The Complainant is J. Crew International, Inc. of Wilmington, Delaware, United States of America, represented by Cowan, Liebowitz & Latman, PC, United States of America.
The Respondent is Li of Xiamen, Fujian, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is 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 April 14, 2011. On April 15, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 19, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 21, 2011, the Center transmitted by email to the parties in both Chinese and English regarding the language of the proceeding. On April 21, 2011, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint satisfied 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 proceedings commenced on April 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2011.
The Center appointed Karen Fong as the sole panelist in this matter on May 20, 2011. 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
The Complainant is a company based in the United States. The Complainant is recognised as a leading retailer in the apparel and accessories business under the well-known mark, J. CREW. The Complainant owns trade mark registrations for the J. CREW mark around the world including the United States (“the J. CREW Trade Mark”). A copy of the trade mark certificate for United States trade mark registration number 1,308,888 in classes 14, 18, 25 and 42 registered on December 11, 1984 was submitted with the Complaint. The Complainant also owns the domain names and which were registered since 1994 and 2001 respectively. The domain name resolves to the active website “www.” and resolves to “www./factory.jsp”.
The Domain Name was registered on February 22, 2011. The Domain Name resolves to an active website “www.” (“the Website”). The Website appears to be selling the Complainant’s J. Crew products, bears the J. CREW Trade Mark, uses images belonging to the Complainant’s website and makes references to the Complainant’s business. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the J. CREW Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith. B. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement is Chinese.
The Complainant submits in paragraph 10 of the Complaint as well as in a letter from its representatives to the Center dated April 21, 2011 (in response to the Center’s email of April 21, 2011) that the language of the proceeding should be English. The reasons put forward may be summarized a follows: the Complainant is a United States corporation and conducts its business in the English language; the Domain Name is in the English language and is being used in relation to an English language website and the Complainant and Respondent have corresponded in English. The Respondent did not comment on the language of the proceeding by the specified due date.
The Panel accepts the Complainant’s submissions in paragraph 10 of the Complaint as well as the letter of April 21, 2011 regarding the language of the proceeding and is satisfied that the Respondent appears to be familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. C. Identical or Confusingly Similar
The Panel accepts that the J. CREW Trade Mark is a well-known trade mark in the area of fashion apparel and accessories.
The Complainant’s registered trade mark, J. CREW, is the dominant portion of the Domain Name. The addition of the geographical term “Canada” does nothing to minimise the risk of confusion. Moreover, for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.com”. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. D. Rights or Legitimate Interests
The Complainant contends that it has not licensed or otherwise authorised the Respondent to use its J. CREW Trade Mark in the Domain Name or any other manner. Further, the Respondent is not commonly known by the Domain Name. The Website is an imitation of the Complainant’s website – it uses the J. CREW Trade Mark, uses images belonging to the Complainant, appears to be selling the Complainant’s products under the J. CREW Trade Mark and also makes reference to the Complainant on the Website. The Respondent’s activities is likely to lead Internet users to believe that the Domain Name belongs to the Complainant and the Complainant alleges that this shows an intent on the part of the Respondent to pass itself off as the Complainant.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name. E. Registered and Used in Bad Faith
Since the J. CREW Trade Mark has been used and registered prior to the registration of the Domain Name, the Respondent either knew or ought to have known of the Complainant’s use and rights in the J. CREW Trade Mark. The Panel is satisfied that the Respondent must have been aware of the Complainant’s mark when it registered the Domain Name. The fact that the Domain Name incorporates the Complainant’s well-known trade mark in its entirety is in the Panel’s view evidence that the registration of the Domain Name was in bad faith.
The Panel also concludes that the actual use of the Domain Names is in bad faith. The Website is extremely similar to the Complainant’s websites. It not only uses the Complainant’s J. CREW Trade Mark, it also uses images belonging to the Complainant. It purports to sells the Complainant’s J. Crew products. The Website also makes references to the Complainant. There is a clear intention to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s Website is and the products sold on them are authorised or endorsed by the Complainant. This is clearly bad faith under paragraph 4(b)(iv) of the Policy.
Further, the Panel notes that the Respondent has also registered other well-known trade marks as domain names including ASICS and JIMMY CHOO. This is bad faith under paragraph 4(b)(ii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Karen Fong
Sole Panelist
Dated: June 5, 2011
Full & Egal Universal Law Academy