Juicy Couture, Inc. v. Chen Hao
Claim Number: FA1009001349605
Complainant is Juicy Couture, Inc. ("Complainant"), represented by Holly Pranger of Pranger Law Group, California, USA. Respondent is Chen Hao ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juicycouture.cc>, registered with 1 API GMBH.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 30, 2010; the National Arbitration Forum received payment on September 30, 2010.
On October 1, 2010, 1 API GMBH confirmed by e-mail to the National Arbitration Forum that the <juicycouture.cc> domain name is registered with 1 API GMBH and that Respondent is the current registrant of the name. 1 API GMBH has verified that Respondent is bound by the 1 API GMBH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 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@juicycouture.cc. Also on October 1, 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 November 3, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <juicycouture.cc> domain name is identical to Complainant’s JUICY COUTURE mark.
2. Respondent does not have any rights or legitimate interests in the <juicycouture.cc> domain name.
3. Respondent registered and used the <juicycouture.cc> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Juicy Couture, Inc., is a designer, manufacturer and distributor of women’s, men’s and children’s clothing and accessories. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its JUICY COUTURE mark (e.g., Reg. No. 2,348,674 issued May 9, 2000).
Respondent, Chen Hao, registered the <juicycouture.cc> domain name on April 18, 2010. Respondent’s disputed domain name resolves to a website that states that it is “a professional juicy couture outlet” which markets and promotes third-party counterfeit goods 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 has established rights in its JUICY COUTURE mark under Policy ¶ 4(a)(i) through its trademark registrations of the mark with the USPTO (e.g., Reg. No. 2,348,674 issued May 9, 2000). 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).”). The Panel notes that while Complainant claims to have a trademark registration with the Chinese State Intellectual Property Office (“SIPO”), Complainant failed to supply the Panel with sufficient information of such registration. However, the Panel further finds that Complainant need not own a trademark registration in the country of Respondent’s residence in order to establish rights in its mark under Policy ¶ 4(a)(i). See 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 contends that Respondent’s <juicycouture.cc> domain name is identical to Complainant’s JUICY COUTURE mark. The Panel notes that the domain name contains Complainant’s mark entirely while deleting the space between the terms of Complainant’s mark and adding the country-code top-level domain (“ccTLD”) “.cc.” Therefore, the Panel finds that Respondent’s disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark); Europcar Int’l SA v. New Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002) (“Because top-level domains are required of domain name registrants, their addition has been determined to be inconsequential when conducting an identical analysis under Policy ¶ 4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has contended that Respondent does not have any rights and legitimate interests in the <juicycouture.cc> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights 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.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the <juicycouture.cc> domain name under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <juicycouture.cc> domain name. Complainant alleges that Respondent is not authorized or licensed to use Complainant’s JUICY COUTURE mark. The WHOIS information identifies the domain name registrant as “Chen Hao,” which Complainant contends is not similar to Respondent’s <juicycouture.cc> domain name. Respondent has failed to respond to these allegations and has failed to present evidence that would suggest that Respondent is commonly known by the disputed domain name. The Panel concludes that Respondent is not commonly known by the <juicycouture.cc> domain name pursuant to 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent’s disputed domain name resolves to a website that displays Complainant’s JUICY COUTURE trademarks and copyrighted promotional materials while also being used to offer, sell and promote third-party counterfeit goods of Complainant’s products. Further, Complainant argues that Respondent’s website states that Respondent is “a professional juicy couture outlet,” which Complainant alleges is not true. The Panel finds that Respondent’s use of the disputed domain name to sell unauthorized versions of Complainant’s products, while using Complainant’s marks and promotional material 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 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 Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses its <juicycouture.cc> domain name to resolve to a website selling counterfeit versions of Complainant’s products while extensively using Complainant’s JUICY COUTURE mark and other promotional materials. Respondent is a competitor of Complainant as Internet users interested in Complainant’s clothing and accessory products may purchase the counterfeit versions of Complainant’s products through Respondent’s website instead. Based on Respondent’s competing use of the disputed domain name, the Panel determines Respondent’s use of the <juicycouture.cc> domain name constitutes bad faith registration and use 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 the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“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 CATERPILLAR equipment.”).
Respondent presumably profits from the sale of unauthorized or counterfeit goods that appear to be Complainant’s products on the website resolving from the <juicycouture.cc> domain name. Respondent’s use of a domain name that is identical to Complainant’s mark, coupled with the sale of counterfeit versions of Complainant’s products, likely ensures Internet users will become confused as to Complainant’s affiliation with the disputed domain name, resolving website, and featured counterfeit clothing and accessories. The Panel finds Respondent’s use of the <juicycouture.cc> domain name for such a purpose constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); 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 Policy ¶ 4(a)(iii) has been satisfied by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <juicycouture.cc> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 4, 2010
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