Juicy Couture, Inc. v. bai li hua
Claim Number: FA1009001344677
Complainant is Juicy Couture, Inc. (“Complainant”), represented by Holly Pranger, of Pranger Law Group, California, USA. Respondent is bai li hua (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <juicycouture2sale.com>, <juicy888.com> and <cheapjuciyshop.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 September 2, 2010.
On September 5, 2010, HICHINA ZHICHENG TECHNOLOGY LTD. confirmed by e-mail to the National Arbitration Forum that the <juicycouture2sale.com>, <juicy888.com>, and <cheapjuciyshop.com> domain names are registered with HICHINA ZHICHENG TECHNOLOGY LTD. and that Respondent is the current registrant of the names. 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 September 10, 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 30, 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@juicycouture2sale.com, postmaster@juicy888.com, and postmaster@cheapjuciyshop.com by e-mail. Also on September 10, 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 15, 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 Complainant 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 <juicycouture2sale.com>, <juicy888.com>, and <cheapjuciyshop.com> domain names are confusingly similar to Complainant’s JUICY and JUICY COUTURE mark.
2. Respondent does not have any rights or legitimate interests in the <juicycouture2sale.com>, <juicy888.com>, and <cheapjuciyshop.com> domain names.
3. Respondent registered and used the <juicycouture2sale.com>, <juicy888.com>, and <cheapjuciyshop.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Juicy Couture, Inc., offers women’s casual attire and maternity wear, jewelry, men’s and children’s apparel, accessories, and other products. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the JUICY mark (e.g., Reg. No. 2,285,232 issued October 12, 1999). Complainant also holds trademark registrations with the USPTO for the JUICY COUTURE mark (e.g., Reg. No. 2,348,674 issued May 9, 2000).
Respondent, bai li hua, registered the <juicycouture2sale.com>, <juicy888.com>, and <cheapjuciyshop.com> domain names on April 10, 2010. The <juicycouture2sale.com> domain name resolves to a website that offers for sale counterfeit versions of Complainant’s products. The <juicy888.com> and <cheapjuciyshop.com> domain names resolve to inactive websites.
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 trademark registrations sufficiently prove its rights in the JUICY and JUICY COUTURE marks pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Furthermore, the Panel finds it irrelevant whether Complainant holds trademark registrations with the trademark authority in the country in which Respondent resides. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <juicy888.com> and <cheapjuciyshop.com> domain names are confusingly similar to its JUICY mark. Complainant argues that attaching a string of indiscriminate numbers to its JUICY mark does not sufficiently distinguish Respondent’s <juicy888.com> domain name from its mark. Complainant also argues that combining the generic terms “cheap” and “shop” with a misspelled version of its JUICY mark does not render Respondent’s <cheapjuciyshop.com> domain name distinct from its mark. Finally, Complainant asserts the affixation of the generic top-level domain (“gTLD”) “.com’ is irrelevant for Policy ¶ 4(a)(i) purposes. The Panel agrees with Complainant’s assertions. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks; see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); 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). Therefore, the Panel finds Respondent’s <juicy888.com> and <cheapjuciyshop.com> domain names are confusingly similar to Complainant’s JUICY mark under Policy ¶ 4(a)(i).
Respondent’s <juicycouture2sale.com> is also confusingly similar to its JUICY COUTURE mark. Respondent fully incorporates Complainant’s mark in the disputed domain name and merely omits the space between the words “juicy” and “couture.” Respondent also adds the numeral “2” and the generic term “sale” to Complainant’s mark. Finally, Respondent attaches the gTLD “.com” to Complainant’s mark in the disputed domain name. The Panel finds these additions do not sufficiently distinguish Respondent’s domain name from Complainant’s mark. 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 Am. Online, Inc. v. Fu, supra; see also Disney Enters. Inc. v. McSherry, supra; see also Trip Network Inc. v. Alviera, supra. Therefore, the Panel finds Respondent’s <juicycouture2sale.com> is confusingly similar to Complainant’s JUICY COUTURE mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <juicycouture2sale.com>, <juicy888.com>, and <cheapjuciyshop.com> domain names under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests. 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Despite Respondent’s failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant alleges it has not authorized Respondent to use its JUICY or JUICY COUTURE marks in a domain name. The WHOIS information lists “bai li hua” as the registrant of the disputed domain names, which the Panel finds is not similar to any of the <juicycouture2sale.com>, <juicy888.com>, and <cheapjuciyshop.com> domain names. With no evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); 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 submits screen shots of the websites resolving from Respondent’s disputed domain names. An image of the website resolving from the <juicycouture2sale.com> domain name shows a site that offers for sale counterfeit versions of Complainant’s products, along with Complainant’s JUICY COUTURE mark and logo prominently displayed. The <juicy888.com> and <cheapjuciyshop.com> domain names resolve to inactive websites. Based on the evidence in the record, the Panel concludes Respondent uses the <juicycouture2sale.com> domain name to offer for sale counterfeit versions of Complainant’s products, and the <juicy888.com> and <cheapjuciyshop.com> domain names resolve to inactive websites. Accordingly, the Panel finds Respondent does not use the disputed domain names to make 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 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).”); see also VICORP Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding that the respondent’s failure to use the disputed domain name for several years was not 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)); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds Respondent uses the <juicycouture2sale.com> domain name to redirect Internet users seeking Complainant’s products to Respondent’s competing website. Therefore, the Panel finds the <juicycouture2sale.com> domain name disrupts Complainant’s business, which is evidence of bad faith 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 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 also finds Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's JUICY COUTURE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or a product or service on Respondent’s site. The <juicycouture2sale.com> domain name is confusingly similar to Complainant’s JUICY COUTURE mark and the resolving website prominently displays Complainant’s mark and logo. Finally, Respondent likely profits from its use of the disputed domain name through the sale of counterfeit versions of Complainant’s official products. Therefore, the Panel finds Respondent has engaged in bad faith under 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 Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> 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).”).
The Panel finds failure to make active use of a domain name can constitute bad faith use when the domain name registration occurred after the complainant acquired rights in a mark. See Accor v. Value-Domain Com, Value Domain, D2009-1797 (WIPO Feb. 8, 2010) (finding bad faith use where respondent passively held the domain name and the domain name registration occurred approximately 19 years after the complainant had filed trademark registrations in the mark); see also OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding, FA 1328894 (Nat. Arb. Forum July 20, 2010) (the panel found bad faith use where respondent failed to make active use of the disputed domain name and the respondent registered the domain name approximately 7 years after the complainant registered its trademark with the USPTO). Here, Respondent registered the <juicy888.com> and <cheapjuciyshop.com> domain names on April 10, 2010, over a decade after Complainant acquired rights in the JUICY mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,285,232 issued October 12, 1999). Therefore, the Panel finds Respondent’s passive holding of the <juicy888.com> and <cheapjuciyshop.com> domain names constitutes bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <juicycouture2sale.com>, <juicy888.com>, and <cheapjuciyshop.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 22, 2010
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