Juicy Couture, Inc. v. lin zhiyuan and zhiyuan lin
Claim Number: FA1008001338762
Complainant is Juicy Couture, Inc. ("Complainant"), represented by Holly Pranger of Pranger Law Group, California, USA. Respondent is lin zhiyuan and zhiyuan lin ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <discountjuicycouture.org>, <juicycouturejewelry.org>, and <juicycouturepurses.org>, registered with Bizcn.com, 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 August 3, 2010; the National Arbitration Forum received payment September 7, 2010. The Complaint was submitted in both Chinese and English.
On September 16, 2010, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <discountjuicycouture.org>, <juicycouturejewelry.org>, and <juicycouturepurses.org> domain names are registered with Bizcn.com, Inc. and that Respondent is the current registrant of the names. Bizcn.com, Inc. verified that Respondent is bound by the Bizcn.com, Inc. registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 17, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 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@discountjuicycouture.org, postmaster@juicycouturejewelry.org, and postmaster@juicycouturepurses.org. Also on September 17, 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 October 21, 2010, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
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:
1. Respondent’s <discountjuicycouture.org>, <juicycouturejewelry.org>, and <juicycouturepurses.org> domain names are confusingly similar to Complainant’s JUICY COUTURE mark.
2. Respondent has no rights to or legitimate interests in the <discountjuicycouture.org>, <juicycouturejewelry.org>, and <juicycouturepurses.org> domain names.
3. Respondent registered and used the <discountjuicycouture.org>, <juicycouturejewelry.org>, and <juicycouturepurses.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Juicy Couture, Inc., sells jewelry, apparel, toiletries, soaps, paper, printed matter, and accessories like eyeglasses, sunglasses, handbags, luggage, tote bags, umbrellas, and wallets. Complainant sells its products in high-end department stores, such as Barney’s, Bloomingdale’s, Neiman Marcus, Nordstrom, and Saks Fifth Avenue, as well as in specialty fashion boutiques and stand alone JUICY COUTURE stores. Complainant owns numerous trademark registrations for the JUICY COUTURE mark with the United States Patent and Trademark Office (“USPTO”), including:
Reg. No. 2,348,674 issued May 9, 2000;
Reg. No. 2,882,279 issued September 7, 2004;
Reg. No. 2,978,046 issued July 26, 2005;
Reg. No. 3,146,100 issued September 19, 2006; and
Reg. No. 3,194,741 issued January 2, 2007.
Respondent, lin zhiyuan and zhiyuan lin, registered the <juicycouturepurses.org> and <juicycouturejewelry.org> domain names June 17, 2010 and the <discountjuicycouture.org> domain name March 18, 2010. The <juicycouturejewelry.org> and <discountjuicycouture.org> domain names resolve to websites featuring the JUICY COUTURE mark and copyrighted promotional materials and offering, selling and promoting third party counterfeit goods like clothing and handbags. The <juicycouturepurses.org> domain name is not currently in active use.
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 to 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 owns numerous trademark registrations for the JUICY COUTURE mark with the USPTO, including:
Reg. No. 2,348,674 issued May 9, 2000;
Reg. No. 2,882,279 issued September 7, 2004;
Reg. No. 2,978,046 issued July 26, 2005;
Reg. No. 3,146,100 issued September 19, 2006; and
Reg. No. 3,194,741 issued January 2, 2007.
The Panel finds that Complainant’s USPTO trademark registrations prove Complainant’s rights in the JUICY COUTURE mark for the purposes of Policy ¶ 4(a)(i), even when Respondent lives or operates in a country outside the jurisdiction where the mark is registered. 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 the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant urges that Respondent’s <discountjuicycouture.org>, <juicycouturepurses.org> and <juicycouturejewelry.org> domain names are confusingly similar to Complainant’s JUICY COUTURE mark because the disputed domain names incorporate Complainant’s full mark, omit the space between the terms, and simply add the descriptive terms “discount,” “purses,” or “jewelry,” along with the generic top-level domain (“gTLD”) “.org.” This Panel finds that adding a descriptive word, especially one that refers to Complainant’s products, to Complainant’s mark does not sufficiently distinguish the disputed domain names from Complainant’s mark. See 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 Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). This Panel also finds that the omission of the space between terms and the attachment of a gTLD is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See 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); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
Therefore, the Panel finds that Respondent’s <discountjuicycouture.org>, <juicycouturepurses.org>, and <juicycouturejewelry.org> domain names are confusingly similar to Complainant’s JUICY COUTURE mark according to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant makes a prima facie case to support its allegations, Policy ¶ 4(a)(ii) requires the burden to shift to Respondent to prove that it does have such rights and legitimate interests in the disputed domain name. The Panel finds that Complainant made a prima facie case based on the arguments contained in the Complaint, and Respondent has failed to submit a Response to these proceedings. 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 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.”). However, this Panel still examines the record to determine whether any evidence in the record suggests that Respondent has rights to or legitimate interests in the disputed domain name.
Complainant asserts that Respondent has no right to use Complainant’s JUICY COUTURE mark. Complainant argues that JUICY COUTURE is not Respondent’s personal name; Respondent does not engage in any business under that name, and Respondent is not known to the public by that name. Complainant urges that Respondent is not licensed or authorized by Complainant to use Complainant’s mark and did not receive permission from Complainant to register the disputed domain names. The WHOIS information lists the registrant for the <discountjuicycouture.org> domain name as “Zhiyuan Lin” and for the <juicycouturejewelry.org>, and <juicycouturepurses.org> domain names as “Lin Zhiyuan.”
Based on this information and the lack of other positive evidence in the record, the Panel finds that Respondent is not commonly known by the disputed domain names and thus lacks rights and legitimate interests pursuant to a Policy ¶ 4(c)(ii) analysis. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent is 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).
Complainant contends that Respondent’s <juicycouturejewelry.org> and <discountjuicycouture.org> domain names both resolve to websites selling counterfeit versions of Complainant’s JUICY COUTURE products like apparel, accessories, and handbags under Complainant’s mark and copyrighted promotional materials. The Panel finds that appropriating Complainant’s mark in domain names used to sell counterfeit versions of Complainant’s products is not a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); 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).”).
Complainant also contends that Respondent’s <juicycouturejewelry.org> and <discountjuicycouture.org> domain names display Complainant’s JUICY COUTURE mark and use Complainant’s copyrighted promotional materials, in addition to representing the counterfeit products sold at the disputed domain names to be authentic JUICY COUTURE products. The Panel finds that these facts indicate that Respondent is attempting to pass itself off as Complainant, which is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use according 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 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).”).
Complainant alleges that Respondent is not currently making any active use of the <juicycouturepurses.com> domain name. The Panel finds that Respondent’s failure to actively use the disputed domain name also may be taken as evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent uses the <juicycouturejewelry.org> and <discountjuicycouture.org> domain names to sell counterfeit versions of Complainant’s products under Complainant’s JUICY COUTURE mark. As Respondent is selling goods that are similar in appearance to those that Complainant sells and since Respondent attempts to deceive customers into believing that they are Complainant’s goods, Respondent is essentially attempting to compete with Complainant using Complainant’s own mark. The Panel finds that Respondent’s use in this manner in the disputed domain names and on the resolving websites is calculated to disrupt Complainant’s business by diverting Complainant’s customers to Respondent’s own website. The Panel finds that these activities demonstrate Respondent’s bad faith registration and use according to Policy ¶ 4(b)(iii). See 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 Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Complainant contends as well that Respondent operates its own commercial websites selling counterfeit JUICY COUTURE products at the <juicycouturejewelry.org> and <discountjuicycouture.org> domain names. Complainant alleges that Respondent uses Complainant’s mark for Respondent’s own profit by intentionally attracting Internet users to its own websites and creating a likelihood of confusion as to an affiliation between Respondent and Complainant. The Panel finds that Respondent’s efforts to mislead these Internet users for commercial gain and through misuse of Complainant’s mark support findings that Respondent registered and used the disputed domain names in bad faith according to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also 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).
Complainant also argues that Respondent’s <juicycouturejewelry.org> and <discountjuicycouture.org> domain names display Complainant’s JUICY COUTURE mark and use Complainant’s copyrighted promotional materials, in addition to representing the counterfeit products sold at the disputed domain names to be authentic JUICY COUTURE products. The Panel finds that Respondent is therefore attempting to pass itself off as Complainant, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); 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.”).
Complainant asserts as well that Respondent’s <juicycouturepurses.org> is not currently in active use. The Panel finds that Respondent’s failure to actively use this disputed domain name also supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
When conducting a Policy ¶ 4(a)(iii) analysis for bad faith, the Panel finds that it may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence). Taking into consideration the totality of the evidence before this Panel, the Panel finds that Respondent registered, used, and/or passively held the disputed domain names in bad faith.
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 <discountjuicycouture.org>, <juicycouturejewelry.org>, and <juicycouturepurses.org> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 27, 2010.
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