org> domain names all resolve to websites that are being used to offer, sell, and promote counterfeit goods bearing Complainant’s JUICY COUTURE mark. The Panel finds that Respondent’s use of these domain names does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
Next, Complainant alleges that Respondent’s <juicycouturec.com>, <juicycoutured.com>, <juicycouturefactory.com>, <juicycoutureg.com> and <juicyoutletonline.com> domain names resolve to websites that use Complainant’s mark to sell products that are unrelated to Complainant’s business. The Panel determines that Respondent’s use of Complainant’s mark to sell unrelated goods is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
Complainant also argues that Respondent’s <juicycouturea.com> domain name resolves to a parked website. The parked website features hyperlinks in Chinese and the Complainant alleges that a parked website fails to qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel finds itself in agreement with Complainant’s allegation. See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)); see also Herbalife Int’l, Inc. v. Farmana, D2005-0765 (WIPO Oct. 3, 2005) (parking of the domain name for many years constitutes no more than a passive use or de facto activity, which activity can reinforce a finding of no legitimate interest).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent uses its <juicycoutureoutlet.cc>, <juicycouture-handbags.org>, <juicy-coutureoutlet.org>, <juicyacouture.com>, <juicycoutureb.com>, <juicycouturef.com>, <juicycoutureh.com>, <juicycouturei.com>, <juicycoutureus.com>, <juicycouture-sale.org> and <juicycouture-outlet.org> domain names to divert Internet users seeking Complainant’s products to Respondent’s websites. Respondent then offers counterfeit goods that compete with Complainant’s products. The Panel finds that Respondent’s disruptive actions are evidence of bad faith registration and use under Policy ¶ 4(b)(iii). 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).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant alleges that Respondent uses <juicycoutureoutlet.cc>, <juicycouture-handbags.org>, <juicy-coutureoutlet.org>, <juicyacouture.com>, <juicycoutureb.com>, <juicycouturef.com>, <juicycoutureh.com>, <juicycouturei.com>, <juicycoutureus.com>, <juicycouture-sale.org> and <juicycouture-outlet.org> domain names to resolve unsuspecting Internet users to websites offering to sell counterfeit versions of Complainant’s products. Complainant further alleges that Internet users may be confused as to the possibility of Complainant’s sponsorship of, or affiliation with the resolving websites and sale of counterfeit goods. The Panel finds Respondent’s use of domain names that are confusingly similar to Complainant’s JUICY COUTURE mark to sell counterfeit goods to be evidence of bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”).
Complainant alleges that Respondent uses the <juicycouturec.com>, <juicycoutured.com>, <juicycouturefactory.com>, <juicycoutureg.com> and <juicyoutletonline.com> domain names to resolve Internet users to websites that use Complainant’s marks to sell products that are unrelated to Complainant’s business. Complainant alleges that Internet users are likely to become confused as to Complainant’s sponsorship of, or affiliation with, the disputed domain names and resolving websites that sell products that are substantially unrelated to Complainant’s clothing business. The Panel finds such use of the disputed domain names to be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Complainant alleges that the <juicycouturea.com> domain name resolves to a parked website and that Respondent benefits commercially from the hyperlinks posted on the resolving website. The Panel infers that Respondent benefits commercially from the links which are posted in Chinese on the resolving website. This leads the Panel to find that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <juicycoutureoutlet.cc>, <juicycouture-handbags.org>, <juicy-coutureoutlet.org>, <juicyacouture.com>, <juicycouturea.com>, <juicycoutureb.com>, <juicycouturec.com>, <juicycoutured.com>, <juicycouturef.com>, <juicycouturefactory.com>, <juicycoutureg.com>, <juicycoutureh.com>, <juicyoutletonline.com>, <juicycouturei.com>, <juicycoutureus.com>, <juicycouture-sale.org> and <juicycouture-outlet.org> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: February 24, 2010
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