J Brand, Inc. v. qiqi wang
Claim Number: FA1207001453362
Complainant is J Brand, Inc. (“Complainant”), represented by I. Morley Drucker of FULWIDER PATTON LLP, California, USA. Respondent is qiqi wang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jbrandjeansmall.org>, registered with GoDaddy.com, LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 13, 2012; the National Arbitration Forum received payment on July 13, 2012.
On July 17, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <jbrandjeansmall.org> 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 July 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@jbrandjeansmall.org. Also on July 19, 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 August 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant manufactures clothing for men and women, particularly jeans and pants and sells these products under the J BRAND mark throughout the world.
2. Complainant holds a trademark registration for the J BRAND mark with multiple trademark authorities around the world, including:
§ United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,250,947 registered June 12, 2007);
§ European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 4,994,885 registered April 11, 2007);
§ Hong Kong’s Intellectual Property Department (“HKIPD”) (Reg. No. 300,647,000 registered May 26, 2006); and
§ Japan Patent Office (“JPO”) (Reg. No. 5,148,904 registered July 4, 2008). See Complainant’s Annex A.
3. Respondent registered the <jbrandjeansmall.org> domain name on April 12, 2012.
4. Respondent’s <jbrandjeansmall.org> domain name is confusingly similar to Complainant’s J BRAND mark, as the terms “jeans” and “mall” relate to aspects of Complainant’s business and .the removal of a space and the addition of a generic top-level domain (“gTLD”) do not prevent a finding of confusing similarity.
5. Respondent has no rights or legitimate interests in the
<jbrandjeansmall.org> disputed domain as it is not commonly known by the domain name, is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name and the domain name resolves to a website that sells Complainant’s products without authorization from Complainant.
6. Respondent registered and uses the <jbrandjeansmall.org> domain
name in bad faith as it has registered and used it for the purpose of creating confusion as to the likelihood of Complainant’s affiliation with the disputed domain name in order to make profit, uses the domain name to sell Complainant’s products without Complainant’s authorization and had actual knowledge of Complainant’s rights in the mark because of Complainant’s fame and use of the J BRAND mark throughout the world.
B. Respondent
Respondent failed to submit a Response in this proceeding.
2. Complainant holds trademark registrations for the J BRAND mark with multiple trademark authorities around the world, including:
§ United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,250,947 registered June 12, 2007);
§ European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 4,994,885 registered April 11, 2007);
§ Hong Kong’s Intellectual Property Department (“HKIPD”) (Reg. No. 300,647,000 registered May 26, 2006); and
§ Japan Patent Office (“JPO”) (Reg. No. 5,148,904 registered July 4, 2008).
3. Respondent registered the <jbrandjeansmall.org> domain name on April 12, 2012. The domain name resolves to a website at which Complainant’s products are sold without its authorization.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant alleges that it owns rights in the J BRAND mark. According to Complainant, Complainant manufactures clothing for men and women, particularly jeans and pants, and sells these products under the J BRAND mark throughout the world. Complainant claims that it holds a trademark registration for the J BRAND mark with multiple trademark authorities around the world, including:
(a) USPTO (Reg. No. 3,250,947 registered June 12, 2007);
(b) OHIM (Reg. No. 4,994,885 registered April 11, 2007);
(c) HKIPD (Reg. No. 300,647,000 registered May 26, 2006); and
(d) JPO (Reg. No. 5,148,904 registered July 4, 2008).
See Complainant’s Annex A. The Panel notes that Respondent resides or operates in China. In Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), the panel found that a complainant was not required to register a mark within the respondent’s country as long as the complainant was able to demonstrate rights in a country. In Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005), the panel found that a complainant’s trademark registrations throughout the world were sufficient proof of the complainant’s rights in the mark. Thus, the Panel finds that Complainant’s trademark registrations conclusively establish Complainant’s rights in the J BRAND mark for the purpose of Policy ¶ 4(a) (i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s J BRAND mark. Complainant avers that Respondent’s <jbrandjeansmall.org> domain name is confusingly similar to Complainant’s J BRAND mark. Complainant contends that the disputed domain name combines Complainant’s mark with the terms “jeans” and “mall.” Complainant argues that both of these terms relate to aspects of Complainant’s business. In Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003), the panel found that the addition of descriptive terms to a complainant’s mark did not remove a disputed domain name from the realm of confusing similarity. Complainant also notes that the <jbrandjeansmall.org> domain name does not include the space found in Complainant’s mark, but does include the gTLD “.org.” In Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), the panel concluded that the removal of a space and the addition of a gTLD do not prevent a finding of confusing similarity. Consequently, the Panel holds that Respondent’s <jbrandjeansmall.org> domain name is confusingly similar to Complainant’s J BRAND mark pursuant to Policy ¶ 4(a) (i).
Complainant has thus made out the first of the three elements that it must establish.
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 Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s J BRAND mark and to use it in its domain name;
(b) Respondent has then decided to add to the J BRAND mark the words “jeans” and “mall” which can only enhance the notion that the domain name is an official domain name of the famous company J BRAND Inc.
(c) The disputed domain name resolves to Respondent’s website which offers Complainant’s well known products for sale without authorization from Complainant.
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant asserts that Respondent is not commonly known by the <jbrandjeansmall.org> domain name. Complainant claims that Respondent is not related to Complainant and is not permitted to use Complainant’s J BRAND mark. Complainant further argues that the WHOIS information, which lists the registrant of the <jbrandjeansmall.org> domain name as “qiqi wang,” does not resemble the disputed domain name. The Panel notes that Respondent did not contradict these terms because Respondent failed to respond to this case. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel decided that a respondent was not commonly known by a disputed domain name based on the WHOIS information, the lack of authorization from the complainant and the other evidence in the record. In light of the WHOIS information, Complainant’s lack of authorization and the evidence in the record, the Panel finds that Respondent is not commonly known by the <jbrandjeansmall.org> domain name according to Policy ¶ 4(c) (ii).
(f) According to Complainant, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <jbrandjeansmall.org> domain name. Complainant argues that the disputed domain name resolves to a website that sells Complainant’s products without authorization from Complainant. See Complainant’s Exhibit F. In Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000), the panel held that a respondent did not own rights and legitimate interests in a disputed domain name when the respondent used the disputed domain name to sell the complainant’s goods without the complainant’s permission. Therefore, the Panel concludes that Respondent is making neither a Policy ¶ 4(c)(I) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <jbrandjeansmall.org> domain name.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent registered and uses the <jbrandjeansmall.org> domain name for the purpose of creating confusion as to the likelihood of Complainant’s affiliation with the disputed domain name in order to profit. Complainant alleges that Respondent uses the confusingly similar disputed domain name to sell Complainant’s products without Complainant’s authorization, which the Panel infers creates Internet user confusion as to Complainant’s association with the domain name. Furthermore, the Panel presumes that Respondent profits from the sale of Complainant’s goods. In Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003), the panel found a respondent guilty of bad faith registration and use when the respondent registered and used a domain name to host a website selling the complainant’s products. As the Panel agrees with this precedent, the Panel finds Respondent guilty of Policy ¶ 4(b) (iv) bad faith registration and use of the <jbrandjeansmall.org> domain name.
Secondly, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the J BRAND mark because of Complainant’s use of the mark throughout the world. The Panel notes that the sale of Complainant’s products on the resolving website also indicates that Respondent had knowledge of Complainant’s J BRAND mark. In Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006), the panel found that a respondent registered a disputed domain name in bad faith because the respondent had actual knowledge of the complainant’s rights in the mark at the time of registration. Thus, the Panel holds that Respondent registered the <jbrandjeansmall.org> domain name in bad faith under Policy ¶ 4(a) (iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the J BRAND mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jbrandjeansmall.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 14, 2012
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