Juicy Couture, Inc. v. Tomas and Tang XH
Claim Number: FA1012001362740
Complainant is Juicy Couture, Inc. (“Complainant”), represented by Holly Pranger of Pranger Law Group, California, USA. Respondent is Tomas and Tang XH (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <juicycoutureshopping.com> and <tigerjuicy.com>, registered with Xin Net Technology Corporation.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 9, 2010; the National Arbitration Forum received payment on December 9, 2010. The Complaint was submitted in both Chinese and English
On December 12, 2010, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <juicycoutureshopping.com> and <tigerjuicy.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 December 14, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of January 3, 2011 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@juicycoutureshopping.com and postmaster@tigerjuicy.com. Also on December 14, 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 January 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 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 <juicycoutureshopping.com> domain name is confusingly similar to Complainant’s JUICY COUTURE mark.
Respondent’s <tigerjuicy.com> domain name is confusingly similar to Complainant’s JUICY mark.
2. Respondent does not have any rights or legitimate interests in the <juicycoutureshopping.com> and <tigerjuicy.com> domain names.
3. Respondent registered and used the <juicycoutureshopping.com> and <tigerjuicy.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Juicy Couture, Inc., sells women’s casual attire, maternity wear, jeans, jewelry, men’s and children’s apparel, toiletries and soaps, paper and printed matter, and accessories like eyeglasses, handbags, luggage, tote bags, umbrellas and wallets. Complainant sells its products at high-end department stores, specialty fashion boutiques and in standalone JUICY COUTURE stores. Complainant owns numerous trademark registrations for the JUICY COUTURE and JUICY marks with the United States Patent and Trademark Office (“USPTO”):
JUICY Reg. No. 2,285,232 issued October 12, 1999;
JUICY Reg. No. 2,995,654 issued September 13, 2005;
JUICY Reg. No. 3,038,147 issued January 3, 2006;
JUICY Reg. No. 3,633, 187 issued June 2, 2009;
JUICY Reg. No. 3,763,190 issued March 21, 2010;
JUICY Reg. No. 3,762,789 issued March 23, 2010;
JUICY COUTURE Reg. No. 2,348,674 issued May 9, 2000;
JUICY COUTURE Reg. No. 2,882,279 issued September 7, 2004;
JUICY COUTURE Reg. No. 2,978,046 issued July 26, 2005;
JUICY COUTURE Reg. No. 3,146,100 issued September 19, 2006; and
JUICY COUTURE Reg. No. 3,194,741 issued January 2, 2007.
Respondent, Tomas and Tang XH, registered the <juicycoutureshopping.com> domain name on March 16, 2009 and the <tigerjuicy.com> domain name on June 25, 2009. Both disputed domain names resolve to websites featuring Complainant’s JUICY and JUICY COUTURE marks and promotional materials and offering third party counterfeit 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 owns numerous trademark registrations for the JUICY COUTURE and JUICY marks with the USPTO:
JUICY Reg. No. 2,285,232 issued October 12, 1999;
JUICY Reg. No. 2,995,654 issued September 13, 2005;
JUICY Reg. No. 3,038,147 issued January 3, 2006;
JUICY Reg. No. 3,633, 187 issued June 2, 2009;
JUICY Reg. No. 3,763,190 issued March 21, 2010;
JUICY Reg. No. 3,762,789 issued March 23, 2010;
JUICY COUTURE Reg. No. 2,348,674 issued May 9, 2000;
JUICY COUTURE Reg. No. 2,882,279 issued September 7, 2004;
JUICY COUTURE Reg. No. 2,978,046 issued July 26, 2005;
JUICY COUTURE Reg. No. 3,146,100 issued September 19, 2006; and
JUICY COUTURE Reg. No. 3,194,741 issued January 2, 2007.
The Panel finds that such extensive trademark registrations with the USPTO provide sufficient evidence to prove Complainant’s rights in the JUICY COUTURE and JUICY marks pursuant to Policy ¶ 4(a)(i), even though Respondent does not live or operate in the jurisdiction where the marks are registered. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that Respondent’s <juicycoutureshopping.com> domain name is confusingly similar to Complainant’s JUICY COUTURE mark because the disputed domain name includes Complainant’s mark without the space between terms and adds only the generic term “shopping” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding a generic term such as “shopping” to Complainant’s mark does not affect the confusing similarity of the disputed domain name to Complainant’s mark. See Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). The Panel also finds that failing to include the space between terms and adding the gTLD “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis as spaces are not permitted and gTLDs are required in domain names. See 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.”). The Panel thus finds that Respondent’s <juicycoutureshopping.com> domain name is confusingly similar to Complainant’s JUICY COUTURE mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <tigerjuicy.com> domain name is confusingly similar to Complainant’s JUICY mark because the disputed domain name consists of the JUICY mark plus the generic term “tiger” and the gTLD “.com.” The Panel finds that adding generic terms like “tiger” to Complainant’s mark does not remove the disputed domain names from the realm of confusing similarity. 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 Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). The Panel also finds that the presence of a gTLD has no effect on preventing confusing similarity. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel thus finds that Respondent’s <tigerjuicy.com> domain name is confusingly similar to Complainant’s JUICY mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names. Once Complainant establishes a prima facie case in support of its allegations, Policy ¶ 4(a)(ii) requires the burden to shift to Respondent to prove it has rights and legitimate interests in the disputed domain names. The Panel concludes that Complainant has established a prima facie case based on the arguments contained in the Complaint, and Respondent has failed to submit a Response to these proceedings. 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 Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”). Nevertheless, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names.
Complainant argues that Respondent’s personal name is not “juicy” or “juicy couture” and that Respondent does not engage in any lawful business under those names. Complainant asserts that Respondent is not a licensee of Complainant and has not been authorized by Complainant to use Complainant’s marks. The WHOIS information for both disputed domain names lists the registrant as “Tomas and Tang XH.” The Panel finds that this name has no connection to the disputed domain names, and therefore, Respondent is not commonly known by <juicycoutureshopping.com> and <tigerjuicy.com> domain names and is without rights and legitimate interests according to Policy ¶ 4(c)(ii). See 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); see also 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).
Complainant contends that the <juicycoutureshopping.com> and <tigerjuicy.com> domain names resolve to commercial websites selling counterfeit JUICY COUTURE products. Complainant asserts, and the Panel agrees, that this use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) or 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 Louis Vuitton Malletier S.A., L.L.C. v. david, FA 1213021 (Nat. Arb. Forum Aug. 11, 2008) (holding that Complainant’s sale of counterfeit or fake versions of Complainant’s products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s resolving websites at the <juicycoutureshopping.com> and <tigerjuicy.com> domain names offer counterfeit versions of Complainant’s products for sale. As these counterfeit products mimic Complainant’s actual products, they clearly compete with Complainant for the same customers and disrupt Complainant’s business. The Panel finds that using Complainant’s mark in the disputed domain names that sell counterfeit versions of Complainant’s product is evidence of bad faith registration and use according to Policy ¶ 4(b)(iii). See Juicy Couture, Inc. v. Chinasupply c/o Longli, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (concluding that “Respondent’s diversionary use of the disputed domain name to sell counterfeit versions of Complainant’s products has disrupted Complainant’s business” and shows bad faith registration and use according to Policy ¶ 4(b)(iii)); see also 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).”).
Complainant contends that Respondent uses Complainant’s JUICY COUTURE and JUICY marks in the <juicycoutureshopping.com> and <tigerjuicy.com> domain names in an effort to attract Complainant’s customers to Respondent’s websites. Complainant argues that Respondent also uses Complainant’s marks and promotional images on the resolving websites, which further misleads consumers and creates an impression that Respondent is somehow affiliated with or sponsored by Complainant. Complainant asserts that Respondent uses the disputed domain names to sell counterfeit versions of Complainant’s products, thus profiting from the confusion it creates and the misleading use of Complainant’s mark. The Panel finds these activities demonstrate bad faith registration and use under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <juicycoutureshopping.com> and <tigerjuicy.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: January 10, 2011
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