J. C. Penney Corporation, Inc. and Its Wholly Owned Affiliates v. Kathaleen Hosle
Claim Number: FA1312001535742
Complainant is J. C. Penney Corporation, Inc. and Its Wholly Owned Affiliates (“Complainant”), Texas, USA. Respondent is Kathaleen Hosle (“Respondent”), Cyprus.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jcpenney.cc>, registered with GoDaddy.
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.
Jonathan Agmon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 20, 2013; the National Arbitration Forum received payment on December 20, 2013.
On December 20, 2013, GoDaddy confirmed by e-mail to the National Arbitration Forum that the <jcpenney.cc> domain name is registered with GoDaddy and that Respondent is the current registrant of the name. GoDaddy has verified that Respondent is bound by the GoDaddy 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 December 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 16, 2014 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@jcpenney.cc. Also on December 27, 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.
A timely Response was received and determined to be complete on January 15, 2014.
On January 20, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jonathan Agmon as Panelist.
On January 27, 2014 the Administrative Panel issued an Order for Additional Submissions and Extending Time for Rendering a Decision.
On January 31, 2014 Complainant submitted a Reply to the Administrative Panel Order for Additional Submissions and Extending Time for Rendering a Decision.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant contends as follows:
Complainant is the owner of the JCPENNEY mark, used in connection with retail department store services of clothing, house wares, electronics, and more. Complainant registered the JCPENNEY mark (e.g., Reg. No. 949,595 registered January 2, 1973) with the United States Patent and Trademark Office (“USPTO”). See Complainant’s Exhibit A.
The <jcpenney.cc> domain name is identical to Complainant’s JCPENNEY mark. Respondent merely adds the country-code top-level domain (“ccTLD”) “.cc” for Cocos Islands to the mark, which makes no difference.
Respondent has no rights or legitimate interests in respect of the <jcpenney.cc> domain name.
Respondent is not commonly known by the <jcpenney.cc> domain name. This is clear given the WHOIS information and the fact that Complainant has not authorized Respondent to use the JCPENNEY mark.
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <jcpenney.cc> domain name. Respondent is using the disputed domain name to imitate Complainant by offering the same goods and services that Complainant provides and by using an altered version of Complainant’s former logo, with slightly different font.
Respondent seeks to pass itself off as Complainant in the eyes of the consuming public.
Respondent registered and is using the <jcpenney.cc> domain name in bad faith.
a. Respondent is a serial cybersquatter who has repeatedly registered domain names containing trademarks.
b. Respondent has caused the <jcpenney.cc> domain name to display competing products. Respondent is diverting Complainant’s customers and potential customers away from Complainant’s website and to Respondent’s website.
c. Respondent uses the <jcpenney.cc> domain name to exploit the goodwill associated with Complainant and the JCPENNEY mark. Respondent means to give the impression to Internet users that the <jcpenney.cc> domain name is affiliated with Complainant.
d. Respondent is attempting to pass itself off as being affiliated with Complainant. Respondent uses Complainant’s former logo, with a slightly altered font, and sells competing goods.
e. Complainant’s brand is known internationally. It has been marketed and sold since 1971, the mark has been registered throughout the world, and the mark has no other association besides with Complainant. Respondent ought to have known about Complainant and the JCPENNEY mark.
B. Respondent
The Respondent contends as follows:
Since the registration of the <jcpenney.cc> domain name in May 26, 2011, Respondent never issued any information to any third-party about transferring or selling the domain name for profit.
Respondent’s goal is to improve the quality of the production and customer service. For instance, once an order is received, a confirmation e-mail is sent to the customer before processing to ensure the order is clear and to achieve 100 percent satisfaction.
Respondent has many regular customers and has received good reviews for production and customer service.
Respondent has never misled or deceived consumers about the brand or damaged the reputation of Complainant. All e-mails were signed with the <jcpenney.cc> domain name.
The Panel finds as follows:
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.
Preliminary Issue: Multiple Complainants
There are two or more Complainants in this matter: J. C. Penney Corporation, Inc. and Its Wholly Owned Affiliates. Complainant, J. C. Penney Corporation, Inc. claims to be one of the nation’s largest apparel and home furnishing retailers, and exclusively owns the right to use the JCPENNEY mark.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
“It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.”
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Servs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. C.f. see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel requested Additional Submissions from the Complainant with respect to the relationship between the Complainants. In reply the Complainant, J.C. Penny Corporation, Inc. provided that "[t]he wholly owned affiliates of J. C. Penney Corporation, Inc. that pertain to this present matter are J.C. Penney Purchasing Corporation, J. C. Penney Private Brands, Inc. and JCPenney Company, Inc. Together; with J. C. Penney Corporation, Inc. these entities are the owner of the pertinent trademark and domain name registrations which this complaint relies."
In general, the relationship between a corporation and its wholly owned affiliates would not, by itself, suffice for the finding that separate entities be regarded as single entity for the purpose of the Forum’s Supplemental Rule 1(e). In the present case, however, the Panel is satisfied that the evidence in the Complaint and the Reply to Panel Order for Additional Submissions and Extending Time for Rendering a Decision is sufficient to establish a sufficient nexus or link between the Complainants. Although the Complainants are, strictly speaking, different entities, they are part of the same corporate group (J.C. Penny) and would therefore have a similar legal interest. Furthermore, the trademarks ownership within the J.C. Penny group would require the joinder of the Complainants to establish trademark rights relating to the use made by the Respondent of some of the group's registered trademarks. The common goal and legal interest between the Complainants is sufficient nexus and link required to conclude that the Complainants would be regarded, in this case, as a single entity. The Panel also notes that the Respondent did not raise any objection as to the joinder of the Complainants.
The Panel finds that for the purpose of these proceedings the Complainants are a single entity. The Complainants will be collectively referred to as “Complainant.”
Complainant states that it is the owner of the JCPENNEY mark, used in connection with retail department store services of clothing, house wares, electronics, and more. A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. Complainant demonstrates that it registered the JCPENNEY mark (e.g., Reg. No. 949,595 registered Jan. 2, 1973) with the USPTO. See Complainant’s Exhibit A. In Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), the panel found that the complainant had established rights to the JCPENNEY mark through its federal and other trademark registrations. In Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), the panel found that the Policy does not require that the mark be registered in the country in which the respondent operates, therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction. As such, the Panel finds that Complainant has rights in the JCPENNEY mark under Policy ¶ 4(a)(i).
Complainant next asserts that the <jcpenney.cc> domain name is identical to Complainant’s JCPENNEY mark. Complainant points out that Respondent merely adds the ccTLD “.cc” to the mark, and Complainant argues that such a change makes no difference. Panels have found similarly that the addition of the ccTLD to the disputed domain name does not avoid confusing similarity . See Europcar Int’l SA v. New Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002) (“Respondent’s <europcar.ro> domain name is identical to Complainant’s EUROPCAR mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and only deviates with the addition of the Romanian country-code of “.ro.” Because top-level domains are required of domain name registrants, their addition has been determined to be inconsequential when conducting an identical analysis under Policy ¶ 4(a)(i).”).
Therefore, the Panel finds that the <jcpenney.cc> domain name is identical to the JCPENNEY mark pursuant to Policy ¶ 4(a)(i).
Under the Policy ¶ 4(a)(ii) it is up to the Complainant to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and only 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.”).
Complainant argues that Respondent has no rights or legitimate interests in respect of the <jcpenney.cc> domain name. Complainant asserts that Respondent is not commonly known by the <jcpenney.cc> domain name, and Complainant claims that this is clear given the WHOIS information and the fact that Complainant has not authorized Respondent to use the JCPENNEY mark. The Panel notes that the WHOIS record for the <jcpenney.cc> domain name lists “Kathaleen Hosle” as the domain name registrant. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded 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 Panel also notes that the Respondent did not assert that it is known as JCPenny. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <jcpenney.cc> domain name. Complainant notes that Respondent is using the disputed domain name to offer competing goods to consumers. The Panel notes that the disputed domain name resolves to a website wherein competing goods are promoted to the general consuming Internet user. See Complainant Ex. C. The panel in Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), held that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name. This Panel, however, finds that the use of <jcpenney.cc> domain name to market competing goods is a use which is granted protection under Policy ¶¶ 4(c)(i) and 4(c)(iii). The Panel finds that, in this case, Internet users are likely to be deceived by the use of a disputed domain name which is identical to the trademark owned by the Complainant. Such use will lead Internet consumers to be deceived to seek goods from the Respondent. Therefore, the Panel finds that Respondent’s use of the <jcpenney.cc> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant contends that Respondent is using the disputed domain name to imitate Complainant by offering the same goods and services that Complainant provides and by using an altered version of Complainant’s former logo, with slightly different font. The panel in Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), found that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name. The Panel concurs and finds that the Respondent’s attempts to pass off as Complainant to be a demonstration of Respondent’s lack of rights and legitimate interests in the <jcpenney.cc> domain name pursuant to Policy ¶ 4(a)(ii).
The Panel was not persuaded by the arguments made by the Respondent and finds that the Respondent failed to show that it has rights or legitimate interest in the disputed domain name.
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii) of the Policy.
Complainant argues that Respondent registered and is using the <jcpenney.cc> domain name in bad faith. Complainant asserts that Respondent has caused the <jcpenney.cc> domain name to display competing products, and Respondent is diverting Complainant’s customers and potential customers away from Complainant’s website and to Respondent’s website. See Complainant’s Ex. C. In DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), the panel stated, “[r]espondent 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).” The Panel finds that Respondent’s registration and use of the <jcpenney.cc> domain name to disrupt Complainant’s business is evidence of bad faith under Policy ¶ 4(b)(iii).
Complainant next alleges that Respondent uses the <jcpenney.cc> domain name to exploit the goodwill associated with Complainant and the JCPENNEY mark. Complainant argues that Respondent means to give the impression to Internet users that the <jcpenney.cc> domain name is affiliated with Complainant. See Complainant’s Ex. C. In MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000), the panel found bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark. Indeed, “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith’” (Tata Sons Limited v. TATA Telecom Inc./Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671). Accordingly, the Panel finds that Respondent’s registration and use of the <jcpenney.cc> domain name were meant to attract Internet users to the disputed domain name so that Respondent could profit from their mistakes pursuant to Policy ¶ 4(b)(iv).
Complainant contends that Respondent is attempting to pass off as being affiliated with Complainant. Complainant notes that Respondent uses Complainant’s former logo, with a slightly altered font, and sells competing goods. See Complainant’s Ex. C. The panel in DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000), found that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website. Thus, the Panel finds that Respondent’s use of Complainant’s old logo is a further indication of the Respondent’s bad faith registration and use of the <jcpenney.cc> domain name are a result of bad faith under Policy ¶ 4(a)(iii).
Complainant asserts that its brand is known internationally. Complainant notes that the brand has been marketed and sold since 1971, the mark has been registered throughout the world, and the mark has no other association besides with Complainant. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed 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").
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jcpenney.cc> domain name be TRANSFERRED from Respondent to Complainant.
Jonathan Agmon, Panelist
Dated: February 3, 2014
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