Yurman Design, Inc. v. N/A / Guo Hui
Claim Number: FA1112001421057
Complainant is Yurman Design, Inc. (“Complainant”), represented by Lora A. Moffatt of Salans LLP, New York, USA. Respondent is N/A / Guo Hui (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <davidyurmansale.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2011; the National Arbitration Forum received payment on December 22, 2011.
On December 22, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <davidyurmansale.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.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 December 30, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2012 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@davidyurmansale.com. Also on December 30, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <davidyurmansale.com> domain name is confusingly similar to Complainant’s DAVID YURMAN mark.
2. Respondent does not have any rights or legitimate interests in the <davidyurmansale.com> domain name.
3. Respondent registered and used the <davidyurmansale.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Yurman Design, Inc., designs, manufactures, distributes, and sells jewelry under its DAVID YURMAN mark. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its DAVID YURMAN mark (e.g., Reg. No. 1,725,487 registered October 20, 1992).
Respondent, N/A / Guo Hui, registered the <davidyurmansale.com> domain name on November 30, 2011. The disputed domain name resolves to a website selling counterfeit versions of Complainant’s jewelry products.
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 it owns rights in its DAVID YURMAN mark under Policy ¶ 4(a)(i). In Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005), and AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006), the panels held that a trademark registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). Complainant presents the Panel with its trademark registrations with the USPTO for its DAVID YURMAN mark (e.g., Reg. No. 1,725,487 registered October 20, 1992). While Respondent resides or operates in China, the panels in Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), and Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), found that a complainant may demonstrate rights in a mark by registering the mark with any national trademark authority and that it does not matter where the respondent resides or operates. Therefore, the Panel concludes that Complainant demonstrates rights in its DAVID YURMAN mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <davidyurmansale.com> domain name is confusingly similar to Complainant’s DAVID YURMAN mark under Policy ¶ 4(a)(i). In Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001), and Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002), the panels found that a disputed domain name is confusingly similar to a complainant’s mark after the addition of a generic term. In Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), and U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), the panels determined that the removal of a space and the addition of a generic top-level domain (“gTLD”) were irrelevant to a Policy ¶ 4(a)(i) analysis because spaces are not permitted and gTLDs are required in domain names. In the current case, Complainant notes that the disputed domain name combines Complainant’s DAVID YURMAN mark with the generic term “sale.” The Panel notes that the disputed domain name also contains the gTLD “.com” and does not contain the space found in Complainant’s mark. In accordance with UDRP precedent, the Panel holds that Respondent’s <davidyurmansale.com> domain name is confusingly similar to Complainant’s DAVID YURMAN mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant satisfies Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <davidyurmansale.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). In this case, the Panel finds Complainant made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that a respondent’s failure to respond to the complaint allows the panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. As Respondent has not provided a Response in this case, the Panel may agree with Complainant’s allegations and infer that they are correct. However, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <davidyurmansale.com> domain name under Policy ¶ 4(c)(ii). In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), and Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panels found that a respondent is not commonly known by a disputed domain name if the complainant did not permit the respondent to use the complainant’s mark, the respondent did not respond to the case, and the WHOIS information is not similar to the disputed domain name. Complainant claims that it did not license or authorize Respondent to use Complainant’s DAVID YURMAN mark in a domain name. Respondent does not counter Complainant’s argument because Respondent did not provide a Response to this case. The WHOIS information lists “N/A / Guo Hui” as the registrant of the <davidyurmansale.com> domain name, which the Panel may find is not similar to the disputed domain name. Based on this evidence, the Panel determines that Respondent is not commonly known by the <davidyurmansale.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent is not using the <davidyurmansale.com> domain name in connection with 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). In Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007), and eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007), the panels concluded that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. Complainant contends that Respondent’s <davidyurmansale.com> domain name resolves to a website that sells counterfeit versions of Complainant’s jewelry products. Complainant’s screenshot of the resolving website supports this contention. The Panel determines that Respondent is making neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <davidyurmansale.com> domain name pursuant to Policy ¶ 4(c)(iii).
The Panel finds Complainant satisfied Policy ¶ 4(a)(ii).
According to Complainant, Respondent’s registration and use of the <davidyurmansale.com> domain name disrupts Complainant’s business, constituting bad faith registration and use under Policy ¶ 4(b)(iii). In Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008), and Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008), the panels found that the selling of counterfeit versions of a complainant’s products disrupts a complainant’s business and is evidence of bad faith registration and use. Complainant alleges that Respondent’s <davidyurmansale.com> domain name resolves to a website that sells counterfeit versions of Complainant’s jewelry products. Therefore, the Panel finds that Respondent registered and uses the <davidyurmansale.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant asserts that Respondent registered and uses the <davidyurmansale.com> domain name for the purpose of commercially benefiting from Internet users’ confusion as to Complainant’s affiliation with the disputed domain name, which evidences bad faith registration and use under Policy ¶ 4(b)(iv). In Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008), and H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009), the panels determined that a respondent’s selling of counterfeit products creates the likelihood of confusion as to a complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion. Complainant claims that Respondent sells counterfeit jewelry products. Complainant avers that Respondent commercially benefits from these sales. Consequently, the Panel concludes that Respondent registered and uses the <davidyurmansale.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the DAVID YURMAN mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, in Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006), and Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006), the panels held that a panel may nonetheless find that a respondent registered and is using a disputed domain name in bad faith under Policy ¶ 4(a)(iii) if the respondent is found to have had actual notice of the complainant’s trademark rights. Complainant argues that Respondent’s actual knowledge of Complainant’s rights in its mark is evidenced by Respondent selling counterfeit versions of Complainant’s jewelry products under Complainant’s DAVID YURMAN mark. The Panel agrees with Complainant and holds that Respondent registered and uses the <davidyurmansale.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <davidyurmansale.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 2, 2012
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