CWC Direct LLC v. Ju Yu
Claim Number: FA1501001599464
Complainant is CWC Direct LLC (“Complainant”), represented by Laura M. Franco of Winston & Strawn LLP, California, USA. Respondent is Ju Yu (“Respondent”), Idaho, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coldwatercreekoutletsale.com>, registered with GODADDY.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 12, 2015; the National Arbitration Forum received payment on January 13, 2015.
On January 13, 2015, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <coldwatercreekoutletsale.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 January 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2015 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@coldwatercreekoutletsale.com. Also on January 15, 2015, 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 February 10, 2015, 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
1. Complainant has registered COLDWATER CREEK with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,531,418, registered Mar. 21, 1989; Reg. No. 2,769,235, registered Sep. 30, 2003). Complainant uses the COLDWATER CREEK service mark for mail order catalogue and retail store services relating to women’s apparel and accessories.
2. The <coldwatercreekoutletsale.com> domain name is confusingly similar to the COLDWATER CREEK mark because the domain name contains the mark in full and adds generic terms, namely “outlet” and “sale,” closely associated with Complainant and its goods, services, and channels of trade. The presence of the generic top-level domain (“gTLD”) is irrelevant to the confusing similarity analysis.
3. Respondent has no rights or legitimate interests in the disputed domain name. Respondent has never been known by the <coldwatercreekoutletsale.com> identity. The WHOIS information for the disputed domain name lists “Ju Yu” as registrant.
4. Further, Respondent has not used the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. The disputed domain name resolves to a website offering clothing purporting to be Complainant’s clothing at prices that are much cheaper than Complainant’s recommended retail price.
5. Respondent has no authorization to sell goods bearing the COLD WATERCREEK brand. In furtherance of this misrepresentation, Respondent has also lifted substantial portions of content directly from Complainant’s own website, including the “About Us” section, which reads as though Respondent is holding itself out as Complainant.
6. Respondent registered and is using the disputed domain name in bad faith. Respondent has a history of bad faith, which permeates the present matter. Next, Respondent’s conduct disrupts Complainant’s business. Further, Respondent chose the domain name with the intent to attract users by creating a likelihood of confusion so as to commercially gain through the sale of counterfeit goods. Finally, Respondent’s bad faith is demonstrated by its registration of the disputed domain name with knowledge of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the COLDWATER CREEK mark. Respondent’s domain name is confusingly similar to Complainant’s COLDWATER CREEK mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <coldwatercreekoutletsale.com 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 registered COLDWATER CREEK with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,531,418, registered Mar. 21, 1989; Reg. No. 2,769,235, registered Sep. 30, 2003). Complainant uses the COLDWATER CREEK mark for mail order catalogue and retail store services relating to women’s apparel and accessories. Complainant’s valid USPTO registration serves to demonstrate its rights in the COLDWATER CREEK mark for purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that the <coldwatercreekoutletsale.com> domain name, registered on February 7, 2014, is confusingly similar to the COLDWATER CREEK mark because the domain name contains the mark in full and adds generic terms, namely “outlet” and “sale,” that are closely associated with Complainant and its goods, services, and channels of trade. Complainant adds that the presence of the generic top-level domain (“gTLD”) is irrelevant to the confusing similarity analysis. The Panel agrees that the addition of a gTLD is irrelevant to Policy ¶ 4(a)(i), and the removal of the space between the two-word mark is similarly inconsequential as spacing is not replicable in domain names. 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)).
Next, the Panel determines that the inclusion of the generic terms “outlet” and “sale,” are insufficient to distinguish the domain name from the wholly incorporated COLDWATER CREEK mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). Accordingly, the Panel finds the <coldwatercreekoutletsale.com> domain name is confusingly similar to the COLDWATER CREEK 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 name. 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 claims that Respondent has no rights or legitimate interests in the disputed domain name. Complainant urges that it has never authorized Respondent’s use of the mark, and that Respondent has never been known by the <coldwatercreekoutletsale.com> identity. Complainant adds that the WHOIS information for the disputed domain name lists “Ju Yu” as registrant. Based on this uncontradicted record, the Panel concludes Respondent is not “commonly known” by the disputed domain name as described in Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant further argues Respondent has not used the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant alleges that the disputed domain name resolves to a website offering clothes purporting to be Complainant’s clothing at prices that are much cheaper than Complainant’s recommended retail price. Complainant adds that Respondent has no authorization to sell goods bearing the COLD WATERCREEK brand. In furtherance of this misrepresentation, Complainant adds that Respondent has also lifted substantial portions of content directly from Complainant’s own website, including the “About Us” section, which reads as though Respondent is holding itself out as Complainant. Because Respondent is attempting to pass itself off in order to sell counterfeit or unauthorized goods bearing the Complainant’s images, Respondent is not providing a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name. See Paul Frank Indus. LLC v. Yiyang Chen, FA 1538885 (Nat. Arb. Forum Feb. 18, 2014) (“The Panel determines that Respondent’s use of the ‘Julius the Monkey’ logo, particularly when coupled with Respondent’s offering of allegedly counterfeit versions of Complainant’s PAUL FRANK products, constitutes passing off behavior, and that this behavior is further evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant cites to three previous UDRP cases where Respondent was found to have engaged in bad faith registration and use under comparable circumstances. See Urban Outfitters, Inc. v. Ju Yu, D2014-0029 (WIPO Mar. 14, 2014); Urban Outfitters, Inc. v. Ju Yu, D2014-1321 (WIPO Sep. 22, 2014); Juicy Couture, Inc. v. Ju Yu and Lei Chen, FA 1347631 (Nat. Arb. Forum Nov. 10, 2010). These prior UDRP decisions, adverse to Respondent, constitute a pattern as envisioned by Policy ¶ 4(b)(ii), and therefore establish evidence of Respondent’s bad faith in the instant case.
Next, Complainant argues that Respondent’s efforts to sell goods bearing Complainant’s mark and under Complainant’s apparent authority serves to disrupt Complainant’s business in violation of Policy ¶ 4(b)(iii). As Respondent is using the disputed domain name to sell counterfeit or unauthorized goods bearing the COLD WATERCREEK mark, the Panel finds evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use).
Further, Complainant argues that Respondent chose the domain name with the intent to attract users by creating a likelihood of confusion so as to commercially gain through the sale of counterfeit goods. Evidence of bad faith under Policy ¶ 4(b)(iv) exists where a respondent has attempted to sell counterfeit or unauthorized goods under the guise of a complainant or a complainant’s authority. See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Finally, Complainant claims Respondent’s bad faith is demonstrated by its registration of the <coldwatercreekoutletsale.com> domain name with knowledge of Complainant’s mark. The use of a domain name to sell counterfeit goods bearing the infringed mark has been found to provide sufficient basis to establish a respondent’s actual knowledge. See Mycoskie, LLC v. William Kelly, FA 1488105 (Nat. Arb. Forum Apr. 23, 2013) (“While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, 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.”). Because Respondent makes explicit reference to Complainant and its COLD WATERCREEK clothing in the domain name and in the resolving content, the Panel infers that Respondent had actual knowledge of Complainant at the time of the domain name registration, and therefore finds evidence of Respondent’s bad faith registration pursuant to Policy ¶ 4(a)(iii).
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 <coldwatercreekoutletsale.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 16, 2015
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