The Complainant is J. Crew International, Inc. of Wilmington, Delaware, the United States of America, represented by Cowan, Liebowitz & Latman, PC, the United States of America.
The Respondent is Lin Chengying of Putian City, Fujian Province, the People’s Republic of China. 2. The Domain Names and Registrar
The disputed domain names (“domain name 1”) and (“domain name 2) are registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2010. On November 8, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 12, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain names and providing the Respondent’s contact details. On November 17, 2010, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceedings. On November 19, 2010, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of proceeding by the specified due date.
The Center has verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on November 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for the Response was December 12, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on December 14, 2010.
The Center appointed Sebastian Hughes as the sole panelist in this matter on December 20, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background A. Complainant
The Complainant is a company incorporated in the State of Delaware in the United States of America and is the owner of numerous registrations worldwide for the trade mark J. CREW (the “Trade Mark”), the earliest registration dating back to 1984. The Complainant is also the owner of the domain names and comprising the Trade Mark, registered since 1994 and 2001 respectively. B. Respondent
The Respondent is an individual apparently with an address in China.
The disputed domain names were registered on September 3, 2010 and July 15, 2010 respectively. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant is a leading retailer of apparel and accessories with sales in 2009 of over USD 1.5 billion. The Complainant has extensively advertised and promoted its goods and services under the Trade Mark such that it has developed substantial public recognition and goodwill in the Trade Mark.
The disputed domain names are confusingly similar to the Trade Mark. They each comprise the Trade Mark and, respectively, the non-distinctive words “dresses” and “outlet”.
The websites to which the domain name 2 has been resolved (the “Websites”) reproduce the Trade Mark and the Complainant’s copyrighted images of its goods, and offer for sale unauthorised clothing under the Trade Mark. Domain name 1 has not been used by the Respondent.
When approached by the Complainant’s legal representatives, the Respondent offered to sell the disputed domain names to the Complainant for USD 5,000.
The Respondent has no rights or legitimate interests in the disputed domain names and has registered and used the disputed domain names in bad faith to intentionally attract users, for commercial gain, to the Websites, by creating confusion with the Trade Mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the proceeding should be conducted in English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The Complainant is an American corporation whose principal place of business is located in the United States of America;
(2) The disputed domain names are English language domain names;
(3) Domain name 2 has been used in connection with an English language website;
(4) The Complainant has corresponded with the Respondent by sending a cease and desist letter in English to which the Respondent responded in English; and
(5) Neither the Complainant nor its representative firm includes Chinese speaking personnel.
The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
The Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra). In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) that English shall be the language of the proceeding. B. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate by over 25 years the dates of registration of the disputed domain names.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
In the present case, the Panel concludes that the addition of the non-distinctive words “dresses” and “outlet”, words frequently used in retailing and marketing of branded clothing goods, does not serve to distinguish the disputed domain names from the Trade Mark in any way. The Panel further notes that domain name 2 is identical to the Complainant’s domain name registered since 2001, save that domain name 2 comprises the TLD “.net” instead of “.com”.
The Panel finds that the disputed domain names are confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain names:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain names even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain names by over 25 years. The Panel finds on the record that there is a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Complainant has asserted that the Websites have been used by the Respondent to market unauthorised J.CREW goods. There can be no legitimate interest in the sale of such goods (Lilly ICOS LLC v. Dan Eccles,WIPO Case No. D2004-0750).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names are used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
It is clear that the Websites have been used in order to pass off the business of the Respondent (or the business of the operator of the Websites) as a business of or licensed by the Complainant, as evidenced by:
(1) The blatant and prominent use of the Trade Mark on the Websites; and
(2) The flagrant infringement of the Complainant’s copyright by reproducing the Complainant’s product photographs on the Websites.
Furthermore, the Complainant has submitted compelling evidence to suggest that domain name 2 has been used to offer for sale, or facilitate the sale of, unauthorised products under the Trade Mark via the Websites. This is strong evidence of bad faith (Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019).
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
The Panel finds additional grounds of bad faith have been made out by the Complainant under paragraph 4(b)(i) of the Policy, by the Respondent’s conduct in offering to transfer the disputed domain names to the Complainant for valuable consideration far in excess of Respondent’s out-of-pocket costs directly related to the registration of the disputed domain names.
It has been established in many UDRP cases that passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Action S.A. v. Robert Gozdowski,WIPO Case No. D2008-0028). The Panel finds that, in the circumstances of this case, the passive use of domain name 1 by the Respondent amounts to additional grounds for finding bad faith on the part of the Respondent.
Given the circumstances of this case, the Panel also considers the failure of the Respondent to file a Response to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be transferred to the Complainant.
Sebastian Hughes
Sole Panelist
Dated: January 3, 2011
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