national arbitration forum

 

DECISION

 

Juicy Couture, Inc. v. King Bo

Claim Number: FA1012001363718

 

PARTIES

Complainant is Juicy Couture, Inc. (“Complainant”), represented by Holly Pranger of Pranger Law Group, California, USA.  Respondent is King Bo (“Respondent”), Louisiana, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <juicycouturefashion.com>, registered with GoDaddy.com, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically December 15, 2010; the National Arbitration Forum received payment December 15, 2010.

 

On December 16, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <juicycouturefashion.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and  thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On December 17, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 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@juicycouturefashion.com.  Also on December 17, 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 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The domain name that Respondent registered, <juicycouturefashion.com>, is confusingly similar to Complainant’s JUICY COUTURE mark.

 

2.      Respondent has no rights to or legitimate interests in the <juicycouturefashion.com> domain name.

 

3.      Respondent registered and used the <juicycouturefashion.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Juicy Couture, Inc., is a designer and manufacturer of women’s clothing, knapsacks, luggage, watches, footwear, eyeglasses, sunglasses, as well as baby related items.  Complainant owns multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its JUICY (e.g., Reg. No. 2,285,232 issued October 12, 1999) and JUICY COUTURE marks (e.g., Reg. No. 2,348,674 issued May 9, 2000).

 

Respondent, King Bo, registered the <juicycouturefashion.com> domain name May 11, 2010.  Respondent’s disputed domain name resolves to a website that advertises and sells counterfeit versions of Complainant’s products without authorization from Complainant.

 

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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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 to and/or Confusingly Similar

 

Complainant has presented evidence to show that it owns multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its JUICY (e.g., Reg. No. 2,285,232 issued October 12, 1999) and JUICY COUTURE marks (e.g., Reg. No. 2,348,674 issued May 9, 2000).  The Panel finds that Complainant’s evidence establishes its rights in the JUICY and JUICY COUTURE marks under Policy ¶ 4(a)(i).  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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).

 

Complainant contends that the <juicycouturefashion.com> domain name is confusingly similar to Complainant’s JUICY COUTURE mark.  Complainant notes that the domain name contains its entire mark, absent the space between the terms, while adding the descriptive term “fashion” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) because the domain name contains the entire registered mark of Complainant while merely adding the term “fashion,” which describes Complainant’s product line.  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.”); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); 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.”).

 

The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant also alleges that Respondent does not have rights to or legitimate interests in the <juicycouturefashion.com> domain name.  Complainant is required to produce a prima facie case to support its allegations and then the burden shifts to Respondent to prove that it does have such rights to or legitimate interests in the disputed domain name.  The Panel finds that Complainant made a prima facie case.  Due to Respondent’s failure to respond to these proceedings, the Panel may assume that Respondent does not have rights to or legitimate interests in the disputed domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 2, 2002) (“Because Complainant’s submissions constitute a prima facie case under the Policy, the burden effectively shifts to Respondent.  Respondent’s failure to respond means that Respondent has not presented any circumstances that would support its having rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fan Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  The Panel, however, still examines the record to determine whether Respondent has rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).

 

Complainant asserts that it has not granted Respondent permission to use its JUICY COUTURE mark, and that Respondent is not commonly known by the <juicycouturefashion.com> domain name.  The WHOIS information for the disputed domain name lists the registrant as “King Bo,” which does not indicate that Respondent is commonly known by the disputed domain name.  Respondent has not produced any evidence to show that it is commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under a Policy ¶ 4(c)(ii) analysis.  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).

 

Complainant argues and submits evidence to show that Respondent is using the disputed domain name to operate a website and business that sells counterfeit products that purport to be those of Complainant.  Complainant alleges that it has not granted Respondent permission to conduct such business and that Respondent’s use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.  The Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant); 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 Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent’s use of the disputed domain name to sell counterfeit versions of its JUICY COUTURE products results in a loss of business to Complainant, as well as the tarnishing of its marks and product name.  Complainant contends that Respondent’s website diverts Internet users who would otherwise purchase the legitimate products found on Complainant’s official website, and that such use is evidence of Respondent’s bad faith registration and use.  The Panel agrees and finds that Respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s products disrupts Complainant’s online presence and business and is evidence of bad faith under Policy ¶ 4(b)(iii).  See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).

 

Further, Complainant argues that Respondent is intentionally attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion between the domain name and Complainant’s trademark.  Complainant notes that Respondent’s website appears to be that of Complainant while using Complainant’s trademark throughout the website to promote the counterfeit products displayed on the website.  The Panel finds that such usage is further evidence of Respondent’s bad faith registration and use of the <juicycouturefashion.com> domain name under Policy ¶ 4(b)(iv).  See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). 

 

The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

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 <juicycouturefashion.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Hon. Carolyn Marks Johnson, Panelist

Dated:  January 24, 2011.

 

 

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