Jasmine Enterprises, Inc. v. Lin Yang
Claim Number: FA1203001436882
Complainant is Jasmine Enterprises, Inc. (“Complainant”), represented by Cynthia Yin, Illinois, USA. Respondent is Lin Yang (“Respondent”), represented by Jasmine Yang, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jasminesbridalshop.com>, registered with Wild West Domains, LLC.
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.
Anne M. Wallace, Q.C. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 28, 2012; the National Arbitration Forum received payment on March 28, 2012.
On March 29, 2012, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <jasminesbridalshop.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 April 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 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@jasminesbridalshop.com. Also on April 4, 2012, 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.
A timely Response was received and determined to be complete on April 23, 2012.
On April 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Anne M. Wallace, Q.C. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant says:
· Complainant owns rights in the JASMINE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,857,195 registered June 29, 2004).
· Complainant owns registrations for its JASMINE mark in Canada, Mexico, the EU, and South America.
· Complainant has conducted business in the industry of bridal and special occasion wear since 1985.
· The Disputed Domain Name is confusingly similar to Complainant’s mark.
· Respondent’s disputed domain name resolves to a website that offers bridal collections that mimic the names of famous wedding gown designers and advertises counterfeit goods. Respondent should be considered to have no rights or legitimate interests in the Disputed Domain Name because of this and because Respondent’s intent is to mislead and divert customers when they mistakenly go to the offending domain name, thus creating commercial gain. Respondent is not using the Disputed Domain Name in connection with any bona fide offering of goods or services, and is not making legitimate, non-commercial or fair use for the Disputed Domain Name.
· Respondent should be considered to be using the Disputed Domain Name in bad faith because Complainant has an ongoing Facebook dispute with Respondent and because Respondent uses designer names and pictures on its web site and sells counterfeit products.
B. Respondent
Respondent says:
· The Disputed Domain Name is not confusingly similar to the JASMINE mark. Jasmine’s Bridal Shop simply means it is a bridal ship owned by a person with the common name Jasmine. Jasmine Bridal is a trademark name. Jasmine’s Bridal Shop sounds like a business in one’s local area.
· Respondent’s personal name is Jasmine, and she owns a shop that is engaged in the market of bridal wear.
· Respondent does not sell counterfeit products. Jasmine’s Bridal Shop creates dresses inspired by what they can see in photos and all dresses are tagged with Jasmine’s Bridal Shop’s own brand name. Jasmine’s does not pretend to be any other brand.
· Respondent has not registered and is not using the Disputed Domain Name in bad faith.
C. Additional Submissions
None
1. The Disputed Domain Name is confusingly similar to Complainant’s JASMINE mark.
2. Respondent has rights or legitimate interests in the Disputed Domain Name.
3. Respondent did not register and is not using the Disputed Domain Name 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:
(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 has demonstrated it owns rights in its JASMINE mark through its registration with the USPTO (Reg. No. 2,857,195 registered June 29, 2004). Complainant claims it owns trademark registrations throughout North and South America, as well as the EU, but Complainant did not provide evidence of these trademark registrations. However, Complainant has effectively established rights in the JASMINE mark pursuant to Policy ¶ 4(a)(i) by registering the mark with the USPTO. 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 Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Complainant is not required to register its mark in the country where Respondent resides and operates her business under Policy ¶ 4(a)(i). 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); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant argues that the <jasminesbridalshop.com> domain name is confusingly similar to its JASMINE mark. The Disputed Domain Name uses the entire JASMINE mark and attaches the descriptive term “bridal,” the generic term “shop,” as well as the generic top-level domain (“gTLD”) “.com.” The addition of descriptive and generic words and a gTLD do not sufficiently change the domain name to remove confusingly similarity with the JASMINE mark pursuant to Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
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 she 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.”).
Complaint’s assertion that Respondent is engaged in selling counterfeit products, supported by the information provided by Complainant which might tend to show Respondent may be engaged in selling counterfeit products, barely meets the threshold requirement of a prima facie case. The burden, therefore, shifts to Respondent to show rights or legitimate interests.
Respondent argues that her business is commonly known by the Disputed Domain Name and provides evidence that consumers know Respondent by the Disputed Domain Name. Respondent’s information demonstrates that Respondent’s customers know they are dealing with Respondent and not with Complainant or any other bridal products business. Respondent says her personal name is Jasmine and that the Disputed Domain Name is based on her business, Jasmine’s Bridal Shop. This also demonstrates Respondent is commonly known by the <jasminesbridalshop.com> domain name. Because Respondent uses her name in her business and consumers associate her business with the Disputed Domain Name, Respondent is commonly known by the Disputed Domain Name under Policy ¶ 4(c)(ii). See Digitronics Inventioneering Corp. v. @Six.Net Registered, D2000-0008 (WIPO Mar. 1, 2000) (finding that the respondent was commonly known by the <six.net> and <sixnet.com> domain names even though the complainant had registered the SIXNET trademark because the respondent demonstrated that its customers associated the respondent’s company with the domain names); see also Avnet, Inc. v. Aviation Network, Inc., D2000-0046 (WIPO Mar. 24, 2000) (finding that the respondent was commonly known by the <avnet.net> domain name because the respondent submitted “evidence that it was known by the name AVNET for at least ten years prior to its domain name registration”).
Respondent argues that she uses the Disputed Domain Name to operate her business in the bridal wear industry and does not sell counterfeit goods. Respondent provided evidence that she makes no attempt to suggest she is selling designer products and that she affirmatively informs consumers she is not affiliated with Complainant’s business. Respondent states she creates wedding gowns for her customers that are based on photographs of gowns made by famous designers and that each product tag bears the name of her business. This is not a case where Respondent is making counterfeit gowns and selling them as JASMINE BRIDAL gowns. Respondent is clear that she is not pretending to sell the designer products of others. The whole concept of her business is to provide the customer with a less expensive alternative to the designer gown. Respondent, therefore, uses the Disputed Domain Name to host a website that offers bona fide goods and services under Policy ¶ 4(c)(i). See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name); see also Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).
The Panel has concluded that Respondent has rights or legitimate interests in the <jasminesbridalshop.com> domain name pursuant to Policy ¶ 4(a)(ii). Once those rights are established, then the question of bad faith pursuant to Policy ¶ 4(a)(iii) is moot. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
In any event, the Panel finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Respondent asserts that she did not register and use the Disputed Domain Name in bad faith, did not offer the domain name for sale, did not intend to disrupt Complainant’s business, and did not prevent Complainant from registering the domain name for itself. Respondent further contends that she did not register and use the domain name for the purpose of attracting Internet users in order to profit from the likelihood of confusion that consumers might have as to Complainant’s relationship with the Disputed Domain Name. Respondent states that her business is to create low-cost wedding gowns and that her business name is representative of her personal name. There is no evidence that Respondent did not register and use the <jasminesbridalshop.com> domain name for legitimate purposes and in good faith under Policy ¶ 4(a)(i). See Schering Aktiengesellschaft v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that because “Respondent neither offered the Domain Name for sale, nor wanted it to disrupt Complainant’s business, [nor] prevent Complainant from reflecting the mark in its domain,” it did not register or use the domain name <metagen.com> in bad faith); see also MatchMaker Int'l Dev. Corp. v. Kaiser Dev. Corp., FA 146933 (Nat. Arb. Forum May 9, 2003) (Panelist David Sorkin, dissenting) (“If Respondent registered the domain name for legitimate purposes, or if it reasonably believed at the time of registration that those purposes were legitimate, then the registration was not in bad faith.”).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <jasminesbridalshop.com> domain name REMAIN WITH Respondent.
Anne M. Wallace, Q.C., Panelist
Dated: May 9, 2011
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