Judith Leiber IP LLC v. Jodie McAllister c/o Eyewear
Claim Number: FA0911001294272
Complainant is Judith Leiber IP LLC (“Complainant”), represented by Theodore
R Remaklus of Wood Herron & Evans L.L.P., Ohio, USA. Respondent is Jodie McAllister c/o Eyewear USA (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <judithleibereyewear.com>, registered with Tucows 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 November 12, 2009; the National Arbitration Forum received a hard copy of the Complaint November 23, 2009.
On November 13, 2009, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <judithleibereyewear.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. verified that Respondent is bound by the Tucows 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 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 21, 2009, 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 postmaster@judithleibereyewear.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 31, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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, <judithleibereyewear.com>, is confusingly similar to Complainant’s JUDITH LEIBER mark.
2. Respondent has no rights to or legitimate interests in the <judithleibereyewear.com> domain name.
3. Respondent registered and used the <judithleibereyewear.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Judith Leiber IP
LLC, is one of the most prestigious fashion designer brands in the world. Complainant has used its JUDITH LEIBER mark
in connection with high quality fashion accessories, including handbags, since
1947. Complainant holds numerous
registrations of the JUDITH LEIBER mark with the United States Patent and
Trademark Office (“USPTO”) (e.g.,
Reg. No. 1,329,587 issued April 9, 1985).
Respondent, Jodie McAllister
c/o Eyewear
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."
Given 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.
The Panel is satisfied with Complainant’s showing of rights
in the JUDITH LEIBER mark through its numerous registrations of the mark with
the USPTO (e.g.,
Reg. No. 1,329,587 issued April 9, 1985).
The Panel finds that Complainant established rights in the JUDITH LEIBER
mark under Policy ¶ 4(a)(i). See Miller Brewing
Respondent’s <judithleibereyewear.com>
domain name contains Complainant’s entire JUDITH LEIBER mark, adds the
descriptive term “eyeglasses,” which describes Complainant’s products, and adds
the generic top-level domain (“gTLD”) “.com.”
The Panel finds that the <judithleibereyewear.com>
domain name is confusingly similar to
Complainant’s JUDITH LEIBER mark under Policy ¶ 4(a)(i) because none of
these additions to Complainant’s mark sufficiently distinguishes the disputed
domain name from Complainant’s mark. See Oki Data Ams., Inc. v. ASD, Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly
incorporates a Complainant’s registered mark is sufficient to establish
identity [sic] or confusing similarity for purposes of the Policy despite the
addition of other words to such marks”); see
also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001)
(“CHANEL, the salient feature of the Domain Names, is identical to a mark in
which Complainant has shown prior rights.
The addition of the generic term, “perfumes” is not a distinguishing
feature, and in this case seems to increase the likelihood of confusion because
it is an apt term for Complainant’s business.”); 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).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant makes this showing, the burden then shifts to Respondent and Respondent must establish that it has rights to or legitimate interests in the disputed domain name. The Panel finds that Complainant made its prima facie showing under Policy ¶ 4(a)(ii). The burden now shifts to Respondent, from whom no response was received. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. 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).”). Although Respondent has not alleged that it has rights or legitimate interests in the disputed domain name, the Panel still elects to examine the record under Policy ¶ 4(c) before making findings on the issue.
Respondent is listed in the WHOIS registrant information as
“Jodie McAllister c/o Eyewear
The <judithleibereyewear.com>
domain name resolves to a website that purports to sell Complainant’s
products. The Panel finds that Respondent’s
competing use of the disputed domain name 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 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”); see
also Coryn Group, Inc. v. Media
Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the
respondent was not using the domain names for a bona fide offering of
goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks).
Furthermore, the website resolving
from the <judithleibereyewear.com>
domain name displays Complainant’s JUDITH LEIBER mark. The Panel finds that Respondent’s utilization
of Complainant’s mark to purportedly sell Complainant’s products is an attempt
by Respondent to pass itself off as Complainant. The Panel further finds that Respondent’s
attempt to pass itself off as Complainant is further evidence that Respondent
lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v.
Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that
the respondent attempts to pass itself off as the complainant online, which is
blatant unauthorized use of the complainant’s mark and is evidence that the
respondent has no rights or legitimate interests in the disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007)
(“Because [the] respondent in this case is also attempting to pass itself off
as [the] complainant, presumably for financial gain, the Panel finds the
respondent is not using the <mortgageresearchcenter.org> domain name for
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).”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Since Respondent registered the <judithleibereyewear.com> domain name June 17, 2009, the disputed domain name has resolved
to a website that purports to sell Complainant’s products and displays
Complainant’s mark. The Panel finds that
Respondent’s use of the disputed domain name in this manner disrupts
Complainant’s business. The Panel
further finds that such a disruption constitutes bad faith registration and use
under Policy ¶ 4(b)(iii). See G.D.
Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct.
16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell
Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent
registered each of the disputed domain names in order to gain customers and to
disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR
equipment.”).
Furthermore, the Panel finds that Respondent’s attempt to pass itself off as Complainant and profit by purporting to sell Complainant’s products, and by displaying Complainant’s mark, supports findings that Respondent acted in bad faith in registering and using the domain name pursuant to Policy ¶ 4(b)(iv). See 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 … prohibited by Paragraph 4(b)(iv) of the Policy.”); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
The Panel finds that Complainant satisfied the elements of
ICANN 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 <judithleibereyewear.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 14, 2010
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