Juicy Couture, Inc. v. katiemike.com / katie Mike
Claim Number: FA1101001366307
Complainant is Juicy Couture, Inc. (“Complainant”), represented by Holly Pranger of Pranger Law Group, California, USA. Respondent is katiemike.com / katie Mike (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <shopoingjuicyjewelry.com>, <juicyclothingsale.com>, <juicijewelry.com>, and <juicyjewelrysale.com>, registered with eNom.com.
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 January 6, 2011; the National Arbitration Forum received payment on January 6, 2011.
On January 7, 2011, eNom.com confirmed by e-mail to the National Arbitration Forum that the <shopoingjuicyjewelry.com>, <juicyclothingsale.com>, <juicijewelry.com>, and <juicyjewelrysale.com> domain names are registered with eNom.com and that Respondent is the current registrant of the names. eNom.com has verified that Respondent is bound by the eNom.com 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 January 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 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@shopoingjuicyjewelry.com, postmaster@ juicyclothingsale.com, postmaster@ juicijewelry.com, and postmaster@ juicyjewelrysale.com. Also on January 14, 2011, 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 February 8, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <shopoingjuicyjewelry.com>, <juicyclothingsale.com>, <juicijewelry.com>, and <juicyjewelrysale.com> domain names are identical/confusingly similar to Complainant’s JUICY mark.
2. Respondent does not have any rights or legitimate interests in the <shopoingjuicyjewelry.com>, <juicyclothingsale.com>, <juicijewelry.com>, and <juicyjewelrysale.com> domain names.
3. Respondent registered and used the <shopoingjuicyjewelry.com>, <juicyclothingsale.com>, <juicijewelry.com>, and <juicyjewelrysale.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Juicy Couture, Inc., is a large apparel and accessories retailer. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its JUICY mark (e.g., Reg. No. 2,285,232 issued October 12, 1999). Complainant uses its JUICY mark to support its business functions.
Respondent, katiemike.com / Katie Mike, registered the disputed domain names as early as April 21, 2009. Respondent’s disputed domain names resolve to a site selling counterfeit goods using Complainant’s brand name. Respondent likely generates revenue through 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 JUICY mark via registration with a federal trademark authority, the USPTO (e.g., Reg. No. 2,285,232 issued October 12, 1999). Previous panels have found that registering a mark with a federal trademark authority provides affirmative evidence of a complainant’s rights in that mark. See 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.”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Moreover, Complainant is not required to hold a trademark registration within the country Respondent resides in. See 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). Therefore, the Panel finds that Complainant has established rights in its JUICY mark under Policy ¶ 4(a)(i) by registering that mark with the USPTO, a federal trademark authority.
Complainant also contends that Respondent’s <shopoingjuicyjewelry.com>, <juicyclothingsale.com>, <juicijewelry.com>, and <juicyjewelrysale.com> domain names are confusingly similar to its own JUICY mark. Three of the disputed domain names include the entire mark while one includes a common misspelling of the mark, “juici.” Respondent has added the generic top-level domain (“gTLD”) “.com” to all of the disputed domain names while separately or in combination adding the words, “shopoing,” “jewelry,” “clothing,” and “sale.” The Panel finds that misspelling the mark, adding both generic and descriptive words to the mark, and adding a gTLD to the mark failed to sufficiently differentiate Respondent’s disputed domain names from Complainant’s JUICY mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); 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 disputed domain names are confusingly similar to Complainant’s JUICY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that the requirements of Policy ¶ 4(a)(i) have been met.
The Panel finds that Complainant has met its burden of proof by making a prima facie case alleging Respondent’s lack of rights or legitimate interests in the mark. Previous panels have found that the burden shifts to the respondent to prove its rights or legitimate interests in a disputed domain after the complainant has met its prima facie burden. 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)). When Respondent failed to provide an answer to the initial complaint, the Panel may assume based on that lack of response that it has no rights or legitimate interests in the disputed domain names. See Am. Express Co. v. Fang 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.”). However, the Panel will examine the entire record to determine whether Respondent has rights or legitimate interests in the disputed domain names according to the factors listed in Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <shopoingjuicyjewelry.com>, <juicyclothingsale.com>, < uicijewelry.com>, and <juicyjewelrysale.com> domain names. Respondent has offered no evidence to refute this assertion. The WHOIS information identifies the registrant as “katiemike.com / katie Mike,” which this Panel finds is not indicative or similar to the disputed domain names. 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 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). Thus, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).
Complainant also asserts that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the <shopoingjuicyjewelry.com>, <juicyclothingsale.com>, <juicijewelry.com>, and <juicyjewelrysale.com> domain names. Respondent’s disputed domain names resolve to a site selling counterfeit goods that directly compete with the goods Complainant legitimately sells as part of its own business functions. Complainant has not licensed or authorized Respondent to sell or manufacture its products at any time. The Panel finds that Respondent’s use of the disputed domain names to sell counterfeit goods without the authorization of, and in direct competition with, Complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been met.
Complainant contends that Respondent’s <shopoingjuicyjewelry.com>, <juicyclothingsale.com>, <juicijewelry.com>, and <juicyjewelrysale.com> domain names disrupt its business constituting bad faith registration and use. Respondent’s disputed domain names resolve to a site offering competing counterfeit goods. Complainant asserts that the use of the confusingly similar domain names to divert users to Respondent’s site selling goods that appear to be from Complainant will disrupt its business when Internet users seeking its products buy products from Respondent. The Panel finds that Respondent’s use of the disputed domain does in fact disrupt Complainant’s business and, therefore, constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of the complainant registered and used a domain name confusingly similar to the complainant’s PENTHOUSE mark to host a pornographic web site).
Complainant also contends that Respondent’s is using the <shopoingjuicyjewelry.com>, <juicyclothingsale.com>, <juicijewelry.com>, and <juicyjewelrysale.com> domain names for its own commercial gain by selling counterfeit products from the site the disputed domain names resolve to. Respondent’s disputed domain names resolve to a site offering counterfeit products bearing Complainant’s mark. Respondent likely benefits commercially from the sale of these goods. The Panel finds that Respondent’s use of the disputed domain names for its own commercial gain constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See 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); see also Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶ 4(b)(iv).”).
The Panel finds that the requirements of Policy ¶ 4(a)(iii) have 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 <shopoingjuicyjewelry.com>, < juicyclothingsale.com>, < juicijewelry.com>, < juicyjewelrysale.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: February 21, 2011
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