J Brand, Inc. v. Zhang Jipeng / Jipeng Zhang
Claim Number: FA1301001483030
Complainant is J Brand, Inc. (“Complainant”), represented by I. Morley Drucker of FULWIDER PATTON LLP, California, USA. Respondent is Zhang Jipeng / Jipeng Zhang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vincejbrand.com>, registered with NAME.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2013; the National Arbitration Forum received payment on January 31, 2013.
On January 31, 2013, NAME.COM LLC confirmed by e-mail to the National Arbitration Forum that the <vincejbrand.com> domain name is registered with NAME.COM LLC and that Respondent is the current registrant of the name. NAME.COM LLC has verified that Respondent is bound by the NAME.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 February 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 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@vincejbrand.com. Also on February 4, 2013, 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 March 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant has rights in the J BRAND mark by way of trademark registrations with several national trademark agencies. See United States Patent & Trademark Office (“USPTO”) Reg. No. 3,250,947 registered on June 12, 2007; E.U. Office of Harmonization in the Internal Market (“OHIM”) Reg. No. 3,994,885 registered on April 11, 2007; Hong Kong Special Administrative Region Intellectual Property Department (“HKIPD”) Reg. No. 300,659,412 registered on June 15, 2006.
Respondent’s <vincejbrand.com> domain name is confusingly similar to the J BRAND mark. Respondent has merely added the generic male name “vince” to the J BRAND mark, in addition to the irrelevant generic top-level domain “.com.”
Complainant has no relationship with Respondent that would permit or authorize Respondent to embody the J BRAND mark in domain names. The WHOIS information lists “Zhang Jipeng / Jipeng Zhang” as the registrant of the domain name. Nothing else indicates that Complainant is commonly known by the <vincejbrand.com> domain name.
Respondent is making commercial use of the domain name by diverting customer’s to an online retail store that prominently boasts Complainant’s J BRAND mark in conjunction with jeans that Respondent is soliciting.
Respondent provides a mixture of uses for the domain name ranging from the unauthorized solicitation of Complainant’s own goods, to hyperlinks that send Internet users to competing websites.
Respondent seeks to confuse Internet users into falsely believing that Complainant has approved of, or is affiliated with, the content and products that appear on the <vincejbrand.com> domain name. Respondent is presumably generating profits from this confusion.
Respondent clearly had actual knowledge of Complainant’s rights in the J BRAND mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns several trademark registrations with the USPTO, as well as with the OHIM and HKIPD, for the J BRANDS mark.
Respondent registered the at-issue domain name after Complainant acquired rights in the J BRANDS mark.
Respondent is not licensed or otherwise entitled to use Complainant’s trademark.
The at-issue domain name addresses a website featuring an online retail store that prominently proffers Complainant’s J BRAND mark in conjunction with jeans that Respondent is offering. The site displays links to websites that compete with Complainant.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows it has rights in a mark under Policy ¶(4)(i) by way of its trademark registrations with several national trademark agencies including the USPTO; OHIM and HKIPD. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Respondent’s <vincejbrand.com> domain name is confusingly similar to the J BRAND mark. In forming the at-issue domain name Respondent deletes the space between the two terms in Complainant’s trademark, prefaces the mark with the generic male name “vince,” and appends the top level domain name “.com” thereto. Notwithstanding the resulting typographical difference from Complainant’s mark, under the Policy the at-issue domain name is nevertheless confusingly similar to the J BRANDS trademark pursuant to Policy ¶4(a)(i). See Knives Plus, Inc. v. Mark Greenleaf, FA 1126655 (Nat. Arb. Forum Mar. 4, 2008) (finding that “the addition of the first name “marks” to Complainant’s trademark is insufficient to eliminate confusion.”); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
Respondent lacks either rights or legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and as discussed below there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in the at‑issue domain names.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
WHOIS information lists “Zhang Jipeng / Jipeng Zhang” as the registrant of the domain name and there is nothing before the Panel indicating that Complainant is otherwise commonly known by the <vincejbrand.com> domain name. Therefore, the Panel concludes that pursuant to Policy ¶ 4(c)(ii) Respondent is not commonly known by the <vincejbrand.com> domain name. 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).
Respondent is making a commercial use of the <vincejbrand.com> domain name by diverting customers to an online retail store that prominently proffers Complainant’s J BRAND mark in conjunction with the jeans that Respondent offers for sale. The <vincejbrand.com> website also displays hyperlinks that when clicked on send visitors to websites offering products that compete with Complainant. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant); see also United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates, pursuant to Policy ¶ 4(a)(ii), Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The at-issue domain name was registered is being used in bad faith. As discussed below, a Policy ¶ 4(b) bad faith circumstance is present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith under Policy ¶ 4(a)(iii) in registering and using the at-issue domain name.
In registering and using the at-issue domain name Respondent intends to confuse Internet users into falsely believing that Complainant has approved of, sponsors, or is affiliated with the products that appear on the <vincejbrand.com> website. As alluded to above, the <vincejbrand.com> website purports to sell official J BRAND merchandise while also displaying click-through links to Complainant’s competitors. Respondent intends to profit from this confusion through the increased traffic to its commercial <vincejbrand.com> website. Respondent’s scheme to use the unauthorized confusingly similar domain name to offer goods appearing to be those of Complainant and to promote competing hyperlinks demonstrates bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Finally, Respondent had knowledge of Complainant’s rights in the J BRAND mark prior to registering the at-issue domain name. Respondent’s prior knowledge of Complainant’s trademark is evident from the fact that Respondent uses Complainant’s trademark and offers Complainant’s J BRAND goods for sale on its website. Registering a domain name with actual knowledge of another’s rights in such name, such as here, further indicates Respondent’s bad faith pursuant to Policy ¶4(a)(iii). See 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vincejbrand.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 7, 2013
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