eLuxury.com Inc. v. WangJunJie
Claim Number: FA0709001075554
Complainant is eLuxury.com Inc. (“Complainant”), represented by Julie
L. Fieber, of Folger Levin & Kahn LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eluxuryreplica.com>, registered with Todaynic.Com, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On October 22, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 13, 2007 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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." 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. Respondent’s <eluxuryreplica.com> domain name is confusingly similar to Complainant’s ELUXURY mark.
2. Respondent does not have any rights or legitimate interests in the <eluxuryreplica.com> domain name.
3. Respondent registered and used the <eluxuryreplica.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, eLuxury.com, Inc., owns and operates an online boutique for luxury goods and designer fashion at <eluxury.com>, which, Complainant states, receives more than 30 million unique visitors a year and enjoys frequent editorial coverage in both print and on-line publications. Complainant first began using the ELUXURY mark in the year 2000, when it launched its website at the <eluxury.com> domain name. Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ELUXURY mark including registration numbers: 2,518,286 (registered on December 11, 2001), 2,528,471 (registered on January 8, 2002), 2,528,472 (registered on January 8, 2002), and 2,717,701 (registered on May 20, 2003).
Respondent registered the <eluxuryreplica.com> domain name on
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.
Complainant has established rights in the ELUXURY mark. Complainant owns several trademark registrations with the USPTO. The Panel finds that where Complainant has submitted evidence of a valid trademark registration, Policy ¶ 4(a)(i) has been satisfied. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s <eluxuryreplica.com> domain name is confusingly similar to Complainant’s mark. Respondent’s domain name contains Complainant’s entire ELUXURY mark and adds the generic term “replica” along with the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s additions to an otherwise unchanged mark fails to distinguish Respondent’s domain name from Complainant’s mark in any meaningful way for purposes of Policy ¶ 4(a)(i). See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
contends that Respondent lacks rights to or legitimate interests in the <eluxuryreplica.com> domain
name. Where Complainant makes a prima facie case under Policy ¶
4(a)(ii), the burden shifts to Respondent to set forth
concrete evidence that it does possess rights to or legitimate interests in the
disputed domain name. The Panel finds that Complainant has established a prima facie case in the matter at hand. See Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO
Respondent failed to submit a response to the Complaint. Nonetheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the <eluxuryreplica.com> domain name pursuant to Policy ¶ 4(c). See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Respondent makes no attempt to disguise that it currently
utilizes the disputed domain name, <eluxuryreplica.com>, to resolve to a website
offering for sale replicas of designer handbags, shoes and sunglasses,
which compete with the designer goods sold by Complainant. The Panel finds Respondent’s use to be
neither a bona fide offering of goods
or services pursuant to Policy ¶ 4 (c)(i), nor a legitimate, noncommercial or
fair use pursuant to ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones HP Milenium
Moreover, Complainant alleges that Respondent is not commonly known by the <eluxuryreplica.com> domain name nor was ever authorized to use Complainant’s ELUXURY mark in any way. Nowhere in Respondent’s WHOIS information or elsewhere in the record does it indicate that Respondent is or ever was commonly known by the <eluxuryreplica.com> domain name. Respondent’s own website states that “Eluxuryreplica company'name is Cargo handbag Co.,LTD.” Absent evidence suggesting otherwise, the Panel finds that Respondent has not established rights to or legitimate interests in the domain name in accordance with Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
As previously stated, Respondent makes no attempt to disguise that it currently utilizes the disputed domain name, <eluxuryreplica.com>, to resolve to a website offering for sale replicas of designer handbags, shoes and sunglasses, which compete with the designer goods sold by Complainant. The panel finds such use to establish that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).
Furthermore, Respondent is presumed to be benefiting through the sale of goods, several of which are knockoffs of the designer goods offered on Complainant’s website. The Panel finds that the disputed domain name is capable of creating a likelihood of confusion with Complainant’s mark and this is thus further evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”), see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
The Panel concludes that 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 <eluxuryreplica.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 30, 2007
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