J Brand, Inc. v. PrivacyProtect.org / Domain Admin / ID#10760
Claim Number: FA1307001509827
Complainant is J Brand, Inc. (“Complainant”), represented by I. Morley Drucker of FULWIDER PATTON LLP, California, USA. Respondent is PrivacyProtect.org / Domain Admin / ID#10760 (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jbrandtr.net>, registered with FBS 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 16, 2013; the National Arbitration Forum received payment on July 16, 2013.
On July 22, 2013, FBS INC. confirmed by e-mail to the National Arbitration Forum that the <jbrandtr.net> domain name is registered with FBS INC. and that Respondent is the current registrant of the name. FBS INC. has verified that Respondent is bound by the FBS 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 July 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 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@jbrandtr.net. Also on July 23, 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 August 21, 2013, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
a. Complainant has rights in the J BRAND mark, used in connection with pants, jeans and other clothing items. Complainant is the owner of registrations for the J BRAND mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,250,947 registered June 12, 2007).
b. Complainant is a world famous manufacturer of high quality clothing and has been in business since 2004. Complainant has spent many millions of dollar on advertising.
c. The disputed domain name is confusingly similar to Complainant’s mark. Respondent’s <jbrandtr.net> domain name includes Complainant’s mark in its entirety while adding the letters “tr,” in reference to Turkey or the Turkish language, and the generic top level domain (“gTLD”) “.net.”
d. Respondent does not own any rights or legitimate interests in the <jbrandtr.net> domain name.
e. Respondent is not commonly known by the disputed domain name. Complainant has not authorized Respondent to use its mark in any way, and the WHOIS information indicates that Respondent is not known by the disputed domain.
f. The <jbrandtr.net> domain name resolves to a website that displays links that direct Internet users to a large number of Turkish commercial websites offering a variety of goods and services.
g. Respondent is using a confusingly similar domain name to divert Internet traffic to Respondent’s website, which hosts links to third-party sites selling goods and services.
h. Respondent had knowledge of Complainant’s mark prior to registering the disputed domain name because of Complainant’s well and widely known mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the J BRAND mark. Respondent’s domain name is confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <jbrandtr.net> 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 contends it has rights in the J BRAND mark, used in connection with pants, jeans and other clothing items. Complainant states it is the owner of registrations for the J BRAND mark with the USPTO (e.g., Reg. No. 3,250,947 registered June 12, 2007). Although Respondent is located in Australia, a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant owns a registration in a different country. See 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 paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Therefore, the Panel finds that Complainant has rights in the J BRAND mark pursuant to Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant claims the disputed domain name is confusingly similar to Complainant’s mark. Respondent’s <jbrandtr.net> domain name includes Complainant’s mark in its entirety while adding the letters “tr,” in reference to Turkey or the Turkish language, and the gTLD “.net.” The addition of the geographic identifier, “tr,” does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON). Furthermore, the addition of a gTLD is irrelevant for the purposes of Policy ¶ 4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <jbrandtr.net> domain name is confusingly similar to Complainant’s J BRAND mark pursuant to Policy ¶ 4(a)(i).
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 Respondent is not commonly known by the disputed domain name. Complainant states it has not authorized Respondent to use its mark in any way and that the WHOIS information indicates that Respondent is not known by the disputed domain. The WHOIS record for the <jbrandtr.net> domain name lists “PrivacyProtect.org” as the domain name registrant. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent is not authorized by Complainant to use the J BRAND mark, and neither the WHOIS information nor other evidence in the record indicates otherwise, the Panel finds that Respondent is not commonly known by the <jbrandtr.net> domain name.
Complainant asserts that the <jbrandtr.net> domain name resolves to a website that displays links that direct Internet users to a large number of Turkish commercial websites offering a variety of goods and services. If Internet users are diverted to a confusingly similar domain name whose resolving website displays a variety of links, then the respondent’s conduct does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent’s use of the <jbrandtr.net> domain name does not constitute 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent registered and is using the <jbrandtr.net> domain name in bad faith. Complainant asserts that Respondent is using a confusingly similar domain name to create a likelihood of confusion and take advantage of Internet users’ subsequent mistakes. Further, Complainant claims Respondent is using the disputed domain name to host links to third-party sites selling goods and services. Such conduct, along with hosting unrelated hyperlinks, for which a respondent presumably receives click-through revenue, constitutes bad faith under Policy ¶ 4(b)(iv). See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). Therefore, because the Panel finds Respondent is likely profiting from the <jbrandtr.net> domain name by creating a likelihood of confusion and taking advantage of Internet users’ subsequent mistakes, the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶4(b)(iv).
Complainant claims Respondent had knowledge of Complainant’s mark prior to registering the disputed domain name because of Complainant’s well and widely known mark. The Panel agrees and concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
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 <jbrandtr.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 3, 2013
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