John Rich & Sons Investment Holding Company v. Binghai Jiang
Claim Number: FA1101001367627
Complainant is John Rich & Sons Investment Holding Company (“Complainant”), represented by Jeffrey S. Habib of Hooker & Habib, Pennsylvania, USA. Respondent is Binghai Jiang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buywoolrich.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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 14, 2011; the National Arbitration Forum received payment on January 14, 2011.
On January 14, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <buywoolrich.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 January 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 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@BUYWOOLRICH.COM. Also on January 19, 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 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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:
Complainant is the owner and licensee of the well-known WOOLRICH trademark for clothing, footwear, headgear, and other goods and services, and owns over 25 active US trademark registrations, over 10 Canadian trademark registrations, 6 Latin American registrations, over 50 European trademark registrations, and over 90 Asian trademark registrations for WOOLRICH alone or in combination with other terms.
With respect to the disputed domain name, Complainant owns the several US and Chinese trademark registrations for WOOLRICH for clothing, footwear, and headgear or for retail clothing store services.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
[a.] ICANN Rule 3(b)(ix)(1); ICANN Policy 4(a)(i).
I. The distinctive portion of the domain name is WOOLRICH alone, which is identical to the trademarks in which Complainant has rights.
II. The remaining portion of the domain name, "BUY", is merely descriptive for an offer of sale of goods. The home page itself uses "BUY WOOLRICH.COM" in the text of the page, placing a space between BUY and WOOLRICH — consistent with the distinctive portion of the domain name being WOOLRICH alone and that "BUY" urges the purchase of WOOLRICH-branded goods.
III. Complainant's WOOLRICH trademarks listed above pertain to clothing, footwear, and headgear which are goods commonly offered for sale, and it would be logical to urge consumers to buy WOOLRICH branded clothing, footwear, and headgear by urging such consumers to "buy WOOLRICH."
Furthermore, Complainant owns US Trademark 1256425 for WOOLRICH for retail clothing store services. It would be logical for a visitor to the web site to conclude that the "buy" referred to in the domain name is connected to an on-line version of retail clothing store services offered under the WOOLRICH trademark.
The distinctive portion of the domain name BUYWOOLRICH then consists solely of WOOLRICH, which is identical to trademarks in which Complainant has rights, both in Complainant's country (USA) and in Respondent's country (China).
[b.] ICANN Rule 3(b)(ix)(2); ICANN Policy 4(a)(ii).
I. Respondent is not an authorized seller or distributor of WOOLRICH-branded clothing or other goods and has no known rights in the WOOLRICH trademark that are superior to Complainant's rights.
The disputed domain name resolves to an English-language website that appears to be identical to be a copy of a prior version of Complainant’s officially licensed website, <woolrich.com>, featuring the same images, layout, Complainant's trademarks and logos, and clothing products. The website displays the WOOLRICH trademark with the United States federal trademark registration symbol ("r-in-a-circle") after the mark.
Through the website, Respondent sells unauthorized or counterfeit versions of Complainant’s products. Respondent attempts to collect or phish for Internet users’ personal information when Internet users attempt to make a purchase from the resolving website.
Respondent competes directly with the clothing offered under the Complainant's WOOLRICH trademarks
II. Respondent obtained the disputed domain name on October 25, 2010, which is well after the registration dates of Complainant's registered trademarks listed above.
III. Respondent obtained the disputed domain name after Complainant established rights in the WOOLRICH trademark in both the United States and China.
[c.] ICANN Rule 3(b)(ix)(3); ICANN Policy 4(a)(iii).
I. Complainant's WOOLRICH trademarks in both the United States and China issued before the Respondent acquired the BUYWOOLRICH.COM domain name. It is reasonable to assume that Respondent must have or should have been aware of Complainant's rights in the WOOLRICH trademark at the time of registration of the disputed domain name.as well as Complainant's other WOOLRICH trademarks (including US Registration 1,256,425 for WOOLRICH for retail clothing store services), at the time of registration and use of the disputed domain name.
II. Respondent's copying of the WOOLRICH trademarks on its web pages, and the inclusion of the US federal trademark symbol registration symbol is further evidence of bad faith as the Respondent is fully aware he or she is not the owner of the registrations.
III. Respondent is luring Internet users with an interest in clothing offered under the Complainant's WOOLRICH trademarks to sell unauthorized and/or counterfeit goods, thereby disrupting Respondent's business.
IV. Respondent's wrongful use of Complainant's trademark and reputation to attract Internet users and divert potential customers is itself evidence of bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, John Rich & Sons Investment Holding Company, uses the WOOLRICH mark in connection with retail clothing services. Complainant holds multiple trademark registrations with the United States Patent and Trademark office (“USPTO”) for the WOOLRICH mark (e.g., Reg. No. 1,256,425 issued November 1, 1983). Complainant also holds trademark registrations with China’s State Intellectual Property Office (“SIPO”) for the WOOLRICH mark (e.g., Reg. No. 1,246,831 issued February 14, 1999).
Respondent, Binghai Jiang, registered the <buywoolrich.com> domain name on October 25, 2010. The disputed domain name resolves to a website that copies a prior version of Complainant’s official <woolrich.com> website. The resolving website also offers counterfeit versions of Complainant’s goods 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 claims rights in the WOOLRICH mark due to its registration of the mark with the USPTO (e.g., Reg. No. 1,256,425 issued November 1, 1983) and China’s SIPO (e.g., Reg. No. 1,246,831 issued February 14, 1999). The Panel finds these trademarks sufficiently prove Complainant’s rights in the WOOLRICH mark pursuant to Policy ¶4(a)(i). 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 Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant alleges Respondent’s <buywoolrich.com> domain name is confusingly similar to its WOOLRICH mark. Respondent replicates Complainant’s mark in the disputed domain name and then merely attaches the generic term “buy” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel finds these additions fail to distinguish Respondent’s domain name from Complainant’s mark. 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); 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); 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 concludes Respondent’s <buywoolrich.com> domain name is confusingly similar to its WOOLRICH mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <buywoolrich.com> domain name under Policy ¶4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests. 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 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.”). Despite Respondent’s failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶4(c).
Complainant has not authorized Respondent to use its WOOLRICH mark. In addition, the WHOIS information lists “Binghai Jiang” as the registrant of the disputed domain name, which the Panel finds is not similar to the <buywoolrich.com> domain name. Without evidence to the contrary, the Panel concludes Respondent is not commonly known by the disputed domain name pursuant 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 argues Respondent uses the <buywoolrich.com> domain name to sell counterfeit versions of Complainant’s products. In addition, Complainant alleges Respondent uses the disputed domain name to phish for Internet users’ personal and financial information. Complainant submitted screen shots of the website from the <buywoolrich.com> domain name. These shots show a site featuring images of Complainant’s goods next to captions like “Woolrich Men’s PENN-RICH Navy Parka.” The resolving website also has a place for Internet users to provide their credit card information and e-mail addresses. The Panel finds Respondent uses the disputed domain name to offer for sale counterfeit versions of Complainant’s products as well as phish for Internet users’ personal and financial information. Accordingly, the Panel holds Respondent does not use the disputed domain name for 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 Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services 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)).
Furthermore, Complainant claims the <buywoolrich.com> domain name resolves to a website that appears to be an identical copy of a prior version of Complainant’s official website at the <woolrich.com> domain name. Complainant alleges Respondent’s resolving website displays the same images, layout, Complainant’s mark and logo, and clothing products. The Panel finds Respondent uses the disputed domain name in an attempt to pass itself off as Complainant. Therefore, the Panel finds this behavior provides further evidence Respondent does not use the disputed domain name for 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 Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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 pursuant to Policy ¶4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
The Panel finds Policy ¶4(a)(ii) satisfied.
The Panel finds Respondent uses the <buywoolrich.com> domain name to divert Internet users seeking Complainant’s products to a website that offers for sale competing products. Therefore, the Panel holds Respondent’s domain name disrupts Complainant’s business, which constitutes registration and use in bad faith under Policy ¶4(b)(iii). See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); 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).”).
The Panel also finds Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s WOOLRICH mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or products on its site. Respondent uses the disputed domain name in an attempt to profit from the sale of counterfeit versions of Complainant’s goods. Moreover, Respondent’s <buywoolrich.com> domain name is confusingly similar to Complainant’s WOOLRICH mark. Finally, Respondent prominently features Complainant’s mark and logo throughout its website. Therefore, based on the evidence in the record, the Panel finds Respondent has engaged in registration and use in bad faith under Policy ¶4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
In addition, the Panel finds Respondent’s attempt to phish for Internet users’ personal and financial information supports a finding of bad faith registration and use under Policy ¶4(a)(iii). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients).
Finally, the Panel finds Respondent’s attempt to pass itself off as Complainant provides additional evidence Respondent has engaged in registration and use in bad faith 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 DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buywoolrich.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, February 15, 2011
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