Harman International Industries, Inc. v. Jordan Jessica Anne / Collee Jennifer
Claim Number: FA2003001890138
Complainant is Harman International Industries, Inc. (“Complainant”), represented by CitizenHawk, Inc., California. Respondent is Jordan Jessica Anne / Collee Jennifer (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jblshopeu.com>, <jbleuoutlet.com>, and <jblushop.com>, registered with Shinjiru Technology Sdn Bhd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 27, 2020; the Forum received payment on March 27, 2020.
On March 30, 2020, Shinjiru Technology Sdn Bhd confirmed by e-mail to the Forum that the <jblshopeu.com>, <jbleuoutlet.com>, and <jblushop.com> domain names are registered with Shinjiru Technology Sdn Bhd and that Respondent is the current registrant of the names. Shinjiru Technology Sdn Bhd has verified that Respondent is bound by the Shinjiru Technology Sdn Bhd 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 April 7, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 2020 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@jblshopeu.com, postmaster@jbleuoutlet.com, postmaster@jblushop.com. Also on April 7, 2020, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 4, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that all the disputed domain names share key characteristics, such as Registrar, use of a privacy service, shared DNS, email service used, and the identical nature of each disputed domain name to each other.
The Panel has examined this evidence and finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. The proceeding may therefore go forward as presently formulated.
A. Complainant
Complainant made the following contentions.
Complainant manufactures and markets a wide range of high-end, high-fidelity audio and video system components for consumer and professional markets worldwide. Complainant has rights in its the JBL mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 782,327, registered Dec. 29, 1964). See Amend. Compl. Ex. E. Respondent’s <jblshopeu.com>, <jbleuoutlet.com> and <jblushop.com> domain names are confusingly similar to Complainant’s mark as Respondent merely incorporate the mark in its entirety, adding the terms “shop”, “outlet”, the letter “u”, the geographic term “eu”, and the “.com” generic top-level domain (“gTLD”).
Respondents has no rights or legitimate interests in the <jblshopeu.com>, <jbleuoutlet.com> and <jblushop.com> domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is passing off as Complainant to sell counterfeit goods.
Respondent registered and used the <jblshopeu.com>, <jbleuoutlet.com> and <jblushop.com> domain names in bad faith. Specifically, Respondent is disrupting Complainant’s business and profiting by diverting Internet users to a competing website. Additionally, Respondent provided false or incomplete WHOIS information. Finally, Respondent had actual knowledge of Complainant’s rights in the JBL mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant, a United States company that is a subsidiary of Samsung Electronics, a Korean company, manufactures and markets a wide range of high-end, high-fidelity audio and video system components for consumer and professional markets worldwide.
2. Complainant has established its trademark rights in its the JBL mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 782,327, registered Dec. 29, 1964).
3. Respondent registered the <jblshopeu.com>, <jbleuoutlet.com> and <jblushop.com> domain names on January 8, 2020, December 31, 2019, and February 20, 2020, respectively.
4. Respondent is using the disputed domain names to pass itself off as Complainant and to sell counterfeit goods.
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 the domain names 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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in its the JBL mark through its registration of the mark with the USPTO (e.g., Reg. No. 782,327, registered Dec. 29, 1964). See Amend. Compl. Ex. E. Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the Complainant has rights in the JBL mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s JBL mark. Complainant argues Respondent’s <jblshopeu.com>, <jbleuoutlet.com> and <jblushop.com> domain names are confusingly similar to Complainant’s mark as Respondent merely incorporates the mark in its entirety, adding the terms “shop”, “outlet”, the letter “u”, the geographic term “eu”, and the “.com” gTLD. Adding generic, descriptive or geographic terms and a gTLD to an incorporated mark may not sufficiently distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Additionally, the addition of letters to an incorporated mark may not sufficiently distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Klein Tools, Inc. v chenxinqi, FA 1617328 (Forum July 6, 2018) (finding that the <klentools.com> domain name is confusingly similar to the KLEIN TOOLS mark as it contains the entire BANK OF AMERICA mark and merely omits the letter “l” and adds the “.com” generic top-level domain (“gTLD”)). Therefore, the Panel finds Respondent’s <jblshopeu.com>, <jbleuoutlet.com> and <jblushop.com> domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s JBL trademark and to use it in its domain names, adding the terms “shop”, “outlet”, the letter “u” and the geographic term “eu” which do not negate the confusing similarity between the domain names and the trademark;
(b) Respondent registered the <jblshopeu.com>, <jbleuoutlet.com> and <jblushop.com> domain names on January 8, 2020, December 31, 2019, and February 20, 2020, respectively;
(c) Respondent is using the disputed domain names to pass itself off as Complainant and to sell counterfeit goods;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <jblshopeu.com>, <jbleuoutlet.com> and <jblushop.com> domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes the WHOIS of record identifies the Respondent as “Jordan Jessica Anne / Collee Jennifer” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain names. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <jblshopeu.com>, <jbleuoutlet.com> and <jblushop.com> domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is passing itself off as Complainant to sell counterfeit goods. Using a disputed domain name to deceive internet users as to the affiliation of the disputed domain names to sell unauthorized or counterfeit goods may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Here, Complainant provides screenshots of the disputed domain names’ resolving webpages, showing Complainant’s marks and goods that Complainant alleges are counterfeit. See Amend. Compl. Ex. H. Therefore, the Panel finds Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and used the <jblshopeu.com>, <jbleuoutlet.com> and <jblushop.com> domain names in bad faith. Specifically, Respondent is disrupting Complainant’s business and profiting by diverting Internet users to a competing website offering unauthorized products. Registering a disputed domain name to disrupt a complainant’s business and attract Internet users for commercial gain by offering competing or counterfeit goods may be evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See CWC Direct LLC v. Jug Yu, FA1501001599464 (Forum Feb. 16, 2015) (“As Respondent is using the disputed domain name to sell counterfeit or unauthorized goods bearing the COLDWATERCREEK 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 also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv). Here, Complainant provides screenshots of the disputed domain names’ resolving webpages, showing Complainant’s marks and unauthorized or counterfeit goods. See Amend. Conpl. Ex. H. Therefore, the Panel finds Respondent registered and used the <jblshopeu.com>, <jbleuoutlet.com> and <jblushop.com> domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant argues Respondent provided false or incomplete WHOIS information, which is indicative of Respondents bad faith intentions. Registering a disputed domain name with fraudulent registrant information may be evidence of bad faith under Policy ¶ 4(a)(iii). See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”). Here, Complainant alleges that Respondent is using aliases and false information to frustrate the UDRP process and provides copies of WHOIS reports that show the similarities between the disputed domain names as evidence that the disputed domain names were registered by Respondent. Therefore, the Panel finds Respondent registered and used the <jblshopeu.com>, <jbleuoutlet.com> and <jblushop.com> domain names in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent had knowledge of Complainant’s rights in the JBL mark at the time of registering the <jblshopeu.com>, <jbleuoutlet.com> and <jblushop.com> domain names. Arguments of bad faith based on constructive notice are generally unsuccessful as prior UDRP decisions often decline to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). However, the Panel finds Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this submission, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. As such, the Panel determines Respondent had actual knowledge of Complainant’s rights in its mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the JBL mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jblshopeu.com>, <jbleuoutlet.com>, and <jblushop.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 5, 2020
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