Liz Claiborne, Inc. v. Unasi Inc.
Claim Number: FA0511000592349
Complainant is Liz Claiborne, Inc. (“Complainant”), represented by Gene Bolmarcich, One Claiborne Ave., North Bergen, NJ 07047. Respondent is Unasi Inc. (“Respondent”), Galerias 3, Zone 5, Panama 5235.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <lizclaiborneclothing.com>, <juicycouturebags.com>, <jucycoture.com>, <luckybrandjans.com> and <lukybrandjeans.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com. The domain name <lucybrandjeans.com> is registered with Capitoldomains, LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 5, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 9, 2005.
On November 9, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the National Arbitration Forum that the <lizclaiborneclothing.com>, <juicycouturebags.com>, <jucycoture.com>, <luckybrandjans.com> and <lukybrandjeans.com> domain names are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the names. On November 21, 2005, Capitoldomains, LLC confirmed by e-mail to the National Arbitration Forum that the <lucybrandjeans.com> domain name is registered with Capitoldomains, LLC and that Respondent is the current registrant of the names. Iholdings.com, Inc. d/b/a Dotregistrar.com, and Capitoldomains, LLC has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com and Capitoldomains, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 29, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 19, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@lizclaiborneclothing.com, postmaster@juicycouturebags.com, postmaster@jucycoture.com, postmaster@luckybrandjans.com, postmaster@lucybrandjeans.com and postmaster@lukybrandjeans.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 27, 2005, 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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lizclaiborneclothing.com>, <juicycouturebags.com>, <jucycoture.com>, <luckybrandjans.com>, <lucybrandjeans.com> and <lukybrandjeans.com> domain names are confusingly similar to Complainant’s LUCKY BRAND, LIZ CLAIBORNE and JUICY COUTURE marks.
2. Respondent does not have any rights or legitimate interests in the <lizclaiborneclothing.com>, <juicycouturebags.com>, <jucycoture.com>, <luckybrandjans.com>, <lucybrandjeans.com> and <lukybrandjeans.com> domain names.
3. Respondent registered and used the <lizclaiborneclothing.com>, <juicycouturebags.com>, <jucycoture.com>, <luckybrandjans.com>, <lucybrandjeans.com> and <lukybrandjeans.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Liz Claiborne, Inc. is a corporation incorporated under the laws of the State of Delaware, with a principal place of business in New Jersey. Complainant has registered the LUCKY BRAND, LIZ CLAIBORNE and JUICY COUTURE marks with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,330,052, issued March 14, 2000; Reg. No. 1,167,434, issued September 1, 1981 and Reg. No. 2,348,674, issued May 9, 2000, respectively). Complainant’s USPTO registrations for the respective marks are for use in connection with women’s clothing, namely jackets, dresses, skirts, shorts, pants, swim wear, shoes, hats, socks and underwear.
Complainant first began using the LIZ CLAIBORNE mark in 1976, the JUICY COUTURE mark in 1997 and the LUCKY BRAND mark in 1990 in connection with its products.
Respondent registered the <lizclaiborneclothing.com>, <juicycouturebags.com>, <jucycoture.com>, <luckybrandjans.com>, <lucybrandjeans.com> and <lukybrandjeans.com> domain names on January 9, 2005, January 17, 2005, October 24, 2004, May 22, 2005, August 9, 2005 and July 2, 2005, respectively.
Respondent is using the disputed domain names to redirect Internet users to Respondent’s website that displays links to various products and services, many of which compete with Complainant.
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."
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.”).
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.
Complainant has established rights in the LUCKY BRAND, LIZ
CLAIBORNE and JUICY COUTURE marks through registration with the USPTO. See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Innomed Techs.,
Inc. v. DRP Servs., FA 221171 (Nat. Arb.
Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”).
Complainant asserts that the domain names are confusingly similar to Complainant’s LUCKY BRAND, LIZ CLAIBORNE and JUICY COUTURE marks pursuant to Policy ¶ 4(a)(i) because the domain names feature misspelled versions of Complainant’s marks and add generic or descriptive terms. The Panel finds that misspelled versions of Complainant’s marks in Respondent’s domain names render the domain names confusingly similar to Complainant’s mark and that the addition of generic or descriptive words to a registered mark does not negate the confusing similarity of Respondent’s domain names pursuant to Policy ¶ 4(a)(i). See Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).
Furthermore, the addition of the generic top-level domain “.com” does not negate the confusing similarity of Respondent’s domain names to Complainant’s LUCKY BRAND, LIZ CLAIBORNE and JUICY COUTURE marks pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent does not have rights or
legitimate interests in the <lizclaiborneclothing.com>,
<juicycouturebags.com>, <jucycoture.com>, <luckybrandjans.com>,
<lucybrandjeans.com> and <lukybrandjeans.com> domain
names When a Complainant establishes a prima
facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the
respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to
the Complaint, the Panel infers that Respondent does not have rights or
legitimate interests in the disputed domain names. See Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a response, the respondent has failed to invoke any circumstance
which could demonstrate any rights or legitimate interests in the domain name);
see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Additionally, Respondent has not offered any evidence and there is no proof in the record suggesting that Respondent is commonly known by the <lizclaiborneclothing.com>, <juicycouturebags.com>, <jucycoture.com>, <luckybrandjans.com>, <lucybrandjeans.com> and <lukybrandjeans.com> domain names. Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent is also using the <lizclaiborneclothing.com>, <juicycouturebags.com>, <jucycoture.com>, <luckybrandjans.com>, <lucybrandjeans.com> and <lukybrandjeans.com> domain names to redirect Internet users to Respondent’s website featuring links to various products and services, many of which compete with Complainant. The Panel presumes that Respondent receives click-through fees for hosting links to competing websites at the disputed domain names and finds that Respondent’s use of domain names that are confusingly similar to Complainant’s marks is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names pursuant to Poilcy ¶ 4(c)(iii). See Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
The Panel finds that Respondent’s practice of using misspelled versions of Complainant’s LUCKY BRAND, LIZ CLAIBORNE and JUICY COUTURE marks to take advantage of errors made by Internet users amounts to typosquatting, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
Furthermore, the Panel finds that Respondent intentionally registered the disputed domain names incorporating Complainant’s marks to divert Internet users to a website featuring links to third party commercial websites. The Panel concludes that such activity is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ (b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lizclaiborneclothing.com>, <juicycouturebags.com>, <jucycoture.com>, <luckybrandjans.com>, <lucybrandjeans.com> and <lukybrandjeans.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 10, 2006
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