DECISION

 

Gorjana & Griffin, Inc. v. zheng jing

Claim Number: FA2404002091179

 

PARTIES

Complainant is Gorjana & Griffin, Inc. ("Complainant"), represented by Charles K. Crane of Knobbe Martens Olson & Bear LLP, California, USA. Respondent is zheng jing ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <gorjana-jewelry.com>, registered with Name.com, Inc.

 

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 Forum electronically on April 1, 2024; Forum received payment on April 1, 2024.

 

On April 1, 2024, Name.com, Inc. confirmed by e-mail to Forum that the <gorjana-jewelry.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 2, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2024 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@gorjana-jewelry.com. Also on April 2, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On April 23, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 is a jewelry company specializing in necklaces, bracelets, rings, earrings, charms, and accessories. Complainant was incorporated on February 16, 2006, and currently has over 50 retail store locations spread across 16 U.S. states and the District of Columbia.

 

Complainant owns numerous trademark registrations for the GORJANA mark around the world, and Complainant has used the GORJANA mark in connection with its jewelry since as early as 2003.

 

The at-issue domain name addresses an active website displaying content copied from Complainant's genuine website and purporting to offer Complainant's products for sale.

 

Respondent's <gorjana-jewelry.com> domain name is confusingly similar to Complainant's GORJANA trademark as the domain name incorporates Complainant's distinctive mark in its entirety.

 

Respondent has no rights and legitimate interests in the at-issue domain name. Respondent is not authorized to use Complainant's trademark for any purpose and was aware of Complainant's GORJANA mark when it registered <gorjana-jewelry.com> as a domain name. The use of a domain name to benefit from the goodwill associated with Complainant's GORJANA mark does not constitute a bona fide offering of goods or services.

 

Respondent registered and is using the at-issue domain name in bad faith. Respondent's use of the confusingly similar domain name to attract internet users and capitalize on their confusion by offering products for sale demonstrates Respondent's bad faith registration and use of the Disputed Domain Name under Policy ¶ 4(b)(iv). Respondent also is engaging in phishing tactics as the website deceptively solicits personal information from visitors and is now using the domain name to address an inactive website. Respondent creates a false impression that Respondent is associated with Complainant.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has trademark rights in GORJANA.

 

Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired rights in GORJANA.

 

Respondent's at-issue domain name addresses a website mimicking Complainant's genuine website and purportedly offers Complainant's products for-sale.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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(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").

 

Identical and/or Confusingly Similar

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

 

Complainant demonstrates rights in the GORJANA mark per Policy ¶ 4(a)(i) through its registration of such mark with the USPTO and/or through any other of its national registrations worldwide. Any relevant national trademark registration is sufficient to demonstrate Complainant's rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office ("USPTO").").

 

Respondent's <gorjana-jewelry.com> domain name consists of Complainant's GORJANA trademark followed by a hyphen and the suggestive term "jewelry" with followed by the ".com" top-level domain name. The differences between Respondent's domain name and Complainant's trademark do nothing to distinguish the domain name from Complainant's mark under the Policy. Therefore, the Panel concludes that Respondent's <gorjana-jewelry.com> domain name is confusingly similar to Complainant's GORJANA trademark per 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.").

 

Rights or Legitimate Interests

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 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant's prima facie showing acts conclusively.

 

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademarks 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 legitimate interests in respect of the at-issue 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 WHOIS information for the at-issue domain name reveals the domain name's registrant as "zheng jing" and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by <gorjana-jewelry.com>. The Panel therefore concludes that Respondent is not commonly known by the <gorjana-jewelry.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Respondent uses the confusingly similar <gorjana-jewelry.com> domain name to address a website that copies material from Complainant's genuine website and purports to offer Complainant's products for sale. Respondent's use of <gorjana-jewelry.com> to attempt to pass itself off as Complainant in this manner is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Mulberry Co. (Design) Ltd. v. Chen, D2010-1718 (WIPO Nov. 26, 2010)("[The] disputed domain names are being used by the Respondent for websites which falsely appear to be affiliated, connected or associated with the Complainant. In this Panel's view, such use and purpose of the disputed domain names without the authorization of the trade mark owner shows that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names or a bona fide offering of goods and services").

 

Given the forgoing, Complainant demonstrates Respondent's lack of rights and lack of legitimate interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, bad faith circumstances are present which lead the Panel to conclude that Respondent acted in bad faith pursuant to the Policy regarding the at-issue domain name.

 

Respondent uses its confusingly similar domain name and referenced website so that Respondent might pass itself off as Complainant and deceive internet users into falsely believing that the domain name and its related webpages are sponsored by Complainant. There, Respondent purportedly offers products to website visitors who believed they are dealing with Complainant. Using <gorjana-jewelry.com> in conjunction with a commercial website posing as Complainant and purportedly offering Complainant's products for sale shows Respondent's bad faith under the Policy.  See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv)."); see also, ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) ("Respondent's use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant's mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).").

 

Moreover, Respondent had actual knowledge of Complainant's rights in the GORJANA mark when it registered <gorjana-jewelry.com> as a domain name. Respondent's prior knowledge of Complainant's GORJANA trademark is evident from the notoriety of Complainant's mark; from Respondent's use of the at-issue domain name to mimic Complainant's genuine website; and from Respondent inclusion of the suggestive term "jewelry" in the at-issue domain name. Respondent's registration and use of <gorjana-jewelry.com> with knowledge of Complainant's rights in GORJANA further shows Respondent's bad faith registration and use of <gorjana-jewelry.com> pursuant to the Policy. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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); see also, Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) ("Complainant contends Respondent's appropriation of Complainant's trademark was a clear intent to trade upon Complainant's reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant's mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii)."); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION 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 <gorjana-jewelry.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: April 23, 2024