Liz Claiborne, Inc. and L.C. Licensing, Inc. and Juicy Couture, Inc. v. Sam Barakat
Claim Number: FA0712001116749
Complainant is Liz Claiborne, Inc. (“Complainant”), represented by Antonio
Borrelli of Cowan, Liebowitz & Latman, P.C., 1133
Avenue of the Americas, New York, NY, 10036-6799. Respondent is Sam Barakat (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juicy-couture-land.com>, registered with Wild West 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 December 3, 2007; the National Arbitration Forum received a hard copy of the Complaint December 5, 2007.
On December 7, 2007, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <juicy-couture-land.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. verified that Respondent is bound by the Wild West 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 December 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 19, 2008, 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.
On January 15, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson 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." 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, <juicy-couture-land.com>, is confusingly similar to Complainant’s JUICY COUTURE mark.
2. Respondent has no rights to or legitimate interests in the <juicy-couture-land.com> domain name.
3. Respondent registered and used the <juicy-couture-land.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
In 2003, Complainant, Liz Claiborne, Inc., purchased the JUICY COUTURE mark from its creators. Complainant developed the JUICY COUTURE line of products, which includes women’s casual attire, maternity wear, jeans, jewelry, men’s and children’s apparel, toiletries and soaps, paper and printed matter, eyeglasses, sunglasses, handbags, luggage, tote bags, umbrellas and wallets. JUICY COUTURE products are sold at high-end department stores, boutiques and stand alone JUICY COUTURE stores. Complainant owns several registrations and pending applications with the United States Patent and Trademark Office (“USPTO”) and Canadian Intellectual Property Office (“CIPO”) for the JUICY COUTURE mark, including U.S. Reg. No. 3,146,100 (issued Sept. 19, 2006), U.S. Reg. No. 2,348,674 (issued May 9, 2000) and CA Reg. No. TMA522120 (issued Jan. 25, 2000).
Respondent registered <juicy-couture-land.com> April 7, 2005. Respondent currently utilizes the disputed domain name to resolve to a webpage that appears to offer products of Complainant and Complainant’s competitors for sale.
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 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 Complainant to 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 established rights in the JUICY COUTURE
mark. Complainant holds several
trademark registrations in the
Complainant contends that Respondent’s disputed domain name is confusingly similar to Complainant’s JUICY COUTURE mark. Complainant contends that the disputed domain name, <juicy-couture-land.com>, includes the entirety of Complainant’s mark, merely adding the generic term “land,” two hyphens, and the generic top-level domain (“gTLD”) “.com.” The Panel finds these alterations to an otherwise unchanged mark to be minor and insufficient to distinguish the disputed domain name from Complainant’s mark in any meaningful way for the purposes of Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); 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 Complainant satisfied Policy ¶ 4(a)(i).
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. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent failed to submit a response to the Complaint. Therefore, the Panel is entitled to presume that Respondent lacks all rights and legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); 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.”). This Panel also examines the record to determine if Respondent has any rights or legitimate interests in the <juicy-couture-land.com> domain name pursuant to Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <juicy-couture-land.com> domain name and is not authorized to use Complainant’s JUICY COUTURE 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 <juicy-couture-land.com> domain name. Absent evidence suggesting otherwise, the Panel finds that Respondent did not establish rights to or legitimate interests in the disputed domain name in accordance with 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 Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
The disputed domain name, <juicy-couture-land.com>, currently resolves to a website that repeatedly displays Complainant’s mark and offers for sale the products of both Complainant and Complainant’s competitors. Complainant contends, and Respondent does not dispute, that Respondent has never been authorized by Complainant to use the JUICY COUTURE mark or to sell any products from the JUICY COUTURE line of products. The Panel finds this 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 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 Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent currently utilizes the disputed domain name, <juicy-couture-land.com>, to resolve to a website that repeatedly displays Complainant’s mark and offers for sale the products of Complainant and Complainant’s competitors. The Panel finds that, absent authorization from Complainant, such use by the Respondent establishes registration and use of 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 Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Moreover, Respondent is presumed to be profiting through the sale of goods associated with Complainant’s mark. Internet users searching for Complainant’s JUICY COUTURE mark would easily be confused by the disputed domain name, which results in additional traffic to and sales on Respondent’s websites. The Panel finds such confusion for commercial gain to be further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also 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 Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
The Panel finds that Complainant 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 <juicy-couture-land.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 29, 2008.
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