NATIONAL ARBITRATION FORUM

DECISION

ABG-Juicy Couture LLC v. Tim Gottschalk

Claim Number: FA2501002136841

PARTIES

Complainant is ABG-Juicy Couture LLC ("Complainant"), represented by Bridgette Fitzpatrick of Authentic Brands Group LLC, New York, USA. Respondent is Tim Gottschalk ("Respondent"), Germany.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <juicy-coutureitalia.com>, registered with MAT BAO CORPORATION.

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.

The Honorable Neil Anthony Brown KC as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 24, 2025; Forum received payment on January 24, 2025.

On January 30, 2025, MAT BAO CORPORATION confirmed by e-mail to Forum that the <juicy-coutureitalia.com> domain name is registered with MAT BAO CORPORATION and that Respondent is the current registrant of the name. MAT BAO CORPORATION has verified that Respondent is bound by the MAT BAO CORPORATION 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 31, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2025 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@juicy-coutureitalia.com. Also on January 31, 2025, 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 February 21, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 made the following contentions.

1. The Complainant is a United States company engaged in the provision of women's clothing, branded lifestyle goods and related goods and services and has been so engaged since 1996.

2. The Complainant provides its goods and services under the trademarks for JUICY COUTURE and JUICY and others. In particular, the evidence will establish that the Complainant has acquired registered trademark rights in the JUICY COUTURE trademark by virtue of its registration of that mark with the European Union Intellectual Property Office ("EUIPO") registration number 002759943, registered on July 3, 2002 and some 800 other trademark registrations for JUICY COUTURE, JUICY and derivatives (collectively "the JUICY COUTURE trademark"). The Complainant has used the JUICY COUTURE trademark since its registration to offer its goods and services.

3. The JUICY COUTURE trademark has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.

4. As well as its trademark, Complainant has registered the domain name <juicycouture.com> that it uses in its business and in particular for its website at www. juicycouture.com where it markets its products under the JUICY COUTURE trademark and brand.

5. The Respondent registered the <juicy-coutureitalia.com>, domain name on May 22, 2024 ("the disputed domain name").

6. The disputed domain name embodies, without the consent of the Complainant, the JUICY COUTURE trademark and the Respondent has replaced the gap between the words with a hyphen and made the addition of the word "italia" signifying Italy and the generic Top Level Domain ".com".

7. The disputed domain name is confusingly similar to the JUICY COUTURE trademark.

8. The Respondent has no rights or legitimate interests in the disputed domain name. That is so because:

(a) the Complainant has never given any licence, permission or authority to the Respondent to use the JUICY COUTURE trademark and there has never been any affiliation or relationship between the Complainant and the Respondent;

(d) the Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii);

(f) there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain name.

9. The Respondent has registered and used the disputed domain name in bad faith. That is so because:

(a) the Respondent had actual knowledge of the Complainant and its JUICY COUTURE trademark when it registered the disputed domain name;

(b) the Respondent registered the disputed domain name more than 20 years after the Complainant registered and started to use the JUICY COUTURE trademark;

(d) the Respondent's aforesaid conduct has generated confusion between the Complainant's and the Respondent's websites within the meaning of Policy ¶ 4(b)(iv);

(e) in registering the domain name, the Respondent used a privacy service that indicates secrecy and bad faith; and

(f) all of the acts, facts, matters and circumstances to be revealed by the evidence will show that the Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent failed to submit a formal Response in this proceeding.

FINDINGS

1. The Complainant is a United States company engaged in the provision of women's clothing, branded lifestyle goods and related goods and services and has been so engaged since 1996.

2. The Complainant provides its goods and services under the trademarks for JUICY COUTURE, JUICY and others. In particular, the evidence has established that the Complainant has acquired registered trademark rights in the JUICY COUTURE trademark by virtue of its registration of that mark with the European Union Intellectual Property Office ("EUIPO") registration number 002759943, registered on July 3, 2002 and some 800 other trademark registrations for JUICY COUTURE, JUICY and derivatives (collectively "the JUICY COUTURE trademark"). The Complainant has used the JUICY COUTURE trademark since its registration to offer its goods and services.

3. The Respondent registered the <juicy-coutureitalia.com>, domain name on May 22, 2024 ("the disputed domain name").

4. The disputed domain name embodies, without the consent of the Complainant, the JUICY COUTURE trademark and the Respondent has replaced the gap between the words with a hyphen and made the addition of the word "italia" signifying Italy and the generic Top Level Domain ".com".

5. The Respondent has used the domain name to pass itself off as the Complainant and has caused it to resolve to an illegitimate website purporting to offer genuine goods for sale under the JUICY COUTURE trademark, which they are not and has by that means infringed the Complainant's trademark and misled internet users.

6. By reason of the matters aforesaid, and as established by the evidence, the disputed domain name is confusingly similar to the JUICY COUTURE trademark, the Respondent has no rights or legitimate interests in the disputed domain name and the disputed domain name has been registered and used in bad faith.

7. Accordingly, the disputed domain name should be transferred from the Respondent to the Complainant.

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 first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. The evidence has shown that the Complainant provides its goods and services under the trademark for JUICY COUTURE and that it has done so for many years. In particular, the evidence has established that the Complainant has acquired registered trademark rights in the JUICY COUTURE trademark by virtue of its registration of that mark with the European Union Intellectual Property Office ("EUIPO") registration number 002759943, registered on July 3, 2002 and some 800 other trademark registrations for JUICY COUTURE, JUICY and derivatives (collectively "the JUICY COUTURE trademark"). The Complainant has used the JUICY COUTURE trademark since its registration to offer its goods and services.

The aforesaid facts have been established by documentary evidence that the Panel has examined and finds to be in order.

The Complainant has thus established its trademark rights and hence its standing to bring this proceeding.

The next question that arises is whether the disputed domain name is identical or confusingly similar to the Complainant's JUICY COUTURE trademark. The Panel finds that the disputed domain name is confusingly similar to the JUICY COUTURE trademark for the following reasons. The disputed domain name embodies, without the consent of the Complainant, the JUICY COUTURE trademark and the Respondent has removed the gap between the words and replaced it with a hyphen, the addition of the word "italia" which signifies Italy and the generic Top Level Domain ".com". When a domain name includes a trademark, as in the present case, it is more likely than not that the domain name is confusingly similar to the trademark. In the present case it is obviously so. Thus, internet users would read the domain name as invoking the trademark and as dealing with the Complainant's goods and services offered under the JUICY COUTURE trademark and as being either a domain name of the Complainant itself or one that has been registered with its consent. The removal and addition of features such as gaps and hyphens are too insignificant to have any effect on the overall meaning to be given to a domain name. The addition of the word "italia" has the effect that the domain name would be interpreted by internet users as signifying the goods and services of the Complainant offered under the JUICY COUTURE trademark in Italy.

The addition of the generic Top Level Domain ".com" is ignored in making the comparison, because all domain names must have such an extension.

Thus, internet users would read the domain name as invoking the JUICY COUTURE trademark, as dealing with the Complainant's well-known goods and services offered under the trademark in Italy and as being a domain name of the Complainant itself or a domain name that has been registered with its consent.

The Panel therefore finds that the disputed domain name is confusingly similar to the JUICY COUTURE trademark under Policy ¶ 4(a)(i).

The Complainant has thus made out the first of the three elements that it must establish under the Policy.

Rights or Legitimate Interests

It is now well established that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such 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)).

The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations. Several of these considerations overlap, but the substance of them in combination is as follows. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name on all of the grounds relied on by the Complainant:

(a) the Complainant has never given any licence, permission or authority to the Respondent to use the JUICY COUTURE trademark or any similar mark and there has never been any affiliation or relationship between the Complainant and the Respondent; thus, there can be no suggestion that the domain name was registered with any sort of agreement or consent by the Complainant and there obviously was none;

(b) the Respondent has caused the disputed domain name to resolve to a website that uses the JUICY COUTURE trademark and offers for sale illegitimate and counterfeit products under the JUICY COUTURE trademark and brand; this is amply demonstrated by Annex 5 which shows an extract from the website which uses the JUICY COUTURE name and trademark prominently being used to offer for sale a women's garment; the whole picture is an obvious copy of the Complainant's official website; the Panel is able to say this as it has inspected the Complainant's official website at www.juicycouture.com; the Respondent's web site has the same look and feel as the Complainant's official site; moreover, in copying the words "Juicy Couture" it uses the same style of print font and describes the same categories of products as the Complainant's site and it also promotes the "Juicy Lovers Club"; thus, it cannot be that such an obvious abuse and infringement of a trademark can give rise to a right or legitimate interest in the domain name used to perpetrate this subterfuge;

(c) the Respondent has not used the domain name for a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i); rather, the Respondent has used the domain name to pass itself off as the Complainant or as an authorized distributor of the Complainant, neither of which is true, and has caused the domain name to resolve to the aforesaid illegitimate website which misleads internet users; the foregoing shows that this is a classic case of passing off, as the Respondent has contrived to pretend that it is the Complainant or is authorised by it, whereas the evidence shows that it is neither; the result is, as the Complainant contends, that the offending website is intended to mislead internet users, which it has done;

(d) the Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii); there is no evidence that the Respondent was or is known by the domain name, commonly or otherwise and there is no evidence that it was or is known by any name other than its own;

(e) the Respondent has not used the domain name for a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii) but rather has used the domain name for improper commercial gain; there is nothing legitimate about the Respondent's conduct; it was illegitimate, commercial and unfair, both to the Complainant and to internet users in general; and

(f) there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain name.

The Complainant has therefore made out a persuasive case for all of the grounds it relies on to show that the Respondent does not have a right or legitimate interest in the disputed domain name.

All of these matters make out the prima facie case against the Respondent. The Respondent has not filed a Response and is in default and has thus not rebutted the prima facie case against it.

The Complainant has therefore made out the second of the three elements it must establish under the Policy.

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered and used in bad faith. It is also clear that the criteria set out in the Policy ¶ 4(b) are not exclusive but that domain name proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

The Complainant has submitted that the Respondent has registered and used the disputed domain name in bad faith on several grounds. In view of the evidence discussed above, which is equally applicable to bad faith as it is to rights and legitimate interests and which it is not necessary to repeat, it is clear that the Complainant has made out all of the grounds relied on. The Respondent has clearly been motivated by bad faith in the registration and use of the domain name and in particular in the deception of potential buyers and internet users in which the Respondent has engaged, amply demonstrated by Annex 5 and comparing it with the Complainant's official web site, discussed above. In particular, it is clear from the evidence that, as the Complainant has submitted:

(a) the Respondent had actual knowledge of the Complainant and its JUICY COUTURE trademark when it registered the disputed domain name; when the Respondent's website is compared with the Complainant's official web site, when the former makes use of the JUICY COUTURE trademark and in view also of the foregoing facts, it is clear that the Respondent actually knew of the Complainant and was intending to copy it and to pretend that its goods on offer are official and genuine JUICY COUTURE goods; thus , the Respondent must have had actual knowledge of the trademark; in any event the Respondent needed to have such actual knowledge to perpetrate its subterfuge;

(b) the Respondent registered the disputed domain name more than 20 years after the Complainant registered and started to use the JUICY COUTURE trademark; this time gap shows the Respondent's bad faith intention to copy the trademark and also that it had actual knowledge of the trademark;

(d) the Respondent's aforesaid conduct has generated confusion between the Complainant's and the Respondent's websites within the meaning of Policy ¶ 4(b)(iv); as noted above, the irresistible conclusion from the Respondent's conduct is that it intended to generate confusion between the two websites, obviously in the hope that internet users would buy the Respondent's garments and accessories which must be counterfeit or illegally obtained;

(e) in registering the domain name, the Respondent used a privacy service that indicates secrecy and bad faith; it is now well established that this is a reasonable conclusion to draw; and

(f) all of the acts, facts, matters and circumstances revealed by the evidence have shown that the Respondent registered and used the disputed domain name in bad faith.

Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the JUICY COUTURE trademark and in view of the conduct of the Respondent, as shown by all of the available evidence, the Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression. It is clear that, from the beginning, the Respondent set about targeting the Complainant, set up an alleged rival source of products in the same field as the Complainant by means of its deceptive website and actively set about misleading potential buyers so as to make money.

The Complainant has thus made out the third of the three elements that it must establish.

The Complainant has also correctly cited numerous prior UDRP decisions that support all of its contentions.

The Complainant has therefore established all of the elements that it must show under the Policy and it is entitled to the relief it seeks.

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 <juicy-coutureitalia.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Neil Anthony Brown KC, Panelist

Dated: February 22, 2025