J Brand, Inc. v. Treena Binns
Claim Number: FA1203001433277
Complainant is J Brand, Inc. (“Complainant”), represented by I. Morley Drucker of Fulwider Patton LLP, California, USA. Respondent is Treena Binns (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jbrandjeanscheap.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on March 6, 2012; the National Arbitration Forum received payment on March 6, 2012.
On March 8, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <jbrandjeanscheap.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 March 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 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@jbrandjeanscheap.com. Also on March 8, 2012, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 April 10, 2012, pursuant to Complainant's request to have the dispute decid-ed by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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
Complainant has rights in the J BRAND mark, which it uses in connection with the marketing of clothing, particularly pants and jeans.
Complainant has registered the J BRAND trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,250,947, registered June 12, 2007).
Respondent registered the <jbrandjeanscheap.com> domain name on January 29, 2012.
The <jbrandjeanscheap.com> domain name is confusingly similar to the J BRAND mark.
The <jbrandjeanscheap.com> domain name resolves to a website which sells Complainant’s products without its authorization.
Respondent has no relationship with Complainant, and has not been authorized by Complainant to register or use the <jbrandjeanscheap.com> domain name.
Respondent has no rights to or legitimate interests in the domain name.
Respondent registered and uses the <jbrandjeanscheap.com> domain name in bad faith in order to cause confusion as to the source of the disputed domain name, so that Internet users will believe that Complainant is affiliated with the domain name and so that Respondent may profit its use.
Respondent had actual knowledge of Complainant’s rights in the J BRAND mark prior to the registration and use of the <jbrandjeanscheap.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 represent-ations 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the J BRAND trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), and Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), both holding that the registration of a mark with a national trade-mark authority is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i) . This is true regardless of whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction other than that of Respondent’s residence or place of operations. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant under the Policy whether a complainant has registered its trademark in the country of a respondent’s resi-dence); see also Renaissance Hotel Holdings, Inc. v. Renais-sance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that, under Policy ¶ 4(a)(i), it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction).
Respondent’s <jbrandjeanscheap.com> domain name is confusingly similar to Complainant’s J BRAND mark. The domain name differs from the mark only by the deletion of the space between elements of the mark, the addition of the generic terms “jeans” and “cheap,” which together relate to an aspect of Com-plainant’s business or that of its industry, and the further addition of the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in form-ing the contested domain name, do not avoid a finding of confusing similarity under the standards of the Policy. See, for example, Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respond-ent’s <amextravel.com> domain name confusingly similar to a complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorpor-ates in its entirety a complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar).
Similarly, the deletion of any spaces occurring between the terms of a mark and the addition of a generic top-level domain (“gTLD”) are required in the formation of a domain name, and are thus irrelevant to a Policy ¶ 4(a)(i) analysis. See, for example, Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of any spaces between terms of a complainant’s mark and the addition of a gTLD in creating a domain name do not distinguish the domain name from the mark under Policy ¶ 4(a)(i)); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007):
Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).
Therefore, the Panel finds that has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent has no relationship with Respondent and that Complainant has not given Respondent permission or authorization to use the J BRAND mark in the <jbrandjeanscheap.com> domain name. Moreover, the pertinent WHOIS record identifies the registrant of the domain name only as “Treena Binns,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain within the meaning of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respond-ent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so had no rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s use of the <jbrandjeanscheap.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use, in that the domain name resolves to a website at which Complainant’s products are sold without its authorization. Respondent presumably profits from this employment of the domain name, which we have found is confusingly similar to Complainant’s J BRAND mark. Such use of the domain is indeed neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003):
Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.
See also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (find-ing that use of a complainant’s mark in a domain name to sell, among other things, that complainant’s perfume, is not bona fide use).
Therefore, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <jbrandjeanscheap.com> domain name resolves to a commercial website selling Complainant’s products without its authorization, from which sales Respondent presumably profits. This use of a domain name which is confusingly similar to complainant’s J BRAND mark creates confusion among Internet users as to the possibility of Complainant’s affiliation with the domain name, and it therefore stands as evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that a respondent acted in bad faith by registering the <fossil-watch.com> domain name and using it to sell various watch brands, where that respondent was not authorized to sell a complainant’s goods); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent used a disputed domain name to sell a complainant’s products without its permission and misled Internet users by im-plying that that respondent was affiliated with that complainant).
In addition, it is plain from the record that Respondent had actual knowledge of Complainant and its rights in the J BRAND mark prior to the registration and use of the <jbrandjeanscheap.com> domain name. This too is evidence of bad faith registration and use of Complainant’s J BRAND mark. SeeYahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respond-ent was "well-aware of the complainant's YAHOO! mark at the time of registra-tion).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be , and it is, hereby, GRANTED.
Accordingly, it is Ordered that the <jbrandjeanscheap.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 24, 2012
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