national arbitration forum

 

DECISION

 

Gangnam Inc. v. annerily lee

Claim Number: FA1308001513769

PARTIES

Complainant is Gangnam Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington, D.C., USA.  Respondent is annerily lee (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <jjshousebridal.com>, registered with GODADDY.COM, LLC.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 8, 2013; the National Arbitration Forum received payment on August 8, 2013.

 

On August 9, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <jjshousebridal.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name.  GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.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 August 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 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@jjshousebridal.com.  Also on August 9, 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 September 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.

 

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 <jjshousebridal.com> domain name is confusingly similar to Complainant’s JJ’S HOUSE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <jjshousebridal.com> domain name.

 

3.    Respondent registered and uses the <jjshousebridal.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the JJ’S HOUSE mark (Reg. No. 4,134,340, registered February 14, 2012), used in connection with offering bridal goods.

 

Respondent registered the <jjshousebridal.com> domain name on January 24, 2013, and uses it for a commercial website that mirrors Complainant’s website and sells counterfeit bridal goods.

 

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

 

The Panel finds that Complainant’s registration of the JJ’S HOUSE mark with the USPTO demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). Respondent appears to reside and operate within China.  However, the Panel notes that Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent resides and operates.  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).

 

Respondent’s <jjshousebridal.com> domain name is confusingly similar to Complainant’s trademark, as it incorporates Complainant’s entire mark and adds the descriptive term “bridal.”  This does not differentiate Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i).  See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark).  The Panel notes that the removal of punctuation, such as apostrophes, also does not distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark).  The addition of a gTLD is also inconsequential to a Policy ¶ 4(a)(i) determination.  See 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)).  Accordingly, the Panel finds that Respondent’s <jjshousebridal.com> domain name is confusingly similar to Complainant’s JJ’S HOUSE mark.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 alleges that Respondent is not commonly known as JJ’S HOUSE, and states that Respondent is not licensed or authorized to use Complainant’s mark.  The WHOIS record for the <jjshousebridal.com> domain name lists “annerily lee” as the registrant.  In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel found that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring complainant’s mark and failed to submit evidence that it was commonly known by the domain name.  Thus, the Panel finds that Respondent is not commonly known by the <jjshousebridal.com> domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant claims that Respondent is using the <jjshousebridal.com> domain name with a commercial website that mirrors Complainant’s website to sell counterfeit bridal and other clothing and accessories.  The Panel notes that Respondent’s disputed domain name resolves to a website selling “Wedding Dresses,” “Wedding Party Dresses,” and “Special Occasion Dresses.”  Prior panels have held that a respondent’s use of a domain name to provide counterfeit versions of complainant’s products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.  See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).  Accordingly, the Panel finds that Respondent is not using the <jjshousebridal.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

Complainant contends that Respondent is using the <jjshousebridal.com> domain name in connection with a commercial webpage that mirrors Complainant’s website to sell counterfeit bridal and other clothing and accessories.  The Panel notes that Respondent’s webpage resembles Complainant’s legitimate website, featuring pictures and prices of bridal clothing and accessories.  In Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006), the panel found respondent’s attempt to pass itself off as complainant was not 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) when respondent used the disputed domain name to present users with a website that was nearly identical to complainant’s website.  The Panel agrees that Respondent is attempting to pass itself off as Complainant through its <jjshousebridal.com> domain name, additional evidence that Respondent is not using the disputed domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent is using the <jjshousebridal.com> domain name in connection with a commercial website that mirrors Complainant’s website to sell counterfeit bridal goods.  In H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009), the panel determined that respondent’s selling of counterfeit products creates the likelihood of confusion as to complainant’s affiliation with the disputed domain name and allows respondent to profit from that confusion.  Thus, the Panel finds that Respondent’s use of the <jjshousebridal.com> domain name to sell counterfeit products demonstrates bad faith use and registration pursuant to Policy ¶ 4(b)(iv).

 

The Panel again notes the similarity between Complainant’s and Respondent’s websites and finds that Respondent’s webpage is an attempt to pass itself off as Complainant, bad faith 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 claims that Respondent had constructive knowledge of Complainant’s trademark rights due to the federal registration of the JJ’S HOUSE mark, and actual knowledge of Complainant’s rights since the domain name <jjshousebridal.com> combines Complainant’s trademark with the generic term “bridal,” to describe the types of products Complainant sells.  The Panel agrees and finds that, also due to Respondent’s use of the domain name to sell counterfeit versions of Complainant's products, Respondent had actual knowledge of the mark and Complainant's rights.  This constitutes bad faith under Policy ¶ 4(a)(iii).  See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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 that Complainant has satisfied Policy ¶ 4(a)(iii).

 

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

 

 

Sandra J. Franklin, Panelist

Dated:  September 11, 2013

 

 

 

 

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