Juicy Couture, Inc. v. Zhang Zhi
Claim Number: FA1010001354462
Complainant is Juicy Couture, Inc. (“Complainant”), represented by Holly Pranger of Pranger Law Group, California, USA. Respondent is Zhang Zhi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <juicycouturesoutlets.net>, <ijuicycouture.net>, and <ijuicycoutureoutlets.com>, registered with Xin Net Technology Corporation.
The domain name at issue is <ijuicycoutureoutlet.com>, registered with Hichina Zhicheng Technology Ltd.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2010; the National Arbitration Forum received payment on October 25, 2010. The Complaint was submitted in both Chinese and English.
On October 26, 2010, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <juicycouturesoutlets.net>, <ijuicycouture.net>, and <ijuicycoutureoutlets.com> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 27, 2010, Hichina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <ijuicycoutureoutlet.com> domain name is 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 2, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of November 22, 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@juicycouturesoutlets.net, postmaster@ijuicycouture.net, postmaster@ijuicycoutureoutlet.com, and postmaster@ijuicycoutureoutlets.com. Also on November 2, 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 November 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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.
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 <juicycouturesoutlets.net>, <ijuicycouture.net>, <ijuicycoutureoutlet.com>, and <ijuicycoutureoutlets.com> domain names are confusingly similar to Complainant’s JUICY COUTURE mark.
2. Respondent does not have any rights or legitimate interests in the <juicycouturesoutlets.net>, <ijuicycouture.net>, <ijuicycoutureoutlet.com>, and <ijuicycoutureoutlets.com> domain names.
3. Respondent registered and used the <juicycouturesoutlets.net>, <ijuicycouture.net>, <ijuicycoutureoutlet.com>, and <ijuicycoutureoutlets.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Juicy Couture Inc., operates an international clothing business selling everything from sunglasses and handbags to men’s and women’s apparel. Complainant registered its JUICY COUTURE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,348,674 issued May 8, 2000).
Respondent, Zhang Zhi, registered the each of the disputed domain names no earlier than May 6, 2010. The disputed domain names all resolve to websites using Complainant’s mark to sell third party good and services. The <juicycouturesoutlets.net> domain name specifically resolves to a website selling third party counterfeit goods in addition to the third party goods and services associated with the other disputed domain names.
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.
Complainant alleges it has established rights in the JUICY COUTURE mark based on its registration of the mark with the USPTO (e.g., Reg. No. 2,348,674 issued May 8, 2000). Complainant notes that previous panels have concluded that registration with a federal trademark authority is sufficient to establish rights in a mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Accordingly, the Panel concludes Complainant’s trademark registration of the JUICY COUTURE mark with the USPTO (e.g., Reg. No. 2,348,674 issued May 8, 2000) establishes rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <juicycouturesoutlets.net>, <ijuicycouture.net>, <ijuicycoutureoutlet.com>, and <ijuicycoutureoutlets.com> disputed domain names are confusingly similar to its JUICY COUTURE mark. Each of the domain names incorporates Complainant’s mark in its entirety. Complainant contends that adding letters such as “s” or “i” either before or after Complainant’s mark does not create a new, unique domain name. Complainant also contends that adding generic words to its mark, such as “outlets” or “outlet,” in addition to a generic top-level domain (“gTLD”), such as “.com” or “.net,” does not remove a domain name from the realm of confusing similarity. Finally, Complainant alleges that removing a space between terms in its JUICY COUTURE mark is irrelevant to determining whether a disputed domain name is confusingly similar to a registered mark. Previous panels have held that similar alterations fail to sufficiently distinguish a disputed domain name from a complainant’s mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Pursuant to the rules established by previous panels, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s JUICY COUTURE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been established.
Under Policy ¶ 4(a)(ii), the burden lies with Complainant to prove that Respondent does not have rights or legitimate interests in the disputed domain names. Once Complainant has made a prima facie showing in support of its allegations, the burden then shifts to Respondent to show it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). The Panel finds that Complainant has made a prima facie showing and because Respondent failed to make a timely response, the Panel may assume that Respondent lacks rights or legitimate interests in the disputed domain names. 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 Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). However, the Panel chooses to consider the evidence to determine whether Respondent owns any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant asserts in its Complaint, without contradiction from Respondent, that Respondent is not commonly known by any of the <juicycouturesoutlets.net>, <ijuicycouture.net>, <ijuicycoutureoutlet.com>, and <ijuicycoutureoutlets.com> disputed domain names and that Respondent is not authorized to use Complainant’s JUICY COUTURE mark. The Panel can find no evidence in the record that would provide a solid foundation for determining that Respondent is commonly known by the disputed domain names. Additionally, the information in the WHOIS database lists the registrant of the disputed domain names as “Zhang Zhi,” which Complainant alleges is not similar to any of the registered domain names. Thus, the Panel finds that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was 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).
The disputed domain names resolve to websites offering either competing or counterfeit products or unrelated third-party goods and services. Thus, the Panel finds that Respondent is redirecting Internet users seeking Complainant’s products to Respondent’s own websites for commercial gain. Therefore, the Panel concludes that Respondent has not used the disputed domain names in connection with 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 Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel finds Policy ¶ 4(a)(ii) has been established.
Respondent uses the disputed domain names to sell counterfeit products in addition to other unrelated services. Complainant alleges that Internet users interested in Complainant’s clothing products may instead purchase counterfeit or competing clothing products because of Respondent’s confusingly similar domain names. Accordingly, the Panel finds that Respondent’s use of the disputed domain names does disrupt Complainant’s clothing business, which constitutes bad faith registration and pursuant to Policy ¶ 4(b)(iii). 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 Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”)
The Panel is persuaded from the facts alleged in the record that Internet users seeking Complainant’s fashion products are likely to be confused as to whether Complainant is the possible source or sponsor of Respondent’s website offering competing or counterfeit products under the JUICY COUTURE mark. The Panel also finds that by diverting Internet users to Respondent’s own websites and promoting goods and services that are unrelated to Complainant, Respondent is taking advantage of the confusing similarity between the disputed domain names and Complainant’s mark in order to profit from the confusion. The Panel finds that the two uses of the disputed domain names as outlined above constitute bad faith registration and use under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hun, 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 Goto.com, Inc., v. Walt Disney Co., 202 F.3d 1199, 1206 (9th Cir. 2000) (“With respect to Internet services, even services that are not identical are capable of confusing the public.”).
The Panel finds Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <juicycouturesoutlets.net>, <ijuicycouture.net>, <ijuicycoutureoutlet.com>, and <ijuicycoutureoutlets.com> disputed domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: November 30, 2010
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