Joe’s Jeans Subsidiary, Inc. v. hu shaotang / ushaotang h
Claim Number: FA1207001454769
Complainant is Joe’s Jeans Subsidiary, Inc. (“Complainant”), represented by David A. W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is hu shaotang / ushaotang h (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <joesjeansusa.com>, registered with SHANGHAI YOVOLE NETWORKS INC.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 23, 2012; the National Arbitration Forum received payment on July 24, 2012. The Complaint was submitted in both Chinese and English.
On July 26, 2012, SHANGHAI YOVOLE NETWORKS INC. confirmed by e-mail to the National Arbitration Forum that the <joesjeansusa.com> domain name is registered with SHANGHAI YOVOLE NETWORKS INC. and that Respondent is the current registrant of the name. SHANGHAI YOVOLE NETWORKS INC. has verified that Respondent is bound by the SHANGHAI YOVOLE NETWORKS INC. 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 August 6, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 27, 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@joesjeansusa.com. Also on August 6, 2012, the Chinese language 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
On August 29, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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 is a high-end clothing designer and markets its products under the JOE’S JEANS marks. Complainant owns the domain name <joesjeans.com>, at which it operates an online retail store for its denim products and other apparel and accessories. Complainant’s goods are available throughout the United States, as well as in countries throughout the world. Complainant owns trademark registrations for its JOES JEAN’S mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,861,398 registered October 12, 2010). See Exhibit B. Complainant also owns trademark registrations for the JOE’S JEANS mark with numerous other agencies globally, including the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA601917 registered February 11, 2004), and China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 4,327,128 registered July 7, 2008).
Respondent registered the <joesjeansusa.com> domain name on March 28, 2012. The disputed domain name resolves to a website that offers counterfeit products and services that are not authorized by Complainant and is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Respondent attempts to pass itself off as Complainant and is not associated with Complainant’s business. Respondent disrupts Complainant’s business by deceiving the public into believing that the goods sold at Respondent’s website are distributed by Complainant, and Respondent makes a commercial gain from its sale of the goods to unsuspecting website visitors. Respondent had actual and constructive knowledge that by registering the <joesjeansusa.com> domain name, Respondent was infringing on Complainant’s trademark rights in the JOE’S JEANS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant presents evidence of numerous trademark registrations that demonstrate its rights in the JOE’S JEANS mark, such as with the USPTO (Reg. No. 3,861,398 registered October 12, 2010), the CIPO (Reg. No. TMA601917 registered February 11, 2004), and the OHIM (Reg. No. 002670016 registered July 16, 2003). In Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004), the panel concluded that holding several trademark registrations with authorities around the world establishes a complainant’s rights in its mark. The Panel concludes Complainant has acquired trademark rights in its JOE’S JEANS mark under Policy ¶ 4(a)(i) through its many trademark registrations.
Complainant asserts that the <joesjeansusa.com> domain name is confusingly similar to its JOE’S JEANS mark due to the addition of the geographic term “usa.” The Panel also notes the disputed domain name eliminates the apostrophe in the mark as well as the space between words, and includes the generic top-level domain (“gTLD”) “.com.” The Panel determines the inclusion of a gTLD and a geographic term, and the removal of the space between the words and the apostrophe does not change the disputed domain name’s confusing similarity to Complainant’s JOE’S JEANS mark pursuant to Policy ¶ 4(a)(i). See 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); see also Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark).
Complainant has proven this element.
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 contends that Respondent is not commonly known by the <joesjeansusa.com> domain name, as demonstrated by the WHOIS information associated with the domain name, which identifies “hu shaotang” as the registrant. Complainant argues that the WHOIS information has no connection to the <joesjeansusa.com> domain name and Respondent has no authorization to use Complainant’s mark, which is evidence that Respondent has no rights or legitimate interests in the disputed domain name. The panel in M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), determined that the WHOIS information and the lack of other supporting evidence did not demonstrate that the respondent was commonly known by the disputed domain name. The Panel finds that because the WHOIS information identifies the registrant as “hu shaotang,” Respondent could not be commonly known by the <joesjeansusa.com> domain name, and therefore lacks rights and legitimate interests in the domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent sells counterfeit products at its resolving website, which is not a use of the <joesjeansusa.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant also contends that Respondent attempts to pass off its resolving website as belonging to Complainant. The Panel notes the resolving website displays Complainant’s JOE’S JEANS mark and logo, as well as products that appear to originate from Complainant. In Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007), stated that the respondent’s use of the disputed domain name to sell goods in competition with the complainant’s products, including counterfeit versions of the complainant’s goods did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. The panel in Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), found that the respondent’s attempt to pass itself off as the complainant at the resolving website was evidence of the repsondent’s lack of rights or legitimate interests in the disputed domain name. The Panel finds Respondent’s use of the disputed domain name to market counterfeit goods and to host a website that attempts to pass itself off as Complainant’s is not 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).
Complainant has proven this element.
Complainant contends that Respondent disrupts Complainant’s business by selling unauthorized and counterfeit goods purporting to come from Complainant’s company. Complainant argues that Internet users who intend to purchase Complainant’s goods unsuspectingly purchase counterfeit items instead, which causes disruption to Complainant. The panel in Ashley Furniture Indus., Inc. v. jacky, FA 1349241 (Nat. Arb. Forum Nov. 12, 2010), stated that the respondent’s offering of counterfeit versions of the complainant’s goods for sale at the resolving website constitutes competition with the complainant’s business and was therefore disruptive, demonstrating bad faith registration and use. The Panel determines Respondent’s use of the <joesjeansusa.com> domain name to offer counterfeit goods disrupts Complainant’s business and is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant asserts that Respondent makes a profit from its use of the <joesjeansusa.com> domain name by attracting Internet traffic to its website by using a confusingly similar domain name to Complainant’s mark. Complainant argues that Respondent’s deceptive practice to sell counterfeit goods at the resolving website is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). The Panel determines Respondent’s commercial benefit from the sale of counterfeit products as a result of consumer confusion demonstrates that Respondent registered and uses the <joesjeansusa.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Billabong Int’l Ltd. v. kael, FA 1448317 (Nat. Arb. Forum July 24, 2012) (stating that the respondent’s use of the disputed domain name provided financial benefits because the respondent created confusion as to the complainant’s affiliation with the disputed domain name which demonstrated bad faith registration and use).
Complainant argues that Respondent uses the website associated with the <joesjeansusa.com> domain name to pass itself off as Complainant’s business. The Panel observes Respondent established a website at the disputed domain name that uses Complainant’s mark and logo, and displays products for sale that appear to be made by Complainant’s business. The Panel finds Respondent’s attempt to imitate Complainant’s online presence demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Complainant argues that Respondent had actual and constructive knowledge at the time Respondent registered the <joesjeansusa.com> domain name that it would violate Complainant’s trademark rights in the JOE’S JEANS mark. Complainant asserts that its trademark registrations are sufficient to provide both constructive and actual knowledge of its rights in the JOE’S JEANS mark. Previous panels have concluded that mere constructive knowledge is inadequate to make a finding of bad faith registration and use, therefore the Panel declines to find bad faith under Policy ¶ 4(a)(iii). See BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith). However, the Panel determines that as a result of Respondent’s use of the disputed domain name to offer counterfeit versions of Complainant’s goods, Respondent had actual knowledge of Complainant’s rights in the JOE’S JEANS mark and finds that Respondent registered the <joesjeansusa.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <joesjeansusa.com> domain name be TRANSFERRED from Respondent to Complainant.
Karl V. Fink
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 10, 2012
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