The Complainant is J Brand, Inc. of New York, New York, United States of America (“U.S.”), represented by Katten Muchin Rosenman LLP, U.S.
The Respondent is Jack Huang of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with eName Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2014. On June 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 2014, 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 June 16, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant requested 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 in both Chinese and English, and the proceeding commenced on June 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2014.
The Center appointed Jonathan Agmon as the sole panelist in this matter on July 17, 2014. 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 U.S. based company which business consists of design and sale of apparel.
The Complainant’s products bear the Complainant’s mark J BRAND.
The Complainant owns numerous worldwide trademark registrations for the mark J BRAND. For example: U.S. trademark registration No. 3250947 - J BRAND, with the registration date of June 12, 2007; Community trademark registration No. 010860311- J BRAND, with the registration date of December 12, 2012; Chinese trademark registration No. 5377362 - JBRAND, with the registration date of September 7, 2012 and others.
The Complainant promotes and markets its products, among others, by its website under the domain name .
The disputed domain name was created on April 1, 2014.
The disputed domain name resolves to a webpage which offers for sale apparel bearing the Complainant’s trademark.
The Complainant sent the Respondent a cease and desist letter, to which no response was received. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.
The Complainant further argues that the disputed domain name resolves to a website, which offers for sale identical products to the products of the Complainant. The Complainant further contends that the website under the disputed domain name displays the Complainant’s logo, trademarks, and advertising materials.
The Complainant further argues that the Respondent is not known by the disputed domain name and has no rights in the mark J BRAND.
The Complainant further argues that it had never granted, assigned, licensed, sold or transferred the Respondent any rights in the J BRAND trademark in any manner.
The Complainant further argues that the Respondent registered and is using the disputed domain name in bad faith. The Complainant further contends that the Respondent uses the disputed domain name for commercial purposes, by creating a false impression that the disputed domain name is associated with the Complainant.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
“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 language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding should be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
a) The disputed domain name consists of Latin letters, rather than Chinese letters;
b) The disputed domain name consists of English words;
c) The disputed domain name resolves to a website which operates in English and targets English speaking costumers;
d) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.
Upon considering the above, the Panel decides that English be the language of the proceeding. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant owns numerous worldwide trademark registrations for the mark J BRAND. For example: U.S. trademark registration No. 3250947 - J BRAND, with the registration date of June 12, 2007; Community trademark registration No. 010860311- J BRAND, with the registration date of December 12, 2012; Chinese trademark registration No. 5377362 - JBRAND, with the registration date of September 7, 2012 and others.
The disputed domain name integrates the Complainant’s J BRAND trademark in its entirety, as a dominant element.
The disputed domain name differs from the registered J BRAND trademark by the additional word “shop”, the hyphen and the gTLD “.com”.
The additional word “shop” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark, as it is a purely descriptive term. The use of hyphen between the word “jbrand” and the word “shop” does not serve to sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark as it is a mere separator and has no trademark meaning, in this case.
The addition of the hyphen and the gTLD “.com” to the disputed domain name does not avoid confusing similarity (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The gTLD “.com” iswithout legal significance since the use of a TLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its J BRAND trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the J BRAND trademark as early as 2007 and has been using the trademark since the year 2004. It is suggestive of the Respondent’s bad faith in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Furthermore, the disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent has been using the disputed domain name to promote the sale of goods bearing the Complainant’s mark, while using the Complainant’s name and logo mark on the website under the disputed domain name, and without any explanation regarding the relationship or lack thereof between the Complainant and the Respondent.
Using the disputed domain name to promote similar or identical goods to the goods being offered by the Complainant is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making with its trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. The Panel also finds that the Respondent’s attempt to attract, for commercial gain, Internet users to its website with the intent to creating a likelihood of confusion with the Complainant’s trademarks and its affiliation with the Respondent’s website falls under paragraph 4(b)(iv) of the Policy.
Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant’s marks, the similarity between the disputed domain name and the Complainant’s mark and the Respondent’s use of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 disputed domain name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: July 30, 2014
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