Yurman Design, Inc. v Zhang Tiejun

national arbitration forum

DECISION

Yurman Design, Inc. v. Zhang Tiejun

Claim Number: FA1202001427834

PARTIES

Complainant is Yurman Design, Inc. (“Complainant”), represented by Lora A. Moffatt of Salans LLP, New York, USA. Respondent is Zhang Tiejun (“Respondent”), China.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <davidyurmanshop.com>, registered with HICHINA ZHICHENG TECHNOLOGY LTD.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

The Honourable Neil Anthony Brown QC as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2012; the National Arbitration Forum received payment on February 2, 2012. The Complaint was submitted in both Chinese and English.

On February 2, 2012, HICHINA ZHICHENG TECHNOLOGY LTD. confirmed by e-mail to the National Arbitration Forum that the <davidyurmanshop.com> domain name is registered with HICHINA ZHICHENG TECHNOLOGY LTD. and that Respondent is the current registrant of the name. HICHINA ZHICHENG TECHNOLOGY LTD. has verified that Respondent is bound by the HICHINA ZHICHENG TECHNOLOGY LTD. 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 February 15, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 6, 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@davidyurmanshop.com. Also on February 15, 2012, the Chinese language 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 March 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.

Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A. Complainant

Complainant, Yurman Design, Inc. owns and operates boutiques in the United States and internationally and is engaged in the business of designing and distributing jewelry and accessories under the DAVID YURMAN mark. Complainant contends that it and associated companies hold several trademark registrations for its DAVID YURMAN mark, registered with the United States Patent and Trademark Office (“USPTO”), for example, trademark No. 1,725,487 registered on October 20, 1992 for DAVID YURMAN) and with China’s State Administration for Industry and Commerce (“SAIC”) , for example, trademark No. No. 915,955 registered on November 2, 2006.

Complainant asserts that Respondent, Zhang Tiejun, registered the <davidyurmanshop.com> domain name, on August 26, 2011 and that the website resolves to a website that uses Complainant’s entire trademark to promote and sell counterfeit goods.

Accordingly, Complainant submits that the disputed domain name is confusingly similar to the disputed domain name, that Respondent has no rights or legitimate interests in that domain name and that it was registered and used in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is a well known and internationally renowned designer, manufacturer, distributor and seller of fine and distinctive jewelry and has been so for many years.

Complainant and companies associated with it are the registered proprietors of many trademarks for DAVID YURMAN registered in the United States and internationally, including in China and its associated territories.

Respondent registered the disputed domain name on August 26, 2011. It is used for a website that includes Complainant’s trademark and promotes items of jewelry that are knock-offs and counterfeits of genuine David Yurman items.

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."

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.

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.”).

Identical and/or Confusingly Similar

Complainant submits evidence that it and associated companies hold multiple trademark registrations with the USPTO (e.g., Reg. No. 1,725,487 registered October 20, 1992) and with the SAIC (e.g, Reg. No. 915,955 registered November 2, 2006) and other agencies for its DAVID YURMAN mark. Accordingly, the Panel finds that Complainant acquired rights in its DAVID YURMAN mark under Policy ¶ 4(a) (i) through registering the mark with multiple trademark agencies. 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 Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s State Intellectual Property Office was sufficient to establish rights in the mark under Policy ¶ 4(a) (i)).

Complainant contends that Respondent’s <davidyurmanshop.com> domain name is confusingly similar to Complainant’s DAVID YURMAN mark, as the disputed domain name uses the mark in its entirety and merely adds the descriptive term “shop,” removes the spaces from the mark, and adds the generic top-level domain (“gTLD”) “.com.” The panel in Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002), found that using an entire mark in a domain name and adding the descriptive word “credit” made the domain name confusingly similar to complainant’s mark. Applying that decision to the present case, the Panel has no hesitation in concluding that the objective user of the internet would conclude that the disputed domain name related to a online shop in which Complainant conducted its business and that it would lead to an official website where the buyer could acquire genuine David Yurman products. Users of the internet would therefore find the disputed domain name similar to the DAVID YURMAN mark and confusingly so, as they would assume that it was genuine when in fact it is not.

Also, in Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), the panel stated that eliminating spaces between words in a mark, and adding a gTLD does not “establish distinctiveness from the complainant’s mark under Policy ¶ 4(a) (i).”

Accordingly, the Panel finds that the changes made to the disputed domain name do not render it sufficiently different from the DAVID YURMAN mark. Therefore, the Panel determines that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a) (i). Complainant has thus made out the first of the three elements that it must establish.

Rights or Legitimate Interests

It is now well-established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii) and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names”).

The Panel finds that such a prima facie case has been made out. It is based on the facts, as the Panel so finds, that Respondent has taken Complainant’s well known trademark without permission or authority, used it in a domain name that merely adds the word “shop” to the trademark and then used the domain name for a deceptive website promoting knock-offs and counterfeit items based on genuine David Yurman products. Moreover, as Respondent is not licensed or authorized to use its mark in any way, including in a domain name, the Panel finds that, because the WHOIS registrant information lists the registrant as “Zhang Tiejun”, Respondent is not commonly known by the disputed domain name for the purposes of 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 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).

In particular, Complainant contends that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Complainant claims that Respondent “rel [ies] on consumers’ recognition of Complainant’s famous trademark to attract consumers to its own website and trad [es] off of Complainant’s good will” by using the trademark to sell counterfeit goods. The Panel concludes that selling counterfeit goods purporting to come from Complainant’s business is not a bona fide offering of goods and services under Policy ¶ 4(c) (i) and is not a legitimate noncommercial or fair use of the disputed domain name 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 Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).

For these reasons, the prima facie case has been made out. As Respondent has not filed a Response, it has not rebutted the prima facie case and Complainant has therefore made out the second of the three elements that it must establish.

Registration and Use in Bad Faith

It is now well-established that the Complainant must prove that the domain name was registered in bad faith and also used in bad faith. It is also clear that the specific criteria of bad faith enumerated in Policy ¶ 4(b) are not exclusive, but that Complainant may rely also on conduct of Respondent showing bad faith in the general sense of that word.

To make out its case, Complainant argues that Respondent’s purpose in registering the <davidyurmanshop.com> domain name was to capitalize on Complainant’s reputation by misdirecting and misleading potential consumers. Complainant alleges that consumers searching for Complainant’s products are diverted by means of the disputed domain name to the resolving web page where knock-off and counterfeit items are sold under the DAVID YURMAN mark. Complainant argues that the use of its mark to sell knock-off and counterfeit items purporting to be made by Complainant disrupts Complainant’s business, which must surely be the case. The panels 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), held that a complainant’s business suffers disruption by a respondent’s registration and use of a disputed domain name to sell counterfeit versions of a complainant’s products. The Panel therefore finds that Respondent’s maintenance of a website to sell counterfeit items constitutes bad faith registration and use pursuant to Policy ¶ 4(b) (iii).

Complainant also alleges that Respondent endeavors to create an unauthorized affiliation with Complainant by using a confusingly similar domain name to benefit commercially from the affiliation. Complainant claims that Respondent attempts to attract Internet traffic by causing consumers to believe that Complainant owns the domain name and corresponding website. The Panel finds that Respondent’s use of Complainant’s DAVID YURMAN mark in its domain name functions to confuse Internet users by attracting traffic to its site and Respondent profits as a result of the confusion. Thus, the Panel may conclude that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b) (iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to gain commercially by creating confusion as to the complainant’s connection with the website by selling counterfeit products); see also H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).

It should also be said that the whole modus operandi of Respondent, involving as it does, a clear breach of Complainant’s trademark rights and dishonest and illegal conduct, constitutes bad faith in the general sense of that word, both with respect to the registration and the use of the disputed domain name.

Accordingly, Complainant has made out the third of the three elements that it must establish.

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

The Honourable Neil Anthony Brown QC, Panelist

Dated: March 15, 2012