Juicy Couture, Inc. v. juicycouturediscount.com / Private Registration
Claim Number: FA1010001351992
Complainant is Juicy Couture, Inc. (“Complainant”), represented by Holly Pranger of Pranger Law Group, California, USA. Respondent is juicycouturediscount.com / Private Registration (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juicycouturediscount.com >, registered with WEB COMMERCE COMMUNICATIONS LIMITED d/b/a WEBNIC.CC.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 13, 2010; the National Arbitration Forum received payment on October 13, 2010.
On October 14, 2010, WEB COMMERCE COMMUNICATIONS LIMITED d/b/a WEBNIC.CC confirmed by e-mail to the National Arbitration Forum that the <juicycouturediscount.com > domain name is registered with WEB COMMERCE COMMUNICATIONS LIMITED d/b/a WEBNIC.CC and that Respondent is the current registrant of the names. WEB COMMERCE COMMUNICATIONS LIMITED d/b/a WEBNIC.CC has verified that Respondent is bound by the WEB COMMERCE COMMUNICATIONS LIMITED d/b/a WEBNIC.CC 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 18, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@juicycouturediscount.com. Also on October 18, 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 15, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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, 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:
1. Respondent’s <juicycouturediscount.com > domain name is confusingly similar to Complainant’s JUICY COUTURE mark.
2. Respondent does not have any rights or legitimate interests in the <juicycouturediscount.com > domain name.
3. Respondent registered and used the <juicycouturediscount.com > domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Juicy Couture, Inc., began operation in 1997 in the United States and officially formed as a company in 2000. Complainant is in the business of retail apparel and general accessories and uses their mark to promote and sell there goods. It provides clothing, shoes, bags, and other items for retail sales. Complainant currently owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its JUICY mark (e.g., Reg. No. 2,285,232 issued October 12, 1999) and JUICY COUTURE (e.g., Reg. No. 2,978,046 issued July 26, 2005) used in conjunction with the aforementioned retail items. .
Respondent registered the disputed domain name, <juicycouturediscount.com>, with the registrar on April 17, 2009. The site resolves to an online store selling clothing and other accessories that bear the JUICY COUTURE mark.
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.
It is Complainant’s contention that through registration of its marks with federal trademark authorities that it has established its rights in those marks. Previous panels have found that trademark registration with federal trademark authorities provides affirmative evidence of established rights in the mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Thermo Electron Corp. v. Xiu, FA 713851 ( Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). While Complainant alleges to have trademark rights in its JUICY COUTURE mark with China’s State Intellectual Property Office (“SIPO”), Complainant does not provide evidence of such trademark registrations. However, previous panels have found that a Complainant is not required to have registered it’s mark in the Respondent’s country of residence. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered it’s mark in the country of the respondent’s residence). Complainant in this case holds registered trademarks with the USPTO for its JUICY (e.g., Reg. No. 2,285,232 issued October 12, 1999) and JUICY COUTURE marks (e.g., Reg. No. 2,978,046 issued July 26, 2005). Therefore, the Panel finds that Claimant has established rights in the JUICY COUTURE mark under Policy ¶ 4(a)(i) through its trademark registrations.
Complainant contends that Respondent’s <juicycouturediscount.com> domain name is confusingly similar to its own mark, JUICY COUTURE. The domain name in dispute utilizes Complainant’s entire mark while only including the generic term “discount” and the generic top-level domain (“gTLD”) “.com”. The panel finds that the inclusion of the generic term “discount” and the gTLD “.com” fails to differentiate the disputed domain name from Complainant’s mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds that Respondent’s domain name <juicycouturediscount.com>, is confusingly similar to the Complainant’s JUICY COUTURE mark in accordance with Policy ¶ 4(a)(i).
The Panel finds that the requirements of Policy ¶ 4(a)(i) have been met.
Complainant asserts that Respondent lacks rights and legitimate interests in the <juicycouturediscount.com> domain name based upon the fact that it is not commonly known to the public by the <juicycouturediscount.com> name, that it doesn’t engage in any lawful business or commerce under the name, and that Respondent’s personal name is not <juicycouturediscount.com>.
The Panel finds that the Complainant has made a prima facie case in regards to it’s allegations. Previous panels have found that the burden shifts to Respondent to prove it’s ownership of legitimate rights or interests in the disputed mark, after Complainant has met their prima facie burden. The panel may assume that Respondent, whom has failed to respond in this case, does not have legitimate rights or interests in <juicycouturediscount.com> when they fail to respond to the initial complaint. Given that, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations…. unless clearly contradicted by the evidence.”).
Complainant argues Respondent is not commonly known by the domain name <juicycouturediscount.com>. Respondent has not alleged any evidence supporting a finding that it is known by the disputed domain name. The Panel finds no evidence in the record that would provide a basis for finding Respondent is commonly known by the disputed domain name. While the WHOIS information does identify the registrant of the disputed domain name as “juicycouturediscount.com / Private Registration,” the Panel may find that, absent any corroborating evidence, Respondent is still not commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the < juicycouturediscount.com > domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Complainant also asserts that Respondent is not engaging in any lawful business activities relating to the domain name <juicycouturediscount.com>. Respondent uses the domain name to direct traffic to its own website for the apparent purpose of selling clothing and other accessories that bear the JUICY COUTURE mark. Complainant contends that Respondent is not a licensee or authorized outlet of its goods and therefore the goods sold on Respondent’s site must be counterfeit. The Panel determines that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant has satisfied ¶ 4(a)(ii).
Respondent’s <juicycouturediscount.com> domain name resolves to a website that sells goods bearing the Complainant’s mark. Complainant alleges that Respondent’s domain name disrupts its business because customers will go Respondent’s site expecting to purchase Complainant’s goods when they in fact are not. The Panel finds that Respondent’s domain name does disrupt Complainant’s business, which amounts to bad faith registration and use under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)).
Based upon the nature of the Respondent’s site, the Panel can infer that they receive revenue’s from the sale of counterfeit goods using the Complainant’s mark. Complainant’s customers using the Internet could easily come across Respondent’s website and immediately become confused as to the affiliation between Respondent’s <juicycouturediscount.com> domain name and Complainant. Respondent attempts to profit from this confusion by selling counterfeit goods relating to Complainant. The Panel finds that Respondent’s use of confusing domain name for pecuniary gain constitutes bad faith registration pursuant to Policy ¶ 4(b)(iv). 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 Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that the respondent registered and used the domain name primarily for the purpose of disrupting the business of the complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to the complainant’s services under the OPENMAIL mark)
The Panel finds the elements of Policy ¶ 4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <juicycouturediscount.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 17, 2010
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