J Brand, Inc. v. Treena Binns
Claim Number: FA1208001457899
Complainant is J Brand, Inc. (“Complainant”), represented by I. Morley Drucker of Fulwider Patton LLP, California, USA. Respondent is Treena Binns (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue, all registered with GoDaddy.com, LLC, are <jbrandjeansshop.com>, <jbrandjeansmall.com>, <jbrandjeansonline.com>, <jbrandjeanssale.com> and <jbrandjeansstore.com>.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on August 13, 2012; the National Arbitration Forum received payment on August 13, 2012.
On August 15, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <jbrandjeansshop.com>, <jbrandjeansmall.com>, <jbrandjeansonline.com>, <jbrandjeanssale.com>, and <jbrandjeansstore.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Re-spondent 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 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all enti-ties and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@jbrandjeansshop.com, postmaster@j-brandjeansmall.com, postmaster@jbrandjeansonline.com, postmaster@jbrand-jeanssale.com, and postmaster@jbrandjeansstore.com. Also on August 16, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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
Complainant owns rights in the J BRAND mark.
Complainant manufactures and markets clothing for men and women under its J BRAND mark.
Complainant holds registrations for the J BRAND trademark, on file with the United States Patent and Trademark Office (“USPTO”), including Registry No. 3,250,947, registered June 12, 2007.
Respondent registered the <jbrandjeansshop.com>, <jbrandjeansmall.com>, <jbrandjeansonline.com>, <jbrandjeanssale.com>, and <jbrandjeansstore.com> domain names no earlier than January 29, 2012.
Respondent’s domain names <jbrandjeansshop.com>, <jbrandjeansmall.com>, <jbrandjeansonline.com>, <jbrandjeanssale.com> and <jbrandjeansstore.com> are confusingly similar to Complainant’s J BRAND mark.
Respondent has not been commonly known by the disputed domain names.
Respondent is not related to Complainant, and Complainant has not granted Respondent permission to use Complainant’s J BRAND mark.
Respondent is not making a bona fide offering of goods or services by means of, nor a legitimate noncommercial or fair use of the disputed domain names.
Each of the disputed domain names resolves to a website that sells Complain-ant’s products without Complainant’s authorization.
Respondent has no rights to or legitimate interests in any of the contested domain names.
Respondent registered and uses the contested domain names as a part of a pattern of bad faith registration and use.
Respondent benefits commercially by creating confusion among Internet users as to the possibility of Complainant’s affiliation with the disputed domain names.
Respondent had knowledge of Complainant’s rights in the J BRAND mark when it registered the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) the same domain names were registered and are being used by Respond-ent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the J BRAND trademark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding a complainant’s registrations for its HONEYWELL mark sufficient to establish its rights in the mark under the Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction other than that of Respondent’s residence or place of business. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for purposes of para-graph 4(a)(i) of the Policy whether a complainant’s mark is registered in a country other than that of a respondent’s place of business).
Turning to the central question under Policy ¶ 4(a)(i), we are convinced from our review of the record that Respondent’s domain names <jbrandjeansshop.com>, <jbrandjeansmall.com>, <jbrandjeansonline.com>, <jbrandjeanssale.com>, and <jbrandjeansstore.com> are confusingly similar to Complainant’s J BRAND mark. The domain names all contain Complainant’s entire J BRAND mark, absent only the space between the terms of the mark, plus the generic top-level domain (“gTLD”) “.com,” and two descriptive terms relating to an aspect of Complainant’s business. These alterations of the mark, made in creating the domain names, are inadequate to avoid a finding of confusing similarity under the standards of the policy. See, for example, Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005), the panel there finding that the additions to a UDRP complainant’s DURACELL mark of the term “batteries,” which described that complainant’s products, and of the generic top-level domain “.com” were in-sufficient to distinguish a respondent’s <duracellbatteries.com> domain name from that mark.
Similarly, see Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), where a panel determined that the elimination of spaces between the terms of a complainant’s mark and the addition of a gTLD, made in forming a domain name, did not establish distinctiveness from that mark under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain names, that Respondent is not related to Complainant, and that Complainant has not granted Respondent permission to use Complainant’s J BRAND mark. More-over, the pertinent WHOIS information identifies the registrant of the disputed domain names only as “Treena Binns,” which does not resemble any of the disputed domain names. On this record, we conclude that Respondent has not been commonly known by any of the contested <jbrandjeansshop.com>, <jbrandjeansmall.com>, <jbrandjeansonline.com>, <jbrandjeanssale.com> or <jbrandjeansstore.com> domain names so as to have demonstrated that it has rights to or legitimate interests in any of them within the contemplation of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so had no rights to or legitimate interests in any of them under Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other evidence in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that re-spondent to register a domain name containing its mark).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services by means of the domain names or a legitimate noncommercial or fair use of the domain names, in that each of the do-main names resolve to a website that sells Complainant’s products without Complainant’s authorization, and that Respond-ent benefits commercially from the sale of these products. Respondent’s em-ployment of the disputed domain names in the manner alleged in the Complaint is neither a bona fide offering of goods or services by means of the domain names under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002), the panel there finding no bona fide offering of goods or services where a respondent used a complainant’s mark in a domain name without authorization to attract Internet users to its website, which offered both that complainant’s products and those of its competitors.
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The evidence of record reveals that Respondent has registered multiple domain names incorporating variations on Complainant’s J BRAND trademark. This is evidence that the domain names have been registered and are being used in bad faith. In similar situations, past panels have found that the respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(ii). See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that a respondent’s registrations and use of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names were sufficient to con-stitute a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii)).
In addition, it is plain from the record that, in employing domain names which are confusingly similar to Complainant’s J BRAND trademark, Respondent benefits commercially by creating confusion among Internet users as to the possibility of Complainant’s affiliation with the disputed domain names, which is itself evidence of bad faith registration and use of the domain names under Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that a respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not author-ized to sell a UDRP complainant’s goods).
Finally, we are convinced by the evidence that Respondent knew of Complain-ant’s rights in the J BRAND trademark when it registered each of the contested domain names, which stands as independent evidence of bad faith registration and use of the domain names under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there were reasonable grounds to infer that a respondent had actual notice of a com-plainant's rights in its mark, which that respondent had incorporated in a domain name, and, therefore, that that respondent had registered the domain name in bad faith).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(b)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <jbrandjeansshop.com>, <jbrandjeansmall.com>, <jbrandjeansonline.com>, <jbrandjeanssale.com>, and <jbrandjeansstore.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 25, 2012
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