J Brand, Inc. v. Alexander K. Dobrenkov
Claim Number: FA1206001449514
Complainant is J Brand, Inc. (“Complainant”), represented by I. Morley Drucker of Fulwilder Patton LLP, California, USA. Respondent is Alexander K. Dobrenkov (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jbrandjeans.biz>, registered with Dynadot LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 19, 2012; the National Arbitration Forum received payment on June 19, 2012.
On June 20, 2012, Dynadot LLC confirmed by e-mail to the National Arbitration Forum that the <jbrandjeans.biz> domain name is registered with Dynadot LLC and that Respondent is the current registrant of the name. Dynadot LLC has verified that Respondent is bound by the Dynadot 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 June 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 2012 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@jbrandjeans.biz. Also on June 22, 2012, 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 July 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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’s Contentions
a) Complainant has rights in the J BRAND mark which it uses in connection with the manufacture of men’s and women’s clothing, including jeans;
b) Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the J BRAND mark (Reg. No. 3,250,947, registered June 12, 2007);
c) The J BRAND mark has attained vast publicity and fame in the United States and elsewhere. Complainant spent $35M in advertising for J BRAND products in 2011 alone;
d) The <jbrandjeans.biz> domain name is confusingly similar to the J BRAND mark;
e) Respondent is not commonly known by the <jbrandjeans.biz> domain name;
f) The <jbrandjeans.biz> domain name resolves to a website which displays links to Complainant’s competitors;
g) Respondent registered and uses the <jbrandjeans.biz> domain name for a monetary benefit by diverting Internet users to the disputed domain name;
h) Respondent registered and began using the <jbrandjeans.biz> domain name with knowledge of Complainant’s rights in the J BRAND mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes that Respondent registered the <jbrandjeans.biz> domain name on March 20, 2011.
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 contends that it has rights in the J BRAND mark. Complainant states that it uses its mark in connection with the manufacture of men’s and women’s clothing, particularly jeans, and that it is the owner of the USPTO registration for the J BRAND mark (Reg. No. 3,250,947 registered June 12, 2007). Registration of a mark through the USPTO, regardless of whether the respondent resides within the United States, is evidence of the complainant having rights in the mark. See Intel Corp. v. Macar, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has rights in the J BRAND mark pursuant to Policy ¶ 4(a)(i).
Complainant further alleges that Respondent’s <jbrandjeans.biz> domain name is confusingly similar to the J BRAND mark. The Panel agrees, and finds that Respondent’s addition of the descriptive term “jeans” (which relates to Complainant’s products) following Complainant’s mark does not negate a finding of confusing similarity. 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). The Panel therefore finds that Respondent’s <jbrandjeans.biz> domain name is confusingly similar to the J BRAND mark under Policy ¶ 4(a)(i).
Thus, Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent is not commonly known by the <jbrandjeans.biz> domain name. Complainant argues that it does not have any kind of relationship with Respondent, and Complainant has not given Respondent permission or otherwise authorized Respondent to use the J BRAND mark. Complainant also notes, and this Panel finds, that the WHOIS record for the <jbrandjeans.biz> domain name lists “Alexander K. Dobrenkov” as the domain name registrant and that this listing does not indicate a connection between Respondent and the <jbrandjeans.biz> domain name beyond website registration. Therefore, the Panel finds that Respondent is not commonly known by the <jbrandjeans.biz> 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant contends that Respondent’s use of the <jbrandjeans.biz> domain name further demonstrates that Respondent lacks rights and legitimate interests. Complainant alleges that the <jbrandjeans.biz> domain name is used to display links to Complainant’s competitors such as Levi’s and Wrangler. The Panel notes that Respondent attaches screenshots of the <jbrandjeans.biz> domain name’s resolving website that show these links as listed under headings such as “Levi’s® Official Site” and “Wrangler® Official Site.” Panels have found that the display of links to a complainant’s competitors’ website is not a use which establishes rights or legitimate interests in the domain name. 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)). Therefore, the Panel finds that Respondent’s use of the <jbrandjeans.biz> domain name does not establish rights or legitimate interests as it is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has established that its mark is well known. Thus, the Panel infers actual knowledge by Respondent of the J BRAND mark and that Respondent registered the <jbrandjeans.biz> domain in bad faith.
Complainant has shown that the <jbrandjeans.biz> domain name resolves to a website which displays links to Complainant’s competitors’ websites. Complainant argues, and this Panel accepts, that Respondent is doing so for commercial benefit. Therefore, the Panel finds that Respondent is using the <jbrandjeans.biz> domain name in bad faith to take commercial advantage of Internet users under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Thus, 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 <jbrandjeans.biz> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: August 22, 2012
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