Juicy Couture, Inc. v. Li Qi
Claim Number: FA1003001313557
Complainant is Juicy
Couture, Inc. (“Complainant”), represented by Holly Pranger, of Pranger Law Group,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <salejuicycouture.com>, registered with GoDaddy.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 16, 2010.
On March 17, 2010, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <salejuicycouture.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 18, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 2010 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@salejuicycouture.com by e-mail. Also on March 18, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 April 13, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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. Respondent’s <salejuicycouture.com> domain name is confusingly similar to Complainant’s JUICY COUTURE mark.
2. Respondent does not have any rights or legitimate interests in the <salejuicycouture.com> domain name.
3. Respondent registered and used the <salejuicycouture.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Juicy Couture, Inc.,
was formed in 2000 after Complainant’s founders created a line of women’s
maternity clothing and jeans in 1997.
Complainant markets and sells its clothing and jeans line under its
JUICY COUTURE mark. Complainant holds
multiple trademark registrations with the United States Patent and Trademark
Office ("USPTO") (e.g.,
Reg. No. 2,348,674 issued May 9, 2000) and with the People’s Republic of
Respondent, Li Qi, registered the <salejuicycouture.com> domain name on August 4, 2009. The disputed domain name resolves to a website that offers counterfeit versions of Complainant’s clothing products.
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 holds trademark registrations for its JUICY COUTURE mark with the USPTO (e.g., Reg. No. 2,348,674 issued May 9, 2000) and with the SIPO (e.g., Reg. No. 4,054,364 issued May 9, 2004). The Panel finds that Complainant has established rights in its JUICY COUTURE mark through its trademark registrations pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant argues that Respondent’s <salejuicycouture.com> domain name is confusingly similar to Complainant’s JUICY COUTURE mark. The disputed domain name incorporates Complainant’s entire mark and simply removes the space between the terms of the mark, adds the generic term “sale,” and adds the generic top level domain (“gTLD”) “.com.” The Panel determines the removal of a space, the addition of a generic term, and the addition of a gTLD fail to adequately distinguish the disputed domain name from Complainant’s mark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel concludes that Respondent’s <salejuicycouture.com> domain name is confusingly similar to Complainant’s JUICY COUTURE mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <salejuicycouture.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant claims that the <salejuicycouture.com> domain name is not Respondent’s personal name and that Respondent does not conduct any legitimate business under the <salejuicycouture.com> domain name. Complainant asserts that Respondent is not authorized or licensed to utilize Complainant’s JUICY COUTURE mark. The WHOIS information lists the domain name registrant as “Li Qi,” which the Panel determines is not similar to the <salejuicycouture.com> domain name. Respondent fails to offer any evidence that would contradict the WHOIS information or the evidence submitted by Complainant. The Panel does not find any evidence in record that would support a finding that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <salejuicycouture.com> domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent uses the <salejuicycouture.com>
domain name to resolve to a website selling counterfeit versions of
Complainant’s clothing products.
Complainant contends that Respondent is not authorized to sell Complainant’s
products. The Panel finds that
Respondent’s use of the <salejuicycouture.com> domain name to sell
counterfeit clothing products is not a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial and fair use of the disputed domain name pursuant to Policy ¶
4(c)(iii). See Hewlett-Packard Co. v. Inversiones HP Milenium
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s use of the <salejuicycouture.com> domain name disrupts Complainant’s clothing line business. Respondent’s disputed domain name resolves to a website containing counterfeit versions of Complainant’s products. Internet users may mistakenly purchase the counterfeit clothing products from Respondent instead of purchasing the actual clothing products from Complainant because of Respondent’s use of the confusingly similar disputed domain name. The Panel finds that this use constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); 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).
The Panel determines that Respondent most likely profits from the sale of the counterfeit clothing products. Internet users interested in Complainant’s clothing line may become confused as to Complainant’s sponsorship of or affiliation with the <salejuicycouture.com> domain name, resolving website, and counterfeit clothing products. Respondent attempts to profit from this confusion. The Panel finds that Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the 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 authorized to sell the complainant’s goods).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <salejuicycouture.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 23, 2010
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