Juicy Couture, Inc. v. Huang Fengchun / Qin Xiao
Claim Number: FA1008001338761
Complainant is Juicy Couture, Inc. (“Complainant”), represented by Holly Pranger, of Pranger Law Group, California, USA. Respondent is Huang Fengchun / Qin Xiao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <juicycoutureusa.com>, registered with HICHINA ZHICHENG TECHNOLOGY LTD.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 3, 2010. The Complaint was submitted in both Chinese and English.
On August 4, 2010, HICHINA ZHICHENG TECHNOLOGY LTD. confirmed by e-mail to the National Arbitration Forum that the <juicycoutureusa.com> domain name is registered with HICHINA ZHICHENG TECHNOLOGY LTD. and that Respondent is the current registrant of the name. HICHINA ZHICHENG TECHNOLOGY LTD. has verified that Respondent is bound by the HICHINA ZHICHENG TECHNOLOGY LTD. 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 August 13, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of September 2, 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@<juicycoutureusa.com> by e-mail. Also on August 13, 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 September 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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" 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <juicycoutureusa.com> domain name is confusingly similar to Complainant’s JUICY COUTURE mark.
2. Respondent does not have any rights or legitimate interests in the <juicycoutureusa.com> domain name.
3. Respondent registered and used the <juicycoutureusa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Juicy Couture,
Inc., markets and sells apparel, jewelry, glasses, handbags and other
accessories under its JUICY COUTURE mark which is registered with the United
States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,348,674 issued May 9, 2000).
Respondent, Huang Fengchun / Qin Xiao, registered the disputed domain on June 7, 2010. The disputed domain name resolves to a website that displays Complainant’s mark and sells counterfeit versions of Complainant’s 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.
The Panel finds that
Complainant’s USPTO trademark registration is sufficient evidence of
Complainant’s rights in its JUICY COUTURE mark under Policy ¶ 4(a)(i). See
Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005)
(finding that the complainant had established rights in the PAISLEY PARK mark
under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel also finds that to establish rights
in a mark under Policy ¶ 4(a)(i), Complainant need not register the mark in the
country where Respondent resides or operates.
See Renaissance Hotel Holdings, Inc. v.
Renaissance Cochin, FA 932344 (Nat.
Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the
complainant has registered its trademark in the country in which the respondent
resides, only that it can establish rights in some jurisdiction).
Respondent’s <juicycoutureusa.com> domain name is confusingly similar to Complainant’s JUICY COUTURE mark. Respondent’s disputed domain name contains Complainant’s entire mark and merely deletes the spaces between the terms and adds the geographic term “usa” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that such alterations are not sufficient to remove Respondent’s disputed domain name from the realm of confusing similarity. See Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). Therefore, pursuant to Policy ¶ 4(a)(i), Respondent’s <juicycoutureusa.com> domain name is confusingly similar to Complainant’s JUICY COUTURE mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and
legitimate interests in the disputed domain name. Complainant must first make a prima facie case in support of its
allegations, then the burden shifts to Respondent to prove it has rights or
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel finds that, based on the arguments
in the Complaint, Complainant has established a prima facie case in support of its contentions. Respondent has failed to submit a Response to
these proceedings. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June
4, 2007) (“Complainant must first make a prima facie case that
Respondent lacks rights and legitimate interests in the disputed domain name
under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it
does have rights or legitimate interests.”); see also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417
(WIPO Feb. 1, 2007) (“Proper analysis of
paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts
from the Complainant to the Respondent once the Complainant has made out a
prima facie case that the Respondent has no rights or interests in the domain
names.”).
The WHOIS information for the disputed domain name lists the registrant as “Huang Fengchun / Qin Xiao.” Complainant asserts that Respondent is not commonly known by the disputed domain name. Complainant further asserts that Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to use Complainant’s marks. The Panel finds that Complainant’s assertions, coupled with the fact that Respondent provides no contradictory evidence in the record, establish that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s <juicycoutureusa.com>
domain name
was registered on June 7, 2010. The
disputed domain name resolves to a
website that displays Complainant’s mark and sells counterfeit versions of
Complainant’s products. The Panel finds
that Respondent is attempting to pass itself off as Complainant and that such a
use is neither a bona fide offering
of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). 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 Hewlett-Packard Co. v.
Inversiones HP Milenium C.A., FA 105775
(Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar
domain name [<hpmilenium.com>] to sell counterfeit versions of
Complainant’s [HP] products is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain name to link Internet users to a website that sells counterfeit versions of Complainant’s products. Internet users may purchase these counterfeit goods from Respondent’s website rather than purchasing similar items directly from Complainant. The Panel finds that this constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the 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”); 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 finds that Respondent’s use of the disputed domain
name to profit from the sale of counterfeit versions of Complainant’s goods by
intentionally attracting Internet users who seek Complainant’s products through
the use of a confusingly similar domain name is evidence of bad faith pursuant
to Policy ¶ 4(b)(iv). See World
Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO
Jan. 24, 2001) (concluding that the respondent registered and used the
<wwfauction.com> domain name in bad faith because the name resolved to a
commercial website that the complainant’s customers were likely to confuse with
the source of the complainant’s products, especially because of the
respondent’s prominent use of the complainant’s logo on the site); 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 that 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 <juicycoutureusa.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 22, 2010
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