Juicy Couture, Inc. v. yang ma
Claim Number: FA1012001362741
Complainant is Juicy Couture, Inc. (“Complainant”), represented by Holly Pranger of Pranger Law Group, California, USA. Respondent is yang ma (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juicycoutureoutlet-store.com>, registered with GoDaddy.com, 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.
Honorable Paul A. Dorf (Ret.) 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.
On December 10, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <juicycoutureoutlet-store.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. 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 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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@juicycoutureoutlet-store.com. Also on December 10, 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 January 4, 2011, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <juicycoutureoutlet-store.com> domain name is confusingly similar to Complainant’s JUICY COUTURE mark.
2. Respondent does not have any rights or legitimate interests in the <juicycoutureoutlet-store.com> domain name.
3. Respondent registered and used the <juicycoutureoutlet-store.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Juicy Couture, Inc., is owner of the JUICY COUTURE mark. Complainant has used its JUICY COUTURE mark since 1997 in connection with women’s clothing wear and the line has since expanded to include men’s and children’s apparel and accessories. Complainant’s hold numerous trademark registrations for its JUICY COUTURE mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,246, 100 issued September 19, 2006).
Respondent, yang ma, registered the <juicycoutureoutlet-store.com> domain name on April 2, 2010. Respondent uses the disputed domain name to resolve to a website which purportedly offers Complainant’s products for sale.
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 maintains that it has demonstrated rights in the JUICY COUTURE mark. In Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006), the panel found that complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO. Complainant is not required to register its mark within the country of Respondent. 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). Here, Complainant holds numerous trademark registrations with the USPTO (e.g. Reg. No. 3,246, 100 issued September 19, 2006). Therefore, the Panel concludes that Complainant has established rights in its JUICY COUTURE mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <juicycoutureoutlet-store.com> domain name is confusingly similar to its JUICY COUTURE mark. The disputed domain name incorporates Complainant’s entire mark. The domain only differs from Complainant’s mark through the deletion of a space between the words of the mark, the addition of the generic terms “outlet” and “store”, and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that the deletion of a space and the addition of a gTLD are not enough to discourage a finding of confusing similarity. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). The Panel also finds that the addition of generic terms like “outlet” and “store” fails to properly distinguish the disputed domain name from Complainant’s mark. 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)). The Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s JUICY COUTURE mark under Policy ¶ 4(a)(i).
The Panel finds that the element of Policy ¶ 4(a)(i) have been met.
Complainant argues that Respondent has no rights and legitimate interests in the <juicycoutureoutlet-store.com> domain name. Previous panels have found that once a complainant establishes a prima facie showing that a respondent lacks rights and legitimate interests, the burden the shifts to the respondent to prove it does have rights or legitimate interests. 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.”). Here, Complainant has presented a prima facie case in support of its allegations. Given Respondent’s failure to submit a Response to the Complaint, the Panel is free to assume that Respondent lacks rights and legitimate interests in the disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel will examine the record in order to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <juicycoutureoutlet-store.com> domain name. The WHOIS information identifies Respondent as “yang ma,” which is not similar to the disputed domain name. The Panel find no additional evidence indicating that Respondent is commonly known by the disputed domain name and Complainant asserts that Respondent is not authorized or licensed to use its JUICY COUTURE mark. The Panel find that Respondent is not commonly known by the disputed domain name according to Policy ¶ 4(c)(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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant contends that Respondent’s <juicycoutureoutlet-store.com> domain name resolves to a website which attempts to sell counterfeit products under the guise of Complainant’s JUICY COUTURE mark. The Panel finds that Respondent’s use of the confusingly similar disputed domain name to sell counterfeit products of Complainant’s goods and accessories is not 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 Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
Respondent’s resolving website uses Complainant’s JUICY COUTURE mark and other images of Complainant in an attempt to pass itself off as a website sponsored by Complainant. The Panel finds that Respondent’s use of the disputed domain name to pass itself off as Complainant and confuse Internet users is additional evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(iii). See Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant argues that Respondent’s use of the <juicycoutureoulet-store.com> domain name disrupts its retail business. Internet users planning to purchase Complainant’s well-known goods may find Respondent’s website as a result of Respondent’s use of the disputed domain name. Users might possibly purchase goods from Respondent’s website under the belief that they are genuine products of Complainant. The Panel finds that Respondent’s use of the disputed domain name does disrupt Complainant’s business which constitutes bad faith use and 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 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).
The Panel infers that Respondent benefits from the sale of goods from its resolving website. Internet users searching for Complainant online may instead find Respondent’s website due to Respondent’s use of the confusingly similar disputed domain name. This may result in user confusion regarding Complainant’s sponsorship of the website and products offered. Complainant attempts to profit from this confusion through the receipt of sales revenue from the website. The Panel finds that Respondent’s use of the <juicycoutureoutlet-store.com> domain name is evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); 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).
Complainant contends that Respondent’s uses its JUICY COUTURE mark and other copyrighted images on its resolving website in an attempt to create user confusion and pass itself off as a website sponsored by Complainant. The Panel finds that Respondent’s use of the disputed domain name to misrepresent itself and its goods as associated with Complainant is evidence of bad faith use and registration under Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
The Panel finds that Policy ¶ 4(a)(iii) has been 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 <juicycoutureoutlet-store.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 10, 2011
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