Juicy Couture, Inc. v. Zongxin Trade Co. Ltd. c/o Zhang Zhi
Claim Number: FA1006001328943
Complainant is Juicy
Couture, Inc. (“Complainant”), represented by Holly Pranger, of Pranger Law Group,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue is <juicycouturesoutlets.com>, <juicycouturesoutlet.net>, <juicycouturesoutlet.com>, <juicycoutures-outlet.com>, <juicycoutureoutlets.net>, <juicycouture-outlets.com>, <ijuicycoutures.com>, and <i-juicycouture.com>, registered with Xin Net Technology Corporation.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2010. The Complaint was submitted in both Chinese and English.
On June 9, 2010, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <juicycouturesoutlets.com>, <juicycouturesoutlet.net>, <juicycouturesoutlet.com>, <juicycoutures-outlet.com>, <juicycoutureoutlets.net>, <juicycouture-outlets.com>, <ijuicycoutures.com>, and <i-juicycouture.com> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 June 14, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 6, 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@juicycouturesoutlets.com, postmaster@juicycouturesoutlet.net, postmaster@juicycouturesoutlet.com, postmaster@juicycoutures-outlet.com, postmaster@juicycoutureoutlets.net, postmaster@juicycouture-outlets.com, postmaster@ijuicycoutures.com, and postmaster@i-juicycouture.com. Also on June 14, 2010, the Chinese language 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 July 9, 2010, 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 a Written Notice, as defined in Rule 1. 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant markets fashion apparel and related products.
Complainant holds trademark registrations for the JUICY COUTURE mark with trademark authorities in over 80 countries, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,348,674, registered May 9, 2000).
Respondent registered the disputed domain names no earlier than August 23, 2009.
Respondent’s <i-juicycouture.com> domain name resolves to a website that prominently displays Complainant’s mark and offers third-party goods for sale.
Each of Respondent’s contested domain names <juicycoutures-outlet.com>,
<juicycoutureoutlets.net>, <juicycouturesoutlet.com>,
<juicycouturesoutlet.net>, and <juicycouturesoutlets.com> resolves
to a website which prominently displays Complainant’s JUICY COUTURE mark and
logo and which markets counterfeit versions of Complainant’s products.
Respondent’s <ijuicycoutures.com> and <juicycoutures-outlet.com> domain names resolve to inactive websites.
Respondent’s <juicycouturesoutlets.com>, <juicycouturesoutlet.net>, <juicycouturesoutlet.com>, <juicycoutures-outlet.com>, <juicycoutureoutlets.net>, <juicycouture-outlets.com>, <ijuicycoutures.com>, and <i-juicycouture.com> domain names are confusingly similar to Complainant’s JUICY COUTURE mark.
Respondent is not licensed or otherwise authorized to use Complainant’s JUICY COUTURE mark in any way, and Complainant has not given Respondent permission to use its mark in a domain name.
Respondent does not have any rights to or legitimate interests in any of the <juicycouturesoutlets.com>, <juicycouturesoutlet.net>, <juicycouturesoutlet.com>, <juicycoutures-outlet.com>, <juicycoutureoutlets.net>, <juicycouture-outlets.com>, <ijuicycoutures.com>, and <i-juicycouture.com> domain names.
Respondent registered and uses the domain names <juicycouturesoutlets.com>, <juicycouturesoutlet.net>, <juicycouturesoutlet.com>, <juicycoutures-outlet.com>, <juicycoutureoutlets.net>, <juicycouture-outlets.com>, <ijuicycoutures.com> and <i-juicycouture.com> in bad faith.
B. 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) each of the same domain names was registered and is being used by Respondent 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."
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 a 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:
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.
Complainant has acquired rights in the JUICY COUTURE trademark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO and other trademark authorities. 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in its mark in some jurisdiction).
The disputed domain names are confusingly similar to Complainant’s JUICY COUTURE mark. Respondent fully incorporates Complainant’s mark in each of the disputed domain names. In the domain names <juicycouturesoutlets.com>, <juicycouturesoutlet.net>, <juicycouturesoutlet.com>, <juicycoutures-outlet.com>, <juicycoutureoutlets.net>, and <juicycouture-outlets.com>, Respondent affixes the generic terms “outlet” or “outlets” to the mark. Respondent also adds the letter “i” before Complainant’s mark in the <ijuicycoutures.com> and <i-juicycouture.com> domain names. Likewise, in the <juicycouturesoutlets.com>, <juicycouturesoutlet.net>, <juicycouturesoutlet.com>, <juicycoutures-outlet.com>, and <ijuicycoutures.com> domain names, Respondent adds the letter “s” to Complainant’s mark. In addition, Respondent inserts hyphens between Complainant’s mark and a letter or generic term in the <juicycoutures-outlet.com>, <juicycouture-outlets.com>, and <i-juicycouture.com> domain names. Finally, Respondent attaches either the generic top-level domain (“gTLD”) “.com” or “.net” to Complainant’s mark in each of the disputed domain names.
These additions do not sufficiently distinguish the disputed domain names from Complainant’s mark for purposes of the Policy. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that a respondent’s domain names were confusingly similar to a complainant’s GOOGLE mark where that respondent added common terms such as “buy” or “gear” to the end of the mark in forming the domains); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); further see Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003):
[T]he addition of punctuation marks such as hyphens is irrelevant in
the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).
Finally, see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect a domain name for purposes of determining whether it is identical or confusingly similar to a competing mark).
Therefore, the Panel finds that the disputed domain names <juicycouturesoutlets.com>, <juicycouturesoutlet.net>,
<juicycouturesoutlet.com>, <juicycoutures-outlet.com>, <juicycoutureoutlets.net>,
<juicycouture-outlets.com>, <ijuicycoutures.com>, and
<i-juicycouture.com> are confusingly similar to
Complainant’s JUICY COUTURE mark under Policy ¶ 4(a)(i).
Complainant must first show prima facie that Respondent has no rights to or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). The burden then shifts to Respondent to demonstrate that it nonetheless has rights to or legitimate interests in the disputed domain names. It may be presumed that a Respondent who fails to submit a Response to a complaint filed in a proceeding under the Policy lacks rights to and legitimate interests in a contested domain name. See 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).
Nevertheless, we elect to examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in any of the contested domain names which are cognizable under the policy.
We begin by observing that Complainant alleges, and Respondent does not deny, that Respondent is not licensed or otherwise authorized to use its JUICY COUTURE mark in any way, and that Complainant has not given Respondent permission to use the mark in a domain name. Furthermore, the pertinent WHOIS information lists the registrant of each of the disputed domain names only as “Zongxin Trade Co. Ltd. c/o Zhang Zhi”, which does not resemble any of the domain names. On this record, we must conclude that Respondent is not commonly known by any of the disputed domain names so as to have demonstrated that it has rights to or legitimate interests in any of them under 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 where the relevant WHOIS information gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by the domain name, and where a complainant did not authorize or license that respondent’s use of its mark in a domain name).
Complainant also alleges, without objection from Respondent,
that Respondent’s <i-juicycouture.com>
domain name resolves to a website which prominently displays Complainant’s
mark and offers third-party goods for sale.
Respondent’s use of Complainant’s JUICY COUTURE mark to sell unrelated
goods is not a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use of the contested domain name under Policy
¶ 4(c)(iii). See Constellation Wines
Respondent's use of a domain name confusingly similar to
Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does not represent a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).
Complainant further claims, and, again, Respondent does not
deny, that Respondent uses the contested domain names <juicycoutures-outlet.com>, <juicycoutureoutlets.net>, <juicycouturesoutlet.com>,
<juicycouturesoutlet.net>, and <juicycouturesoutlets.com> to
resolve to websites that market counterfeit versions of Complainant’s products,
and that these websites prominently display Complainant’s JUICY COUTURE mark
and logo. Respondent’s use of the contested
domain names to sell counterfeit goods, and thereby profit from the use of
Complainant’s mark, is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See, for example, Hewlett-Packard Co. v. Inversiones HP Milenium
See also 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).
Complainant next claims
that Respondent’s <ijuicycoutures.com> and <juicycoutures-outlet.com>
domain names resolve to inactive websites.
Respondent does not contest this allegation. Indeed the domain name <ijuicycoutures.com>
resolves to a website that is blank except for the message “In the shop
stocktaking, please come back again later.” This website also lists the email
address “Ijuicycouture.com.”
Additionally, the <juicycoutures-outlet.com> domain name
resolves to a website that states “Server not found.” Respondent’s failure to make active
use of the <ijuicycoutures.com> and <juicycoutures-outlet.com> domain names does not
constitute a bona fide offering of
goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair
use under Policy ¶ 4(c)(iii). See George Weston Bakeries
Inc. v. McBroom, FA 933276 (Nat.
Arb. Forum Apr. 25, 2007) (finding that a respondent had no rights to or
legitimate interests in a domain name under either Policy ¶ 4(c)(i) or ¶
4(c)(iii) where it failed to make active use of the domain name); see also Bloomberg
L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004):
Respondent
is wholly appropriating Complainant’s mark and is not using the … domain name
in connection with an active website.
The Panel finds that the [failure to make an active use] of a domain
name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name
pursuant to Policy ¶ 4(c)(iii).
Finally, it is undisputed that Respondent’s domain names <juicycoutures-outlet.com>,
<juicycoutureoutlets.net>, <juicycouturesoutlet.com>,
<juicycouturesoutlet.net>, and <juicycouturesoutlets.com> resolve
to websites that feature Complainant’s mark, logo, and images of
goods that closely resemble Complainant’s products. Respondent’s evident efforts thus to pass
itself off as Complainant, presumably for its financial gain, is further
evidence that Respondent lacks rights to or legitimate interests in the
disputed domain names under Policy ¶ 4(a)(ii).
See Am. Int’l Group, Inc. v. Busby, FA 156251
(Nat. Arb. Forum May 30, 2003) (finding that a respondent attempted to
pass itself off as a complainant online, which is a blatantly unauthorized use
of that complainant’s mark and is evidence that that respondent had no rights to
or legitimate interests in a disputed domain name); see also Mortgage
Research Center LLC v. Miranda, FA
993017 (Nat. Arb. Forum July 9, 2007):
Because respondent in this case is
also attempting to pass itself off as complainant, presumably for financial
gain, the Panel finds the respondent is not using the … 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 therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent evidently uses its confusingly similar <juicycoutures-outlet.com>, <juicycoutureoutlets.net>, <juicycouturesoutlet.com>, <juicycouturesoutlet.net>, and <juicycouturesoutlets.com> domain names to divert Internet users seeking Complainant’s products to its websites. Respondent then offers counterfeit goods that compete with Complainant’s products. Respondent’s use of the disputed domain names in this manner constitutes registration and use of the domains in bad faith under Policy ¶ 4(b)(iii). See, for example, DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent
is appropriating Complainant’s mark to divert Complainant’s customers to
Respondent’s competing business. The
Panel finds this diversion is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii).
See also Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that a
respondent registered a domain name primarily to disrupt its competitor when it
sold goods similar to those offered by a complainant and “even included
Complainant's personal name on the website, leaving Internet users with the
assumption that it was Complainant's business they were doing business with.”).
Respondent plainly uses the contested domain names <juicycoutures-outlet.com>, <juicycoutureoutlets.net>, <juicycouturesoutlet.com>,
<juicycouturesoutlet.net>, and <juicycouturesoutlets.com> to
create confusion as to the possibility of Complainant’s sponsorship of or
affiliation with the resolving websites in order to sell counterfeit
goods. Thus Respondent uses domain names
confusingly similar to Complainant’s JUICY COUTURE mark to attempt to attract
Internet users to its websites so that it can profit from the sale of these
counterfeit goods. This is evidence of
Respondent’s bad faith registration and use of the domains pursuant to Policy ¶
4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004):
Respondent
[used a domain name] to benefit from the goodwill associated with Complainant’s … marks and
us[ed] the … 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 Utensilerie Assoc.
S.p.A. v. C & M, D2003-0159 (WIPO Apr.
22, 2003): “The contents of the website, offering Usag products, together with
the domain name may create the (incorrect) impression that Respondent is either
the exclusive distributor or a subsidiary of Complainant, or at the very least
that Complainant has approved its use of the domain name.”
Furthermore, Respondent’s use of the domain names <juicycoutures-outlet.com>, <juicycoutureoutlets.net>, <juicycouturesoutlet.com>, <juicycouturesoutlet.net>, and <juicycouturesoutlets.com> to attempt to pass itself off as Complainant’s website supports a finding of bad faith registration and use of the domains under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that a respondent's use of <monsantos.com> to misrepresent itself as a complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that a respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that a complainant endorsed and sponsored that respondent’s website).
Finally, Respondent’s <ijuicycoutures.com> and <juicycoutures-outlet.com> domain names do not resolve to active websites. Respondent’s failure to make active use of the disputed domain names constitutes bad faith registration and use of each of them under Policy ¶ 4(a)(iii). See, for example, DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a respondent’s failure to make an active use of a contested domain name satisfies the requirements of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that holding an infringing domain name without active use can constitute use in bad faith).
For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the domain names <juicycouturesoutlets.com>, <juicycouturesoutlet.net>, <juicycouturesoutlet.com>, <juicycoutures-outlet.com>, <juicycoutureoutlets.net>, <juicycouture-outlets.com>, <ijuicycoutures.com>, and <i-juicycouture.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 14, 2010
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