national arbitration forum

 

DECISION

 

J Brand, Inc. v.n VALUE-DOMAIN COM / VALUE DOMAIN

Claim Number: FA1205001446430

 

PARTIES

Complainant is J Brand, Inc. (“Complainant”), represented by I Morley Drucker of Fulwider Patton LLP, California, USA.  Respondent is VALUE-DOMAIN COM / VALUE DOMAIN (“Respondent”), Japan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <j-brands.com>, registered with eNom.com.

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 30, 2012; the National Arbitration Forum received payment on May 30, 2012.

 

On May 31, 2012, eNom.com confirmed by e-mail to the National Arbitration Forum that the <j-brands.com> domain name is registered with eNom.com and that Respondent is the current registrant of the name.  eNom.com has verified that Respondent is bound by the eNom.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 June 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 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@j-brands.com.  Also on June 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On June 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

The Complainant, J Brand, Inc. (" J Brand"), a California corporation, having its principal place of business in Los Angeles, California, is a world famous manufacturer of the highest quality of clothing for men and women, particularly, pants and jeans, which are sold, throughout the world, under its trademark "J BRAND".

 

Complainant has rights in the J BRAND mark, which it uses in connection with the manufacture of men’s and women’s clothing, particularly jeans and pants. Complainant owns a trademark registration for the J BRAND mark (Reg. No. 3,250,947 registered June 12, 2007) with the United States Patent and Trademark Office (“USPTO”) as well as registration for the J BRAND mark (Reg. No. 5,148,904 registered July 4, 2008) with the Japan Patent Office (“JPO”).

 

The <j-brands.com> domain name is confusingly similar to the J BRAND mark.

 

Respondent is not commonly known by the <j-brands.com> domain name.

 

The website addressed by disputed domain name displays links throughout, which divert Internet users to Complainant’s competitors in the clothing manufacturing industry.

 

Respondent registered and is using the <j-brands.com> domain name to commercially gain from diverting Internet users to its own website and then displaying links to competitors of Complainant.

 

Respondent had actual knowledge of Complainant’s rights in the J BRAND mark prior to the registration and use of the <j-brands.com> domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant had, and has, rights in its J BRAND mark at all times relevant to this proceeding.

 

Respondent registered the at-issue domain name subsequent to Complaint’s acquisition of rights in its J BRAND trademark.

 

At the time the at-issue domain name was registered, Respondent had actual knowledge of Complainant and Complainant’s rights in the J BRAND mark.

 

The <j-brands.com> domain name references a website displays links throughout, which divert Internet users to Complainant’s competitors in the clothing manufacturing industry.

 

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

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant ‘s trademark registration for the J BRAND mark with the USPTO (Reg. No. 3,250,947 registered June 12, 2007) as well as its JPO trademark registration for the J BRAND mark (Reg. No. 5,148,904 registered July 4, 2008) demonstrate that Complainant has rights in a mark pursuant to Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).

 

The only changes Respondent makes to the J BRAND mark in the at-issue domain name are the addition of a hyphen, the addition of the letter “s,” the deletion of a space, and the addition of the generic top-level domain (“gTLD”) “.com.” These alterations to J BRAND fail to distinguish the <j-brands.com> domain name from Complainant’s J BRAND trademark. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); 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).”).

 

Rights or Legitimate Interests

Respondent lacks rights and legitimate interests in respect of the <j-brands.com> domain name.

 

Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.

 

Complainant has no relationship with Respondent and has not given Respondent permission or authorization to use the J BRAND mark. There is no evidence to suggest that Respondent has intellectual property rights in the <j-brands.com> domain name. Additionally, WHOIS information for the <j-brands.com> domain name lists “VALUE-DOMAIN COM / VALUE DOMAIN” as the domain name registrant. Therefore, the Panel concludes that Respondent is not commonly known by the <j-brands.com> domain name under 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).

 

Respondent displays links to Complainant’s competitors throughout the <j‑brands.com> domain name website. Using a confusingly similar domain name in such manner does not give respondent rights or legitimate interests in respect of the domain name as it is outside the scope of both Policy ¶¶ 4(c)(i) and 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with 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)).

 

In light of Complainant’s uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

Respondent registered and uses the at-issue domain names in bad faith.

 

As mention above with regard to rights and interests, Respondent’s confusingly similar domain name references a website that displays links which divert Internet users to Complainant’s competitors in the clothing manufacturing industry. It appears that this activity is a commercial endeavor.  Such circumstances show that Respondent registered and is using the <j‑brands.com> domain name to intentionally attract Internet users by creating a likelihood of confusion as to the source of the <j‑brands.com> domain name and website. Respondent is thereby using the at-issue domain name in bad faith pursuant to Policy ¶4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

 

Finally, in light of Complainant’s trademark registrations, the notoriety of the J BRAND mark and the manner in which Respondent uses Complainant’s mark, the Panel concludes that Respondent must have had knowledge of Complainant and Complainant's rights in the J BRAND mark at the time it registered <j‑brands.com>. Respondent’s registration of a domain name containing Complainant’s registered trademark, with actual knowledge of such trademark, further evidences bad faith under the Policy. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").

 

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 <j-brands.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Paul M. DeCicco, Panelist

Dated: June 28, 2012

 

 

 

 

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