Juicy Couture, Inc. v. Richard Sloman
Claim Number: FA 1357391
Complainant is Juicy Couture, Inc. (“Complainant”), represented by Holly Pranger of Pranger Law Group, California, USA. Respondent is Richard Sloman (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <salejuicy.com>, registered with Enom, Inc.
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.
Tyrus R. Atkinson, Jr. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 9, 2010; the National Arbitration Forum received payment on November 9, 2010.
On November 10, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <salejuicy.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@salejuicy.com. Also on November 12, 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 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <salejuicy.com> domain name is confusingly similar to Complainant’s JUICY mark.
2. Respondent does not have any rights or legitimate interests in the <salejuicy.com> domain name.
3. Respondent registered and used the <salejuicy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Juicy Couture, Inc., is a large clothing and accessories company that sells goods worldwide. Complainant owns multiple trademark registrations in its JUICY mark with the United State Patent and Trademark Office (“USPTO”). (e.g., Reg. No. 2,285,232 issued October 12, 1999). Complainant uses this mark to market, promote, and sell its goods.
Respondent, Richard Sloman, registered the disputed domain name on August 2, 2010. The disputed domain name resolves to a website that sells counterfeit versions of Complainant’s products. Respondent presumably earns revenue from the sale of these goods.
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 contends that it has established its rights in the mark by registering it with the USPTO (e.g., Reg. No. 2,285,232 issued October 12, 1999), a federal trademark authority. Previous panels have found that trademark registration with a federal trademark authority provides affirmative evidence of established rights in a mark. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also 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). The Panel finds that Complainant has established rights in the JUICY mark under Policy ¶ 4(a)(i) through its trademark registration with the USPTO.
Complainant also contends that Respondent’s <salejuicy.com>
domain name is confusingly similar to its own JUICY mark. The disputed
domain name includes Complainant’s entire JUICY mark while only adding the
generic term “sale” and the generic top-level domain (“gTLD”) “.com.” The
Panel finds that Respondent’s <salejuicy.com> domain name is
confusingly similar to Complainant’s JUICY mark and that Respondent has failed
to differentiate it from the mark by adding the generic term “sale” and the
gTLD “.com.” 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 Jerry Damson,
Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007)
(“The mere addition of a generic top-level domain (“gTLD”) “.com” does not
serve to adequately distinguish the Domain Name from the mark.”). Therefore,
the Panel finds that Respondent’s <salejuicy.com> domain name is
confusingly similar to Complainant’s JUICY mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
The Panel finds that Complainant has met its burden of proof, as required by Policy ¶ 4(a)(ii), by making a prima facie case against Respondent. Previous panels have found that the burden shifts to Respondent to prove that it has rights or legitimate interests in the disputed domain name once Complainant has made its prima facie case. When a Respondent fails to file a Response to the initial Complaint, the Panel may infer that Respondent does not have any rights or legitimate interests in the disputed domain name <salejuicy.com>. Even without a Response the Panel will still examine all the evidence on record to determine whether Respondent has rights or legitimate interests in the disputed 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 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 contends that Respondent is not commonly known by the domain name <salejuicy.com>. Respondent has not provided any evidence to show that it is known by the <salejuicy.com> domain name. The WHOIS information does not include any evidence indicating that Respondent is known as <salejuicy.com>. Respondent’s name, Richard Sloman, is not similar to the <salejuicy.com> domain name. Thus, the Panel finds that Respondent is not commonly known by the <salejuicy.com> domain name pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also contends that Respondent is not engaging in any bona fide offering of goods or services or making a legitimate non-commercial or fair use of the <salejuicy.com> domain name. Respondent uses the disputed domain name to resolve to site that sells clothing and other items emblazoned with Complainant’s JUICY mark. Complainant asserts that all items on the site are not actually Complainant’s products but are counterfeit items. Respondent ostensibly makes money off of the sale of these counterfeit goods. The Panel finds that Respondent’s use of the <salejuicy.com> domain to sell counterfeit JUICY products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a non-commercial or fair use pursuant to 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 MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <salejuicy.com> domain name resolves to a site that sells unlicensed counterfeit goods bearing Complainant’s JUICY mark. Complainant contends that the domain name used by Respondent disrupts its business by diverting Internet users to its own confusingly similar site and selling goods that appear to be made by Complainant but are not. The Panel finds that Respondent’s use of the confusingly similar <salejuicy.com> domain name to divert users to its own site to sell its own counterfeit products constitutes a disruption of Complainant’s business and is evidence of bad faith registration under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); 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 infers that Respondent receives income from the sale of counterfeit versions of Complainant’s goods from its <salejuicy.com> domain name. Respondent uses the confusingly similar disputed domain name to attract Complainant’s intending customers. Once arriving at Respondent’s resolving website, Internet users may become confused as to Complainant’s sponsorship or, or affiliation with, the disputed domain name, resolving website, and goods for sale. The Panel finds that Respondent’s registration and use of the <salejuicy.com> domain name constitues bad faith under Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also 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)
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <salejuicy.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 16, 2010
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