Lucky Brand Dungarees Inc. v.
Wizinternational co. ltd
Claim
Number: FA0506000497507
Complainant is Lucky Brand Dungarees Inc. (“Complainant”),
represented by Gene Bolmarcich of Liz Claiborne, Inc., Legal Department, One Claiborne Ave., N. Bergen, NJ 07047. Respondent is Wizinternational co. ltd (“Respondent”), Samseong-dong, Gangnam-gu,
162-1 #3fi.Seaheon building, Seoul, 135090, KR.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <luckybrandjeans.net>, registered with Inames
Co., Ltd.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
16, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 21, 2005. The Complaint was
submitted in both Korean and English.
On
July 20, 2005, Inames Co., Ltd. confirmed by e-mail to the National Arbitration
Forum that the <luckybrandjeans.net> domain name is registered
with Inames Co., Ltd. and that Respondent is the current registrant of the
name. Inames Co., Ltd. has verified
that Respondent is bound by the Inames Co., Ltd. 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
July 28, 2005, a Korean language Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of August 17, 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@luckybrandjeans.net by
e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
August 26, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., 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.
Pursuant
to Rule 11(a) the Panel determines that the language requirement has been satisfied
through the Korean language Complaint and Commencement Notification and, absent
a Response, determines that the remainder of the proceedings may be conducted
in English.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <luckybrandjeans.net>
domain name is confusingly similar to Complainant’s LUCKYBRANDJEANS.COM mark.
2. Respondent does not have any rights or
legitimate interests in the <luckybrandjeans.net> domain name.
3. Respondent registered and used the <luckybrandjeans.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Lucky Brand Dungarees Inc., is a famous
deisgner, manufacturer and distributor of high quality denim and cotton
clothing products for men and women.
Complainant has sold and marketed its clothing products under the LUCKY
BRAND mark for fifteen years, and its products can be found at a select group
of high-end department stores, including Nordstrom, Bloomingdale’s, Neiman
Marcus and Dillards.
Complainant holds numerous registrations with the United States Patent
and Trademark Office (“USPTO”) for its LUCKY BRAND family of marks, including
its LUCKYBRANDJEANS.COM mark (Reg. No. 2,857,464 issued June 29, 2004).
Complainant sells its products via its website at the
<luckybrandjeans.com> domain name and through its own retail stores,
which are located in California, Arizona, Illinois, New Jersey, Florida, New
York, Washington, Virginia, Missouri, Massachusetts, Pennsylvania and Colorado.
Respondent registered the <luckybrandjeans.net> domain name on July 4, 2004. Respondent has not made any use of the
disputed domain name.
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
provided evidence of its registration of the LUCKYBRANDJEANS.COM mark with the
USPTO. Complainant’s registration of
its mark with a federal authority is sufficient to establish a prima facie
case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See 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.”); see also 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.”).
The <luckybrandjeans.net>
domain name is confusingly similar to Complainant’s LUCKYBRANDJEANS.COM,
because the domain name includes the dominant portion of Complainant’s mark and
changes only the generic top-level domain (“gTLD”) portion of the mark. Although Complainant’s mark includes the
gTLD, Respondent’s registration of the domain name that uses a different gTLD
is still insufficient to distinguish the disputed domain name from Complainant’s
mark. Thus, the Panel determines that the
disputed domain name is confusingly similar to Complainant’s registered mark
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 Victoria’s Secret v. Zuccarini, FA
95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and
adding letters to words, a the respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to the complainant’s
marks); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June
27, 2000) (finding that the domain names <beanybaby.com>, <beaniesbabies.com>,
<beanybabies.com> are confusingly similar to the complainant’s mark
BEANIE BABIES).
Complainant has
satisfied Policy ¶ 4(a)(i).
It has been
established under the Policy that the complainant has the initial burden of
proving that the respondent lacks rights and legitimate interests in the
disputed domain name. In Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001), the panel held:
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. 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.
Id.; see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the
complainant has asserted that the respondent has no rights or legitimate interests
with respect to the domain name it is incumbent on the respondent to come
forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”). Having found that Complainant has met its
initial burden by establishing a prima facie case, the Panel will now
analyze whether Respondent has met its burden to establish rights or legitimate
interests in the disputed domain name under Policy ¶ 4(c).
Complainant
contends that Respondent is not commonly known by the <luckybrandjeans.net>
domain name and that Complainant has not licensed or otherwise authorized
Respondent to use any version of Complainant’s mark for any purpose. The WHOIS information for the disputed
domain name lists Respondent as “Wizinternational co.ltd” and identifies no
other connection between Respondent and the disputed domain name. Because Respondent has failed to respond to
any of Complainant’s contentions, the Panel is left with no evidence to rebut
Complainant’s assertions that Respondent is not commonly known by the disputed
domain name. Thus, the Panel finds that
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Wells Fargo & Co. v. Onlyne
Corp. Services11, Inc., FA 198969 (Nat.
Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum
May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that
one has been commonly known by the domain name prior to registration of the
domain name to prevail"); see also Vanguard Group, Inc. v.
Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because
Respondent failed to submit a Response, “Complainant’s submission has gone
unopposed and its arguments undisputed.
In the absence of a Response, the Panel accepts as true all reasonable
allegations . . . unless clearly contradicted by the evidence.”).
Additionally,
Complainant asserts that Respondent has never used the <luckybrandjeans.net>
domain name for any purpose. Without a
response from Respondent, the Panel accepts as true Complainant’s assertion
that Respondent is passively holding onto the disputed domain name. See Vanguard Group, Inc. v. Collazo,
FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent
failed to submit a Response, “Complainant’s submission has gone unopposed and
its arguments undisputed. In the
absence of a Response, the Panel accepts as true all reasonable allegations . .
. unless clearly contradicted by the evidence.”). The Panel holds that Respondent’s nonuse of the <luckybrandjeans.net>
domain name constitutes passive holding and is not a bona fide offering
of goods or services or a legitimate noncommercial or fair use under Policy ¶
4(c)(i) or (iii). See Am. Home Prods. Corp. v. Malgioglio,
D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in
the domain name <solgarvitamins.com> where the respondent merely
passively held the domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001)
(finding that no rights or legitimate interests can be found when the
respondent fails to use disputed domain names in any way).
Complainant has
satisfied Policy ¶ 4(a)(ii).
Complainant
alleges that Respondent acted in bad faith in registering the disputed domain
name and holding it. Although Policy ¶
4(b) includes a list of four specific situations that constitute evidence of
bad faith registration and use, the Panel is not limited to this list and may
take into account additional evidence in making a finding under Policy ¶
4(a)(iii). See Twentieth Century Fox
Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that
in determining if a domain name has been registered in bad faith, the Panel
must look at the “totality of circumstances”); see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad
faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive.”).
Respondent has
not provided any evidence that would suggest that Respondent is holding the
disputed domain name for any non-infringing purpose. Without any indication that Respondent registered the domain name
for a legitimate purpose, the Panel finds that Respondent’s passive holding of
the <luckybrandjeans.net> domain name constitutes bad faith
registration and use under Policy ¶ 4(a)(iii).
See DCI S.A. v. Link
Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the
respondent’s passive holding of the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy); see also Alitalia
–Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23,
2000) (finding bad faith where the respondent made no use of the domain name in
question and there are no other indications that the respondent could have
registered and used the domain name in question for any non-infringing
purpose); see also Caravan Club v.
Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the
respondent made no use of the domain name or website that connects with the
domain name, and that passive holding of a domain name permits an inference of
registration and use in bad faith).
Complainant’s
registration of a domain name that is confusingly similar to Complainant’s
LUCKYBRANDJEANS.COM mark is evidence that Respondent knew of Complainant’s
rights in the mark when it registered the disputed domain name. Furthermore, Complainant’s registrations of
its mark and numerous other marks that include Complainant’s LUCKY BRAND mark
with the USPTO are sufficient to bestow upon Respondent constructive notice of
Complainant’s rights in the mark included in the domain name. Respondent’s registration of the <luckybrandjeans.net>
domain name with actual or constructive knowledge of Complainant’s rights in
the mark is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Digi Int’l v.
DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) ( “[T]here is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively.”); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
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 <luckybrandjeans.net> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 7, 2005
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