WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jones Apparel Group, Inc. v.
Case No. D2001-0719
1. The Parties
The Complainant is Jones Apparel Group, Inc., 1411 Broadway, New York, New York 10018, United States of America.
The Respondent is , Prala 8, Bolivia, Ch. 31235, Bolivia.
2. The Domain Name and Registrar
The domain name in issue is (hereafter "the domain name").
The domain name was registered with Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America.
3. Procedural History
(1) The Complaint in Case No. D2001-0719 was filed in hardcopy form on May 31, 2001, and in electronic form on June 6, 2001.
(2) The WIPO Arbitration and Mediation Center has found that:
- The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;
- Payment for filing was properly made;
- The Complaint complies with the formal requirements;
- The Complaint was properly notified in accordance with the Rules, paragraph 2(a);
- A Response to the Complaint was not filed;
- The Respondent was appropriately served with a Notice of Default; and that
- The Administrative Panel was properly constituted.
As Panelist, I accept these findings.
(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(4) There have been neither further submissions nor communications from the Complainant and Respondent, or their representatives, after the appointment of the Panel.
(5) The date scheduled for issuance of a decision is July 25, 2001.
(6) No extensions have been granted or orders issued in advance of this decision.
(7) The language of the proceeding is English.
4. Factual Background
A. The Complainant and its marks
The Complainant, Jones Apparel Group, Inc., was founded in 1970 and engages in the manufacture, production and distribution of a wide variety of high quality women's clothing, including women's career and casual sportswear, suits and dresses. The Complainant has manufactured, promoted and distributed its merchandise under well-known names and marks, including "JONES NEW YORK" label, as well as "EVAN-PICONE", "NINE WEST", "RENA ROWAN", "TODD OLDHAM", "EASY SPIRIT" and "ENZO ANGIOLINI". The Complainant is a publicly listed company on the New York Stock Exchange, having listed in May of 1991. By 1996 the company realized USD$1 billion in worldwide sales on an annual basis. The Complainant employs in excess of 17,000 people worldwide and has achieved sales in excess of $4.1 billion on an annual basis.
The Complainant, through its wholly-owned subsidiary Jones Investment Company, has registrations for JONES NEW YORK, JONES WEAR, JONES JEANS, and other marks referred to in section 6 below.
B. The Respondent
According to the Whois database of the concerned registrar, Network Solutions, is the Respondent in this administrative proceeding. The address information for the Respondent is given above. No Response was filed and so no further information is known about the Respondent.
C. The Domain Name
The domain name does not resolve to any web site.
5. Parties� Contentions
A. The Complainant�s Assertions
The Complainant makes the usual (boilerplate) bare assertions that the Respondent's domain name is identical or confusingly similar to the Complainant�s mark, that the Respondent has no legitimate interest or rights in the domain names, and that the Respondent registered the domain name and is using it in bad faith. However it provides no specific reasons for these bare assertions.
The Complainant�s entire pleading relating to these assertions is set out as follows:
"In April, 2001, Complaint learned that Respondent had registered with Network Solutions, Inc. ("NSI") the name JONESAPPARELGROUP.COM as an Internet Commercial Domain Name. Repeated attempts to contact Respondent at the postal address, e-mail address and telephone numbers it provided as contact information with NSI were all unsuccessful. Two of the three working telephone numbers listed by Respondent were in fact answered by individuals who claimed to be completely unaware that their number was listed as having anything to do with .
Presently Respondent's website for the Domain Name is not available for viewing. However, Respondent's registration and use of the Domain Name deprives Complainant of the opportunity to further exploit its valuable intellectual property rights in and to its JONES APPAREL GROUP name. Respondent's JONESAPPARELGROUP.COM is identical to Complainant's JONES APPAREL GROUP Mark (with the exception of the purely functional ".com"). Respondent's registration of the Domain Name clearly constitutes bad faith and substantially infringes upon and dilutes Complainant's Marks, including its instantly recognized JONES APPAREL GROUP Mark."
On the basis of this, the Complainant requests that the Panel order that the domain name be transferred to the Complainant.
B. The Respondent�s Assertions
The Respondent has not filed a Response.
6. Discussion and Findings
Paragraph 4.a. of the UDRP requires the Complainant to make out three elements:
A. The Complainant has rights in a trade or service mark, with which Respondent�s domain name is identical or confusingly similar (Paragraph 4.a.(i)); and
B. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4.a.(ii)); and
C. The Respondent registered and is using the domain name in bad faith (Paragraph 4.a.(iii)).
The Complainant has rights in a trade or service mark, with which Respondent�s domain name is identical or confusingly similar.
There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the mark.
The Complainant pleads that it "owns all right, title and interest in and to, inter alia, the marks JONES APPAREL GROUP, JONES NEW YORK and JONES WEAR (the "JONES APPAREL MARKS")." However, a careful examination of the trademark registration documents discloses that the Complainant does not have any registrations for "Jones Apparel Group", "Jones Apparel" or other closely cognate mark. Its registrations are for "Jones New York", "Jones Wear Sport", "JNY", "Jones Wear", "Miss Jones", "Jones Jeans", "Jones & Co", "Jones New York Country", and "Jones New York Sport". The marks which the Complainant asserts form the basis for its "right, title, and interest" in "JONES APPAREL GROUP" (that is, Registration Numbers 941013, 1122437, 1362051, 1399556, 1453268, 1651879, 1665702, 1714571, 1744614, 1877680 and 1908984) are US registrations for "JONES NEW YORK" in multiple classes and in respect of multiple types of goods.
The Complainant goes on, in its extremely sparse and poorly-drawn pleading, to assert that the domain name is identical to the "JONES APPAREL MARKS." It is obvious however that the domain name is not identical to the "JONES NEW YORK" marks for which the Complainant has registrations. Therefore, on a simple reading of the pleading, the Complainant has not made out that which it pleads: that the domain name is identical to the marks for which it has registrations, pursuant to Paragraph 4.a(i).
There are two other bases however which the Complainant might have pleaded in this circumstance. First, that it has common law rights in the "JONES APPAREL GROUP" marks which exist independently of its registered marks for, inter alia, "JONES NEW YORK" marks. Common law rights have been the basis now for many UDRP decisions, for example Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235; Frederick M. Nicholas, Administrator, The Sam Francis Estate v. Magidson Fine Art, Inc., WIPO Case No. D2000-0673; Bill Withers v. Robert Dominico et al., WIPO Case No. D2000-1621; Marty Rodriguez Real Estate, Inc. v. Lancaster Industries, WIPO Case No. D2000-1468; etc. This is somewhat controversial since they are, arguably, an extension of the UDRP that was not contemplated in the original WIPO Report. Whatever the status of the applicability of common law rights to the UDRP, they do not help the Complainant in this case. In order to establish some common law interest, the Complainant must establish that it has some kind of reputation that inheres in the common law marks, or that the marks are well-known within a region, or some other indication that the common law would recognise that the Complainant has rights in the marks. And indeed, the Complainant must plead that it has these rights. The Complainant has done neither. In the absence of either pleading or evidence, I decline to find that the Complainant has any common law rights in "JONES APPAREL GROUP".
The second basis that the Complainant might use in this case is to argue that the domain name is confusingly similar to any of its registered marks. This would be a fairly difficult case to make, since "Jones" is a common name, and it is far from obvious that there is a confusing similarity between "Jones Apparel Group" and, say, "Jones New York" or "Jones Jeans". However difficult this might have been, it was for the Complainant to plead this issue and to support it with some argument and evidence. It has chosen not to do this, and it is not this Panel�s role to perfect a poor pleading. Again, in the absence of pleading or evidence, I therefore decline to find that the domain name is confusingly similar to the registered marks.
There is, I think, little question that the Respondent has been an abusive registrant. While many things are possible, it strains credibility to suggest that it has a legitimate interest in such a distinctive and unusual name as . Nonetheless, an instinctive understanding that the Respondent has been an abusive registrant is not sufficient to order the transfer of the domain name to the Complainant. We are bound by the requirements of Paragraph 4.a. of the UDRP, the first of which is that the Complainant must establish that it has rights in a mark and that the domain name is identical or confusingly similar to that mark. The Complainant has failed to make out this requirement. There is no need to discuss any of the other requirements of Paragraph 4.a, since the requirements are conjunctive. The Complainant, having failed to make out the requirements of Paragraph 4.a.(i), fails completely.
I therefore conclude that the Complainant has not satisfied the requirements of paragraph 4.a. of the UDRP. The Complaint therefore is denied.
7. Decision
The Complainant has not made out all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy.
Pursuant to Paragraph 4.i. of the Uniform Domain Name Dispute Resolution Policy and Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is denied.
I hereby order that the domain name remain with the Respondent.
Dan Hunter
Sole Panelist
Dated: July 19, 2001
Full & Egal Universal Law Academy