Lucchese, Inc. v Bin Jiang
Claim Number: FA 1361116
Complainant is Lucchese, Inc. (“Complainant”), represented by Thomas W. Brooke of Holland & Knight LLP, Washington D.C., USA. Respondent is Bin Jiang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lucchese-boots-wholesale.com>, registered with GoDaddy.com, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 1, 2010; the National Arbitration Forum received payment on December 2, 2010.
On December 2, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <lucchese-boots-wholesale.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 December 6, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@lucchese-boots-wholesale.com. Also on December 6, 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 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lucchese-boots-wholesale.com> domain name is confusingly similar to Complainant’s LUCCHESE mark.
2. Respondent does not have any rights or legitimate interests in the <lucchese-boots-wholesale.com> domain name.
3. Respondent registered and used the <lucchese-boots-wholesale.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Lucchese, Inc., makes and sells high quality cowboy boots. Complainant markets its products under the LUCCHESE mark, which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 916,764 issued July 20, 1971).
Respondent, Bin Jiang, registered the disputed domain name <lucchese-boots-wholesale.com> on July 6, 2010. The disputed domain name resolves to a website that purports to sell Complainant’s products. The website uses the stylized version of Complainant’s mark as well as displays several pictures of Complainant’s products accompanied by hyperlinks allowing Internet users to buy the pictured 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.
The Panel finds that Complainant has established rights in the LUCCHESE mark pursuant to Policy ¶ 4(a)(i) through registration with the USPTO (Reg. No. 916,764 issued July 20, 1971). 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).”). The Complainant need not show that it holds these rights in Respondent’s jurisdiction only that it has rights to the mark in some jurisdiction. See 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).
The Panel also finds that Respondent’s domain name is confusingly similar to Complainant’s LUCCHESE mark. Respondent has merely combined the mark with two additional terms. The first term, “boots,” is merely descriptive of the type of goods Complainant sells. Such descriptive terms fail to distinguish a domain name from a preexisting mark. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). The second term, “wholesale,” is a generic term and also fails to distinguish the domain name. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Respondent has also added hyphens and a generic-top-level domain (“gTLD”) “.com.” As punctuation and gTLD’s are irrelevant to the Policy ¶ 4(a)(i) analysis, they also do not provide any distinctive value. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, the Panel finds Respondent’s <lucchese-boots-wholesale.com> is confusingly similar to Complainant’s LUCCHESE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that the requirements of Policy ¶ 4(a)(i) are met.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <lucchese-boots-wholesale.com> domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) once Complainant makes a prima facie case in support of its allegations. In light of the evidence provided, the Panel finds Complainant has made a sufficient prima facie case. Because the Respondent has failed to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <lucchese-boots-wholesale.com> 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 Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(i). The domain name’s WHOIS information indicates that the domain name registrant is commonly known by “Bin Jiang” and not by the domain name. See 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); See also 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).
The Panel further finds that Respondent’s use of the domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Respondent uses the confusingly similar domain name <lucchese-boots-wholesale.com> to sell Complainant’s goods. Complainant contends the goods offered by Respondent are unauthorized and/or counterfeit. Respondent is thus redirecting Internet users attempting to reach Complainant’s web presence to its own website. Previous panels have found that a Respondent using a confusingly similar domain name to sell unauthorized or counterfeit goods has neither made a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also 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).”).
The Panel finds that the requirements of Policy ¶ 4(a)(ii) are met.
The Panel finds Respondent’s intent to disrupt Complainant’s business evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iii). Respondent has registered and operated the confusingly similar domain name in order to compete with Complainant’s business. Respondent’s sales directly compete with Complainant’s sales. The competitive use of a confusingly similar domain name indicates 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 Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant). Therefore, the Panel finds Respondent’s registration and use was in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant contends that Respondent registered and operated the domain name in order attract users to its own website for profit. Respondent’s registration and use of the domain name is intended to create confusion regarding the website’s affiliation with Complainant. Use of a confusingly similar domain name to attract Internet users for profit using consumer confusion is evidence of bad faith registration and use. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Accordingly, the Panel finds the presence bad faith pursuant to Policy ¶4(b)(iv).
The Panel finds that the requirements of Policy ¶ 4(a)(iii) are 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 <lucchese-boots-wholesale.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 10, 2011
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