national arbitration forum

 

DECISION

 

Gangnam Inc. v. online dresses

Claim Number: FA1308001514853

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <jjshousegown.com>, registered with GoDaddy.com, LLC.

 

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2013; the National Arbitration Forum received payment on August 15, 2013.

 

On August 15, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <jjshousegown.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 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 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@jjshousegown.com.  Also on August 19, 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 11, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant has used the JJ’S HOUSE mark to provide online bridal and clothing products. Complainant has registered the JJ’S HOUSE mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,134,340 registered on May 1, 2012).

 

Respondent has registered the <jjshousegown.com> domain name on February 26, 2013, which adds the term “gown” to Complainant’s mark.

 

Respondent is not commonly known by the <jjshousegown.com> domain name, but is merely called “online dresses.” Complainant has not licensed or authorized Respondent’s use of the JJ’S HOUSE mark in domain names. Respondent hosts a competing commercial website through this domain name.

 

Respondent also registered another domain name, <armanibridals.com>, which infringes on a third-party trademark.

 

Respondent is using the domain name to confuse Internet users into believing that Complainant is the source of the competing bridal and clothing products that Respondent sells through the <jjshousegown.com> domain name.

 

Respondent is deemed to be on constructive notice of Complainant’s rights. Furthermore, Respondent had actual knowledge of Complainant’s rights due to the inherently distinctive nature of the JJ’S HOUSE mark in connection with the sale of bridal and clothing products.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns a USPTO registered trademark for JJ’S HOUSE.

 

Respondent is not affiliated with Complainant and had not been authorized to use the JJ’S HOUSE mark in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired trademark rights in JJ’S HOUSE.

 

Respondent’s at-issue domain name is used to hosts a retail website that sells bridal and clothing products that directly compete with Complainant’s products.

 

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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant has rights under Policy ¶ 4(a)(i) via its registration of the JJ’S HOUSE mark with the USPTO. Such is the case even if Respondent resides outside of the United States. 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 Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).

 

Respondent’s at-issue domain name incorporates Complainant’s JJ’S HOUSE mark in its entirety less the domain name impermissible characters apostrophe and space, adds the generic term “gown” and then appending the top level domain name “.com” thereto. Respondent’s addition of “gown” to Complainant’s mark does not differentiate the domain name from the mark and the top level domain name is irrelevant to the Panel’s analysis. Likewise Respondent’s removal of the apostrophe and spaces is irrelevant as such characters can never appear in a well-formed domain name. Moreover, the term “gown” is suggestive of Complainant’s business and thus adds to any confusion between the domain name and Complainant’s trademark. Accordingly, the Panel concludes that Respondent’s <jjshousegown.com> domain name is confusingly similar to Complainant’s JJ’S HOUSE mark under Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant); see also Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”).

 

Rights or Legitimate Interests

Respondent lacks both rights and 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 respect of the domain name.

 

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 an 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 and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.

 

WHOIS information for <jjshousegown.com> identifies the domain name’s registrant as online dresses. Furthermore, Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services and there is nothing in the record which tends to otherwise show that Respondent is known by the at-issue domain name. Therefore, the Panel concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). 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).

 

The at-issue domain name addresses a website that sells and promotes dresses, gowns, and other apparel through statements such as “Free Shipping For All Dresses,” “Up to 80% Off + Free Shipping On Weddings & Events,” and “2013 Prom Dresses Arrived.”  Respondent’s use of a domain name that is confusingly similar to Complainant’s  trademark to operate a business that competes with Complainant  is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).. See, e.g., Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).

 

Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).

 

Respondent uses the confusingly similar domain name to mislead Internet users into believing that Complainant owns, sponsors or endorses Respondent’s <jjshousegown.com> website.  As mentioned above, the website sells bridal and clothing products that compete with Complainant’s goods. The website even includes the banner “JJ’s House Gown.com: fashion dress fashion you.” Clearly, Respondent’s use of the JJ’S HOUSE mark in furtherance of Respondent’s competing business demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).

 

Additionally, Respondent had actual knowledge of Complainant’s rights in the JJ’S HOUSE trademark before registering the <jjshousegown.com> domain name.  Respondent’s prior knowledge is evident from the notoriety of Complainant’s JJ’S HOUSE mark and from the fact that the <jjshousegown.com> domain name includes Complainant’s entire trademark and the term “gown,” which suggests Complainant’s business. Registering and using a confusingly similar domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use under 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 had "actual knowledge of Complainant's mark when registering the disputed domain name.”).

 

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

 

 

Paul M. DeCicco, Panelist

Dated:  September 12, 2013

 

 

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