national arbitration forum

 

DECISION

 

David Yurman IP LLC v. Sun Dabao

Claim Number: FA1301001478676

 

PARTIES

Complainant is David Yurman IP LLC (“Complainant”), represented by Lora A. Moffatt of Salans LLP, New York, USA.  Respondent is SUN DABAO (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <davidyurmancollections.com>, registered with HICHINA ZHICHENG TECHNOLOGY LTD.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 4, 2013; the National Arbitration Forum received payment on January 7, 2013. The Complaint was submitted in both Chinese and English. 

 

On January 4, 2013, HICHINA ZHICHENG TECHNOLOGY LTD. confirmed by e-mail to the National Arbitration Forum that the <davidyurmancollections.com> domain name is registered with HICHINA ZHICHENG TECHNOLOGY LTD. and that Respondent is the current registrant of the name.  HICHINA ZHICHENG TECHNOLOGY LTD. has verified that Respondent is bound by the HICHINA ZHICHENG TECHNOLOGY LTD. 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 January 14, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 4, 2013 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@davidyurmancollections.com.  Also on January 14, 2013, 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 February 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <davidyurmancollections.com> domain name, the domain name at issue, is confusingly similar to Complainant’s DAVID YURMAN mark.

 

2.    Respondent does not have any rights or legitimate interests in the domain name at issue.

 

3.    Respondent registered and used the domain name at issue in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is engaged in the design, manufacture, distribution, and sale of fine and distinctive jewelry and holds several trademark registrations for the DAVID YURMAN mark with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 885,583 registered March 1, 2006) and the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,725,487 registered October 20, 1992).  Respondent registered the <davidyurmancollections.com> domain name without authorization from Complainant on September 25, 2012.  Respondent is not commonly known by the <davidyurmancollections.com> domain name and Complainant has not licensed or otherwise authorized Respondent’s use of the DAVID YURMAN mark in any manner.  Respondent is not, nor has it ever been, an authorized retailer of Complainant.  Respondent was “well aware of Complainant” at the time Respondent registered the <davidyurmancollections.com> domain name although the website associated with the disputed domain name identifies itself as being associated with Complainant and blatantly copies Complainant’s trademark.  Based on Respondent’s severely discounted prices, Respondent is likely using the disputed domain to sell knock-off or counterfeit versions of Complainant’s DAVID YURMAN-branded jewelry.

 

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

 

Complainant has rights in the DAVID YURMAN mark pursuant to Policy ¶ 4(a)(i) based on its registrations of the mark with China’s SAIC (e.g., Reg. No. 885,583 registered March 1, 2006) and the USPTO (e.g., Reg. No. 1,725,487 registered October 20, 1992).  A complainant’s registration of a mark with a federal trademark authority such as the SAIC is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s State Intellectual Property Office was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)). Accordingly, Complainant has established rights in the DAVID YURMAN mark pursuant to Policy ¶ 4(a)(i) through its registrations of the mark.

 

Respondent’s <davidyurmancollections.com> domain name is confusingly similar to Complainant’s DAVID YURMAN mark within the meaning of Policy ¶ 4(a)(i).  The disputed domain includes Complainant’s mark, while adding the descriptive term “collections” and affixing the generic top-level domain (“gTLD”) “.com.”  The term “collections” is in fact descriptive of Complainant’s business, and as such cannot distinguish the disputed domain name from Complainant’s mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business). The affixation of a gTLD is also not sufficient to create unique, wholly distinctive domain name under Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Accordingly, Respondent’s <davidyurmancollections.com> domain name is confusingly similar to Complainant’s DAVID YURMAN mark within the meaning of Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been established. 

 

Rights or Legitimate Interests

 

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.”).

 

Respondent is not commonly known by the <davidyurmancollections.com> domain name for the purposes of Policy ¶ 4(c)(ii). Complainant has not licensed or otherwise authorized Respondent’s use of the DAVID YURMAN mark in any manner, including use in Respondent’s domain name, and Respondent is not, nor has it ever been, an authorized retailer of Complainant. The relevant WHOIS information identifies Respondent as “Sun Dabao.”  Because Respondent has failed to satisfy its burden of producing a Response in this matter, the record lacks any evidence to refute Complainant’s assertion that Respondent is not commonly known by the <davidyurmancollections.com> domain name. In light of the foregoing, the Panel concludes that Respondent is not commonly known by the <davidyurmancollections.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Respondent is likely using the disputed domain to sell knock-off or counterfeit versions of Complainant’s DAVID YURMAN-branded jewelry. Respondent’s website identifies itself as being associated with Complainant and blatantly copies Complainant’s trademark, as well as the images displayed on Complainant’s legitimate site. Respondent’s use of the <davidyurmancollections.com> domain in an attempt to pass itself off as Complainant and sell counterfeit versions of Complainant’s products satisfies neither Policy ¶ 4(c)(i) nor Policy ¶ 4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”).

 

The Panel finds that Policy ¶ 4(a)(ii) has been established. 

 

Registration and Use in Bad Faith

 

Through Respondent’s registration and use of the <davidyurmancollections.com> domain name, Respondent is soliciting business that would otherwise go to Complainant, thereby disrupting Complainant’s business pursuant to Policy ¶ 4(b)(iii).  Respondent competes with Complainant’s business, as Respondent sells what purports to be Complainant’s products. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”).  Respondent’s use of a confusingly similar domain name to sell products that appear to be made and/or distributed by Complainant disrupts Complainant’s business in bad faith pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Respondent’s registration and use of the <davidyurmancollections.com> domain name also constitutes bad faith under Policy ¶ 4(b)(iv).  It appears to the Panel that Respondent seeks to take advantage of the recognition and goodwill that Complainant’s DAVID YURMAN mark has garnered by intentionally seeking to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its goods or services. The Panel assumes that Respondent generates a commercial gain from the products sold on its website and further assumes that Respondent’s selection of a confusingly similar domain name and operation of a visually similar website are meant to create confusion with Complainant in order to sell counterfeit versions of Complainant’s products. Accordingly, Respondent’s registration and use of the

<davidyurmancollections.com> domain name demonstrates bad faith under Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

Finally, it appears to the Panel that Respondent was “well aware of Complainant” at the time Respondent registered the <davidyurmancollections.com> domain name.  Respondent’s website identifies itself as being associated with Complainant and blatantly copies Complainant’s trademark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, this Panel finds that Respondent had actual knowledge of Complainant's rights in the DAVID YURMAN mark, and therefore determines that Respondent registered the <davidyurmancollections.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith 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 "actual knowledge of Complainant's mark when registering the disputed domain name").

 

The Panel finds that Policy ¶ 4(a)(iii) has been established. 

 

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 <davidyurmancollections.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  February 11, 2013

 

 

 

 

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