J Brand, Inc. v. guan jing
Claim Number: FA1210001466015
Complainant is J Brand, Inc. (“Complainant”), represented by I. Morley Drucker of Fulwider Patton LLP, California, USA. Respondent is guan jing (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jbrand-jeans.org>, registered with Key Systems GmbH.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 5, 2012; the National Arbitration Forum received payment on October 5, 2012. The Complaint was submitted in both Chinese and English.
On October 8, 2012, Key Systems GmbH confirmed by e-mail to the National Arbitration Forum that the <jbrand-jeans.org> domain name is registered with Key Systems GmbH and that Respondent is the current registrant of the name. Key Systems GmbH has verified that Respondent is bound by the Key Systems GmbH 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 October 12, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of November 1, 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@jbrand-jeans.org. Also on October 12, 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.
On November 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complainant and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is a world famous manufacturer of quality clothing for men and women, which are sold under the trademark J BRAND.
2. Complainant has been in business since 2004 and has registered its trademark in many countries throughout the world, including with the United States Patent and Trademark Office (“USPTO”), the European Union Office for Harmonization in the Internal Market (“OHIM”), Mexican Institute of Industrial Property (“MIIP”), the Canadian Intellectual Property Office (“CIPO”), and the Hong Kong Trade Marks Registry (“HKTMR”):
USPTO
J BRAND Reg. No. 3,250,947 registered June 12, 2007;
OHIM
J BRAND Reg. No. 4,994,885 registered April 11, 2007;
MIIP
J BRAND Reg. No. 967,154 registered December 13, 2006;
CIPO
J BRAND Reg. No. TMA736,886 registered March 25, 2009;
HKTMR
J BRAND Reg. No. 300,659,412 registered June 15, 2006; &
JBRAND Reg. No. 300,647,000 registered May 26, 2006.
3. Complainant also owns many domain names containing the JBRAND mark, including <jbrandjeans.com>, <jbrandjeans.org>,<jbrandjeans.co>, etc.
4. Respondent’s <jbrand-jeans.org> domain name is confusingly similar to Complainant’s JBRAND mark because the addition of the descriptive term “jeans,” the hyphen, and the generic top-level domain (“gTLD”) does not negate the confusing similarity.
5. Complainant has no relationship with Respondent, nor has Complainant given Respondent permission or authorization to register and use the contested domain name.
6. The WHOIS information for the disputed domain name identifies the registrant as “Guan Jing.”
7. Respondent operates an online retail store prominently displaying Complainant’s trademark and offering goods identical to those offered by Complainant. The resolving website displays Complainant’s trademark and Complainant’s advertising and product images.
8. The public is likely to believe that Respondent’s website is sponsored, owned, operated or authorized by Complainant.
9. Respondent had actual knowledge of Complainant’s rights in the J BRAND mark.
10. Respondent’s disputed domain name resolves to a commercial website selling Complainant’s products without authorization from which Respondent presumably profits. This use creates confusion among Internet users as to Complainant’s affiliation with the disputed domain name and is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).
11. Complainant previously filed two Complaints with Nominet UK against Respondent and was awarded decisions transferring the domain names to Complainant. See J Brand, Inc. v. Guan Jung, D00020881 (Nominet UK Mar. 12, 2012); see also J Brand, Inc. v. Mr. Guan Jing, D00011331 (Nominet UK July 2, 2012).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the JBRAND and J BRAND marks. Respondent’s domain name is confusingly similar to Complainant’s marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <jbrand-jeans.org> domain name, and that Respondent registered and uses the 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.
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 argues that it has registered its J BRAND and JBRAND marks in various countries, including with the USPTO, OHIM, MIIP, CIPO, and the HKTMR:
USPTO
J BRAND Reg. No. 3,250,947 registered June 12, 2007;
OHIM
J BRAND Reg. No. 4,994,885 registered April 11, 2007;
MIIP
J BRAND Reg. No. 967,154 registered December 13, 2006;
CIPO
J BRAND Reg. No. TMA736,886 registered March 25, 2009;
HKTMR
J BRAND Reg. No. 300,659,412 registered June 15, 2006; &
JBRAND Reg. No. 300,647,000 registered May 26, 2006.
This collection of trademark registrations adequately reflects Complainant’s rights in the J BRAND and JBRAND marks pursuant to Policy ¶ 4(a)(i), even though the marks may not be registered in Respondent’s country. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also Covidien AG v. zhaozhongli zhaozhongli, FA 1231649 (Nat. Arb. Forum Dec. 22, 2008) (finding that complainant established its rights in the mark through its registration with the Hong Kong Trade Marks Registry); 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 Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant alleges that Respondent’s disputed domain name begins with the JBRAND mark and then adds the descriptive term “jeans,” a hyphen, and the gTLD “.org.” Complainant argues that none of these changes sufficiently negates the confusing similarity between the mark and the disputed domain name. In accord with prior panel holdings, the Panel concludes that Respondent’s <jbrand-jeans.org> domain name is confusingly similar to Complainant’s JBRAND mark according 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 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that it has no relationship with Respondent and has not given permission or authorization to Respondent to register and use the disputed domain name. Complainant argues that the WHOIS information for the disputed domain name lists the registrant as “Guan Jung.” Based on these assertions and supporting evidence, as well as the lack of evidence supporting Respondent’s position, the Panel determines that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant alleges that Respondent uses the disputed domain name to operate an online retail store prominently displaying Complainant’s J BRAND mark. Complainant argues that the goods offered are identical to the goods offered by Complainant. Complainant contends that the resolving website prominently displays the J BRAND trademark, the clothing designs of Complainant, the covers of Complainant’s prior catalogues, and copies of photographs of Complainant’s products. The Panel finds that Respondent’s use of the disputed domain name for this commercial purpose does not comport with Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) as there is no bona fide offering of goods or services or legitimate noncommercial or fair use. See G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because the respondent is using the infringing domain name to sell prescription drugs, the panel could infer that the respondent is using the complainant’s mark to attract Internet users to its website for commercial benefit).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that it previously filed two Complaints with Nominet UK against Respondent and was awarded decisions transferring the domain names to Complainant. See J Brand, Inc. v. Guan Jung, D00020881 (Nominet UK Mar. 12, 2012); J Brand, Inc. v. Mr. Guan Jing, D00011331 (Nominet UK July 2, 2012). The Nominet UK Policy of bad faith is similar to that of usTLD cases in that bad faith can be shown in either the registration OR the use of the dispute domain name. As these prior Nominet UK complaints constitute sufficient evidence of a pattern of domain name registrations, the Panel finds that Respondent’s current registration of the disputed domain name along with these prior proceedings indicates that Respondent is engaged in a bad faith pattern of registering and using domain names that infringe on another’s trademark under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Complainant contends that Respondent’s disputed domain name resolves to a commercial website that sells Complainant’s products without authorization. Complainant argues that Respondent presumably profits from these sales and that the disputed domain name creates confusion among Internet users as to the likelihood of Complainant’s affiliation with the disputed domain name. As a result, Complainant argues that Respondent’s activities at the resolving website are evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). The Panel agrees with Complainant and finds accordingly. See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
Complainant alleges that Respondent’s resolving website displays Complainant’s mark, Complainant’s products, Complainant’s previous catalogue covers, and photographs of Complainant’s products. Complainant also asserts that Respondent has been involved in two prior proceedings initiated by Complainant regarding Respondent’s registration of domain name incorporating Complainant’s mark. Based on these facts, Complainant contends that it can reasonably be inferred that Respondent had actual knowledge of Complainant’s rights in the J BRAND marks when Respondent registered the disputed domain name. Because the Panel agrees with Complainant, the Panel holds that Respondent registered the disputed 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”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jbrand-jeans.org> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 27, 2012
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