J Brand, Inc. v. Fundacion Private Whois / L. D. Arnott
Claim Number: FA1206001451383
Complainant is J Brand, Inc. (“Complainant”), represented by I. Morley Drucker of Fulwider Patton LLP, California, USA. Respondent is Fundacion Private Whois / L. D. Arnott (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <j-brand.com>, registered with Internet.bs Corp.
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.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2012; the National Arbitration Forum received payment on June 29, 2012.
On July 2, 2012, Internet.bs Corp confirmed by e-mail to the National Arbitration Forum that the <j-brand.com> domain name is registered with Internet.bs Corp and that Respondent is the current registrant of the name. Internet.bs Corp has verified that Respondent is bound by the Internet.bs Corp 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 July 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 23, 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-brand.com. Also on July 3, 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 July 23, 2012.
An Additional Submission was received from Complainant on July 30, 2012. Although the receipt of the document was timely, payment was received one day late, and thus Respondent was not in compliance with Supplemental Rule 7. In such circumstances, it is at the Panel’s discretion to consider the Additional Submission or not when making its findings. On August 6, 2012, Respondent replied to Complainant’s Additional Submission. The Panel has taken both Additional Submissions into consideration.
On August 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion 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 makes the following allegations in its Complaint:
a) Complainant has rights in the J BRAND mark;
b) Complainant is the holder of the United States Patent and Trademark Office (“USPTO”) registration for the J BRAND mark (Reg. No. 3,250,947 filed January 11, 2006; registered June 12, 2007);
c) The <j-brand.com> domain name is confusingly similar to the J BRAND mark;
d) Respondent has no relationship with Complainant and does not have permission to use the J BRAND mark;
e) The <j-brand.com> domain name resolves to a website which features click-through links to websites of Complainant and to Complainant’s competitors;
f) The <j-brand.com> domain name is meant to allow Respondent to commercially gain from the display of links on the disputed domain name;
g) Respondent registered the <j-brand.com> domain name with knowledge of Complainant’s rights in the J BRAND mark.
B. Respondent
Respondent makes the following allegations in its Response:
a) Complainant does not have exclusive rights to the J BRAND mark;
b) The J BRAND mark is made up of generic terms;
c) The <j-brand.com> domain name is not confusingly similar to the J BRAND mark;
d) Respondent has common law rights in the J-BRAND mark;
e) Respondent chose the <j-brand.com> domain name with a legitimate purpose and in line with a business plan;
f) The <j-brand.com> domain name is currently being “parked” while it is being redeveloped, but this is a legitimate use;
g) The registration of the <j-brand.com> domain name predates Complainant’s rights in the J BRAND mark;
h) Complainant has engaged in reverse domain-name hijacking.
i) The Panel may note that on March 18, 2002 Respondent registered the <j-brand.com> domain name.
C. Additional Submissions
In its Additional Submission, Complainant asserted the following:
a) The domain name at issue is identical to Complainant’s mark.
b) Respondent is not and has never been commonly known by the disputed domain name.
c) Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration for valuable consideration.
d) Prior to the filing of this proceeding the disputed domain name contained links to Complainant and Complainant’s competitors resulting in profit to Respondent.
e) Complainant did not initiate the discussion regarding the sale of the disputed domain name; Respondent approached Complainant offering to sell the domain name for $300,000-$500,000.
f) The Doctrine of Laches should not apply to these proceedings.
g) Reverse domain name hijacking is not warranted here.
Respondent asserted the following in its Additional Response:
a) Complainant has not rebutted Respondent’s rights in the J-BRAND mark or argued that the <j-brand.com> domain name is confusingly similar to the J BRAND mark;
b) Complainant acknowledges that the <j-brand.com> domain name was registered in good faith in 2002 but argues that when the use changed to become a click-through link website to Complainant and its competitors, the disputed domain name was no longer used for a bona fide offering of goods or services nor a legitimate noncommercial or fair use;
c) The <j-brand.com> domain name was registered and is being used in good faith.
Complainant is a manufacturer of clothing for men and women, particularly pants and jeans. Complainant is using the J BRAND sign in commerce since 2004 and has registered trademarks in the J BRAND sign in various jurisdictions. Complainant shows to be the holder of inter alia the United States Patent and Trademark Office (“USPTO”) registration for the J BRAND mark (Reg. No. 3,250,947 filed January 11, 2006; registered June 12, 2007).
The disputed domain name <j-brand.com> is registered since March 18, 2002. Complainant and Respondent seem to agree that Respondent used the disputed domain name for the purpose of providing information in relation to other domain names registered by Respondent, commencing with the letter ‘J’. Complainant acknowledges that the disputed domain name was created in good faith in 2002.
Complainant has filed its Complaint after the content of the website linked to the disputed domain name changed to become a parking page with sponsored links to competitors of Complainant and Complainant itself.
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 its Complaint and Additional Submission, Complainant contends that it has rights in the J BRAND mark. Complainant provides the Panel with evidence of its registration for the J BRAND mark (Reg. No. 3,250,947 filed January 11, 2006; registered June 12, 2007), used in connection with the manufacture of clothing, particularly pants and jeans. According to the Panel, the registration of a mark with a federal trademark authority is evidence of having rights in the mark, regardless of where the parties are located in relation to the country of registration. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Additionally, in Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007), the panel held that USPTO trademarks extend rights back to the date the registration was filed. Therefore, the Panel finds that that Complainant has rights in the J BRAND mark extending back to January 11, 2006 under Policy ¶ 4(a)(i).
In its Complaint and Additional Submission, Complainant contends that it has used its mark since 2004 and that the J BRAND mark is well- and widely-known throughout the world. The Panel notes that the mark’s registration with the USPTO lists an exact first-use date as November 17, 2004. Complainant asserts that J BRAND products are sold by the finest U.S. retail stores, including Saks Fifth Avenue, Nordstoms, and Neiman-Marcus, as well as being advertised and sold by similar upscale stores in other countries of the world. See Annex C. Complainant claims that the J BRAND mark has achieved vast publicity and fame as a result of being worn by numerous celebrities. See Annex D. Complainant contends that the J BRAND has developed secondary meaning over the last eight years through sales in the many millions of dollars, Internet advertising, and publicity. This is indicative of the fact that Complainant may have common law rights in the J BRAND mark dating back to Complainant’s initial use in 2004 pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Complainant contends that the <j-brand.com> domain name is confusingly similar to the J BRAND mark. The Panel finds that the addition of a hyphen and the generic top-level domain (“gTLD”) “.com” are insubstantial and thus do not cause a differentiation between Respondent’s domain name and Complainant’s mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, the Panel may find that Respondent’s <j-brand.com> domain name is confusingly similar to Complainant’s J BRAND mark under Policy ¶ 4(a)(i).
While Respondent argues that its registration of the <j-brand.com> domain name predates Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
While Respondent contends that the <j-brand.com> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
For these reasons, Complainant has made out the first of the three elements that it must establish.
A 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.”).
Complainant asserts that it has no relationship with Respondent. Complainant further notes that it has not given permission or some other form of authorization to Respondent to use the J BRAND mark. Complainant contends that Respondent’s lack of rights and legitimate interests is clear from the use of the <j-brand.com> domain name, according to the Complaint and Additional Submission. Complainant contends that the disputed domain name resolves to a website filled with click-through links to Complainant and Complainant’s competitors. Panels have found that the use of a disputed domain name to display links to the complainant and its competitors is not a use protected under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”). Therefore, the Panel may find that Respondent’s use of the <j-brand.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Nevertheless, Complainant acknowledged that the disputed domain name was created in good faith in 2002 and that it is only recent that the disputed domain name is being used for wrongful purposes. Respondent argues that while the disputed domain name currently resolves to an interim parked page, it is being redeveloped for use in connection with a number of other domain names as a Japanese language portal. Respondent argues that it chose the disputed domain name with purpose: “J-“ is a visual metaphor for “Japan” commonly used by Japanese citizens, and the <j-brand.com> domain name is part of a business plan to be used as Respondent’s “‘umbrella’ portal” to replace earlier versions of their website. The Panel is of the opinion that Respondent may have legitimate interests in the <j-brand.com> domain name and that the business plan it expressed may be a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <j-brand.com> domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii). See McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007) (holding that “pay-per-click websites are not in and of themselves unlawful or illegitimate”); see also 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). However, this does not explain why Respondent should be making an interim use of the domain name that is detrimental to Complainant’s brand by providing sponsored links to competitors of Complainant. According to the Panel, such use is not bona fide and indicative that Respondent has no rights or legitimate interests in the disputed domain name. Respondent fails to provide any evidence of any preparations of a bona fide use of the disputed domain name. According to the Panel, Complainant did make a prima facie case that, at the time of filing the complaint, Respondent lacks rights and legitimate interests in the disputed domain name. Respondent may have used the disputed domain name for bona fide offerings in the past, but fails to show that it currently would have rights or legitimate interests in the disputed domain name.
Accordingly, the Panel is of the opinion that Complainant established that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith. See, e.g., Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000); Control Techniques Ltd. v. Lektronix Ltd, D2006‑1052 (WIPO Oct. 11, 2006).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent argues that it could not have registered the <j-brand.com> domain name in bad faith because the registration predates Complainant’s rights. Respondent argues that it registered the <j-brand.com> domain name on March 18, 2002 prior to Complainant’s registration of the J BRAND mark. The Panel notes that Complainant registered the J BRAND mark, Reg. No. 3,250,947, on June 12, 2007, but the mark’s registration application was filed on January 1, 2006. The Panel also notes that Complainant listed November 17, 2004 as the date which the J BRAND mark was first used in commerce. The panel in Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000), held that where the registration of a disputed domain name by a respondent predates a complainant’s acquisition of rights in a mark the domain name could not have been registered in bad faith. Complainant does not contest that the disputed domain name was registered by Respondent on March 18, 2002. Therefore, the Panel finds that Respondent did not register the <j-brand.com> domain name in bad faith as its registration predates Complainant’s rights pursuant to Policy ¶ 4(a)(iii). This could have been different if Respondent did obtain the disputed domain name through a transfer (i.e., new registration) of the domain name that occurred after Complainant’s trademark came into existence.
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 <j-brand.com> domain REMAIN WITH Respondent.
__________________________________________________________________
Flip Petillion, Panelist
Dated: August 16, 2012
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