The Complainant is Juicy Couture, Inc. of Pacoima, California, United States of America (“US”), represented by Davis Wright Tremaine LLP, US.
The Respondent is Ivan I. Sharovatov of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Regional Network Information Center, JSC dba RU-CENTER, Moscow, Russian Federation (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2013. On October 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2013, 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 October 16, 2013, the Center transmitted the language of the proceedings document to the parties in both English and Russian. On October 17, 2013, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.
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 October 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2013.
The Center appointed Assen Alexiev as the sole panelist in this matter on November 25, 2013. 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 designs, manufactures and distributes clothing and accessories. It is the owner of a series of trademarks registered for the territory of the US, including the following trademarks (the “JUICY COUTURE trademarks”):
- the word trademark JUICY COUTURE with registration No. 2,348,674, registered on May 9, 2000, for goods in International Class 25;
- the word trademark JUICY COUTURE with registration No. 2,882,279, registered on September 7, 2004, for goods in International Class 18;
- the word trademark JUICY COUTURE with registration No. 3,194,741, registered on January 2, 2007, for goods in International Classes 3 and 14;
- the word trademark JUICY COUTURE with registration No. 2,978,046, registered on July 26, 2005, for goods in International Classes 14 and 25;
- the word trademark JUICY COUTURE with registration No. 3,146,100, registered on September 19, 2006, for goods and services in International Classes 9, 16, 18 and 35; and
- the combined trademark JM JUICY COUTURE with registration No. 3,499,543, registered on September 9, 2008, for goods in International Class 25.
The disputed domain name was registered on December 15, 2010. 5. Parties’ Contentions A. Complainant
The Complainant submits that it has continuously and extensively used the JUICY COUTURE trademarks in connection with its products for over 13 years, and has spent millions of US dollars for their advertising and promotion. As a result of their use throughout the world and in the US and the Complainant’s sales and promotional activities, the JUICY COUTURE trademarks have generated valuable goodwill and reputation and have become distinctive of the Complainant’s products.
The Complainant contends that the disputed domain name is identical or confusingly similar to the JUICY COUTURE trademarks, which it incorporates entirely by combining it with the geographic term “Moscow” and the generic Top_Level Domain (“gTLD”) “.com”.
The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has registered the disputed domain name over ten years after the first registration of the JUICY COUTURE trademark, which is entirely incorporated into the disputed domain name. There is no relationship between the Complainant and the Respondent, and the Complainant has not given to the Respondent any license, permission, or authorization to register or use the disputed domain name.
The Complainant submits that the Respondent had knowledge of the JUICY COUTURE trademarks when he registered the disputed domain name. The Respondent operates a website at the disputed domain name that is misleadingly designed to appear as an official website belonging to or authorized by the Complainant. On this website, the Respondent offers counterfeit products that are made to appear as created by the Complainant.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent has registered the disputed domain name with knowledge of the Complainant and of its JUICY COUTURE trademarks, and uses the JUICY COUTURE trademarks in the website at the disputed domain name to sell counterfeit imitations of the Complainant’s products. This shows that the disputed domain name was registered in bad faith and demonstrates that the Respondent has tried to benefit unfairly from the reputation of the Complainant’s trademarks and products.
The Complainant contends that by using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s JUICY COUTURE trademarks. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques,WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani,WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, the Respondent’s default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take its decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. A. Language of the Proceedings
In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative 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 proceeding.
The Complainant has submitted its Complaint in the English language, and has requested the proceeding to be held in English. The disputed domain name contains the elements “juicy” and “moscow”, which are English language words, which is an indication that the Respondent understands and uses the English language. The Center has sent all its messages to the Respondent in both English and Russian, and has invited the Respondent to express his views on the language of the proceedings. The Respondent has refrained from doing so, and has thus not objected the proceedings to be held in English.
In these circumstances, it appears to the Panel that using the English language in this proceeding will be fair and efficient and will not put either of the parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding be English. B. Identical or Confusingly Similar
The Complainant has provided evidence of its registration of the JUICY COUTURE trademarks and has thus established its rights in these trademarks.
It is a common practice under the Policy to disregard in appropriate circumstances the gTLD such as the “.com” for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name here is “juicycouturemoscow”. This appears as a combination of three separate elements - “juicy”, “couture”, and “moscow”. The first two of these elements are identical to the Complainant’s distinctive JUICY COUTURE trademarks, while the third element represents the easily distinguishable name of the capital of the Russian Federation. In the Panel’s view, the addition of this geographical element does not distinguish the disputed domain name from the JUICY COUTURE trademarks. Rather, this combination of elements makes it likely that Internet users would regard the disputed domain name as indicating an online location based in Moscow where the Complainant’s JUICY COUTURE products are offered.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the JUICY COUTURE trademarks in which the Complainant has rights, and that the Complainant has established the first element of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
The Policy requires the Complainant to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the burden of production shifts to the Respondent to provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating certain arguments in support of this contention, as described in section 5 above. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent, although given a fair opportunity to do so, chose not to present to the Panel any response in accordance with the Rules, paragraph 5(b)(i) and 5(b)(ix), despite the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any legitimate reason for the registration and use of the disputed domain name, it could have brought it to the attention of the Panel. In particular, the Respondent has failed to deny the contentions of the Complainant and to contend that any of the circumstances described in Policy, paragraph 4(c), is present in its favor.
Apart from the factual contentions of the Complainant, the only other sources of information about the Respondent is the WhoIs information, provided by the Registrar, and the content of the website at the disputed domain name. The WhoIs information contains no evidence that the Respondent is commonly known by the disputed domain name. The disputed domain name is confusingly similar to the JUICY COUTURE trademarks of the Complainant, which were registered several years before the registration of the disputed domain name. As contended by the Complainant and undisputed by the Respondent, the Respondent’s website at the disputed domain name appears to offer counterfeit goods bearing the JUICY COUTURE trademarks and appears to have been designed to look like an official website belonging to or authorized by the Complainant.
In the Panel’s view, these circumstances show that the Respondent must have been aware of the Complainant and of its JUICY COUTURE trademarks when he registered the disputed domain name, and its registration and use was made in an attempt to benefit unfairly from the reputation of the Complainant’s trademarks and products. The Panel is of the opinion that the Respondent’s conduct cannot give rise to rights and legitimate interests in the disputed domain name, and finds that the Complainant’s prima facie case has not been rebutted. Therefore, the Respondent has no rights or legitimate interests in the disputed domain name. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online 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.”
As discussed above in relation to the issue of rights and legitimate interests, the Respondent is likely to have been aware of the Complainant’s JUICY COUTURE trademarks at the time of the registration of the disputed domain name, which is confusingly similar to the same trademarks. The Respondent has not established that he has any rights or legitimate interests in the disputed domain name, and the commercial website linked to it appears to offer counterfeit imitations of the Complainant’s products, bearing the JUICY COUTURE trademarks. Taken together, and in the absence of any evidence or allegation to the contrary, these circumstances satisfy the Panel that the Respondent, by using the disputed domain name, has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s JUICY COUTURE trademarks as to the source, sponsorship, affiliation, or endorsement of the same website and of the goods offered on it. This supports a finding of bad faith registration and use of the disputed domain name under the Policy, paragraph 4(b)(iv).
Therefore, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith. 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 disputed domain name be transferred to the Complainant.
Assen Alexiev
Sole Panelist
Date: December 11, 2013
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