Juicy Couture, Inc. v. Wei Wang
Claim Number: FA1009001345212
Complainant is Juicy Couture, Inc. (“Complainant”), represented by Holly Pranger, of Pranger Law Group, California, USA. Respondent is Wei Wang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fashionjuicystore.com>, registered with Enom, Inc.
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 September 7, 2010.
On September 8, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <fashionjuicystore.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 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@fashionjuicystore.com by e-mail. Also on September 15, 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 October 18, 2020, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a designer and distributor of jewelry, clothing, accessories, handbags, and other fashion related products that are sold through high-end department stores.
Complainant owns registrations with the United States Patent and Trademark Office ("USPTO") for its JUICY mark (including Reg. No. 2,285,232, issued October 12, 1999).
Respondent is not commonly known by the <fashionjuicystore.com> domain name.
Respondent is not authorized or licensed to use Complainant’s JUICY mark.
Respondent registered the <fashionjuicystore.com> domain name on May 1, 2009.
Respondent’s domain name resolves to a website that offers for sale counterfeit products of Complainant bearing Complainant’s JUICY mark without its authorization.
Respondent’s <fashionjuicystore.com> domain name is confusingly similar to Complainant’s JUICY mark.
Respondent does not have any rights or legitimate interests in the domain name <fashionjuicystore.com>.
Respondent registered and uses the <fashionjuicystore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name 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 established rights in its JUICY mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. 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 a mark in some jurisdiction).
Respondent’s <fashionjuicystore.com> domain name is confusingly similar to Complainant’s JUICY trademark under Policy ¶ 4(a)(i). The disputed domain name contains Complainant’s mark in its entirety, merely adding the descriptive term “fashion” and the generic term “store,” both of which relate to Complainant’s business, together with the generic top-level domain (“gTLD”) “.com.” See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name there in dispute contains the identical mark of a complainant combined with a generic word or term); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007):
The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
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).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have rights to or legitimate interests in the <fashionjuicystore.com> domain name. Once Complainant makes out a prima facie case in support of its allegations in this regard, the burden shifts to Respondent to prove that it does have rights to or legitimate interests in the disputed domain name. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000):
Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.
Complainant has made out a sufficient prima facie case under this head of the Complaint. Owing to Respondent’s failure to respond to the Complaint, we are permitted to presume that Respondent does not have rights to or legitimate interests in the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for a panel to draw adverse inferences from a respondent’s failure to reply to a complaint filed under the Policy). Nonetheless, we will 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 the disputed domain name which are cognizable under the Policy.
We begin by observing that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the <fashionjuicystore.com> domain name, and that Respondent is not authorized or licensed to use Complainant’s JUICY mark. Moreover, the WHOIS information identifies the domain name registrant only as “Wei Wang,” which does not resemble the domain name. On this record, we must conclude that Respondent has failed to demonstrate that it is commonly known by the disputed domain name so as to have rights to or legitimate interests in the contested domain name within the meaning of Policy ¶ 4(c)(ii). See, for example, M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We also note that there is no dispute as to Complainant’s allegation that Respondent’s <fashionjuicystore.com> domain name resolves to a website that sells counterfeit versions of Complainant’s products bearing Complainant’s JUICY mark without its authorization. Respondent’s use of the confusingly similar domain name to sell counterfeit versions of Complainant’s products does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <fashionjuicystore.com> domain name 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 to sell counterfeit versions of Complainant’s products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
See also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of a complainant’s mark to sell its perfume, as well as other brands of perfume, is not a bona fide use of a contested domain name).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses its <fashionjuicystore.com> domain name to resolve to a website selling counterfeit versions of Complainant’s products containing Complainant’s JUICY mark. Respondent’s use of the domain name in this fashion constitutes bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from a respondent, a watch dealer not otherwise authorized to sell a complainant’s goods, to the complainant); see also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001), finding bad faith where:
Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its … equipment.
Respondent presumably profits from the sale of counterfeit clothing and accessories on the website resolving from the <fashionjuicystore.com> domain name. Respondent’s use of a domain name confusingly similar to Complainant’s mark to sell counterfeit versions of Complainant’s products likely causes Internet users to become confused as to Complainant’s possible affiliation with the disputed domain name, resolving website, and featured counterfeit products. Respondent’s use of the <fashionjuicystore.com> domain name for such a purpose constitutes bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use of a contested domain name pursuant to Policy ¶ 4(b)(iv) where the domain resolved to a website that offered products similar to those sold under a complainant’s mark); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that a respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where that respondent was not authorized to sell a complainant’s goods).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <fashionjuicystore.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 19, 2010
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