national arbitration forum

 

DECISION

 

Juicy Couture, Inc. v. Liz Claiborne Inc.

Claim Number: FA1355839

 

PARTIES

 Complainant is Juicy Couture, Inc. (“Complainant”), represented by Holly Pranger of Pranger Law Group, California, USA.  Respondent is Liz Claiborne Inc. (“Respondent”), New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <couturejuicy.org>, registered with Xin Net Technology Corporation.

 

PANEL

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2010; the National Arbitration Forum received payment on November 1, 2010«DateHardCopy».  The Complaint was submitted in both Chinese and English.

 

On November 2, 2010, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <couturejuicy.org> domain name is 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 November 4, 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 24, 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@couturejuicy.org.  Also on November 4, 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 December 2, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <couturejuicy.org> domain name is confusingly similar to Complainant’s JUICY COUTURE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <couturejuicy.org> domain name.

 

3.      Respondent registered and used the <couturejuicy.org> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Juicy Couture, Inc., offers fashion apparel and accessories through high-end departments stores and its own line of stores.  It does so under the marks JUICY and JUICY COUTURE; both the JUICY (Reg. No. 2,285,232 issued October 12, 1999) and the JUICY COUTURE marks (Reg. No. 3,146,100 issued September 19, 2006) are registered with the United States Patent and Trade Office (“USPTO”). 

 

Respondent, Liz Claiborne Inc, registered the disputed domain name <couturejuicy.org>  on June 23, 2010.  The domain name resolves to a website that sells third party counterfeit clothing.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant contends it has sufficient rights in the JUICY COUTURE mark pursuant to Policy ¶ 4(a)(i).  Noting that Complainant has supplied the mark’s USPTO registration for its JUICY (Reg. No. 2,285,232 issued October 12, 1999) and JUICY COUTURE marks (Reg. No. 3,146,100 issued September 19, 2006), the Panel agrees.  Previous panels have held that registration with the USPTO establishes adequate rights under Policy ¶ 4(a)(i).  See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).  Therefore, the Panel finds that Complainant has established rights in its JUICY and JUICY COUTURE marks under Policy ¶ 4(a)(i).

 

Complainant also contends that Respondent’s domain name is confusingly similar to its JUICY COUTURE mark.  Respondent has merely transposed the words of Complainant’s mark and added a generic top-level domain (“gTLD”).  These minor changes fail to distinguish a domain name from a preexisting mark.  See Bloomberg L.P. v. Herrington Hart, NIRT, FA 464790 (Nat. Arb. Forum June 1, 2005) (“The Panel finds that the use of transposed words, similar to transposed letters does not suffice to differentiate the disputed domain name from Complainant’s mark to create a separate and distinct mark.”); see also Toronto Convention & Visitors Ass’n v. This Domain is For Sale, D2001-1463 (WIPO Feb. 25, 2002) (finding that there would be no reason to distinguish between <tourism-toronto.com> and TORONTO TOURISM); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).  Accordingly, the Panel finds that Respondent’s <couturejuicy.org> domain name is confusingly similar to Complainant’s JUICY COUTURE mark under Policy ¶ 4(a)(i).

 

The Panel finds the requirements of ¶ 4(a)(i) are met.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <couturejuicy.org> 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.  Because Respondent has failed to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  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 Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).

 

Complainant contends that Respondent is not commonly known by the domain name.  The Panel finds the evidence in agreement with Complainant.  The WHOIS information shows the registrant’s name to be “Liz Claiborne Inc.”.  As Respondent has not provided  evidence indicating that it is commonly known by the disputed domain name, the Panel finds that it is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).

 

Complainant contends that Respondent’s use of the website is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use.  When the website resolves, the Internet users are presented with the opportunity to purchase counterfeit goods.  Complainant’s trademark is used and pictures of the counterfeit goods are shown.  Previous panels have found that such use of a disputed domain name 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).  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 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 the requirements of ¶ 4(a)(ii) are met.

 

Registration and Use in Bad Faith

 

The Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s business.  As discussed above, Respondent is using a confusingly similar domain name to sell counterfeit JUICY COUTURE merchandise. Respondent’s counterfeit merchandise clearly competes with Complainant’s authentic goods.  The use of a confusingly similar domain name to compete in this manner evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).

 

The Panel also finds that Respondent’s use of the disputed domain name is attracting Internet users through a confusingly similar domain name pursuant to ¶ 4(b)(iv).  Respondent chose the disputed domain name in order to confuse Internet users in regards to the disputed domain name and the source of JUICY COUTURE clothing.  This initial confusion regarding the affiliation between Respondent’s website and Complainant is used to attract Internet users to Respondent’s website.  Once Respondent has attracted these confused Internet users, it presents them with the opportunity to purchase counterfeit goods.  The Panel presumes that Respondent benefits from these sales in some way.  This is an example of using a confusingly similar domain name to attract Internet users pursuant to ¶ 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 Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).  The Panel finds accordingly.

 

The Panel finds the requirements of ¶ 4(a)(iii) are met.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <couturejuicy.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  December 7, 2010

 

 

 

 

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