The Complainant is J. Crew International, Inc. of New York, United States of America, represented by Cowan, Liebowitz & Latman, PC, United States of America.
The Respondent is Joyce Cheadle of Lanzhou, Gansu, China. 2. The Domain Names and Registrar
The disputed domain names , and are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2018. On December 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names and . On December 5, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 5, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 6, 2018.
On December 12, 2018, the Complainant filed a second amended Complaint, adding the disputed domain name . On December 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name . On December 18, 2018, 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 December 5, 2018 and on December 18, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On December 19, 2018, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amended Complaints 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2019.
The Center appointed Francine Tan as the sole panelist in this matter on January 29, 2019. 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 (including predecessors and affiliate companies) has been engaged in the apparel business since 1983 and developed a reputation in fashion apparel and accessories. The Complainant owns trade mark registrations for J.CREW in numerous countries around the world including the United States of America (“U.S.”). The earliest U.S. registration of J.CREW (Registration No. 1,308,888) was obtained in December 11, 1984 and became incontestable in 1990.
The Complainant states that it has extensively advertised and promoted its goods and services. As a result of long and continuous use of the J.CREW mark and substantial investments in time, money and effort in advertising and promotions, the J.CREW mark has developed substantial public recognition. In 2017, the value of the Complainant’s sales was over USD 2.3 billion, with almost USD 1.9 billion of those sales falling under the Complainant’s J.CREW brand. The Complainant has been recognized as a leading retailer of apparel and accessories bearing the J.CREW mark (see e.g., J.Crew International, Inc. v. Susanna Manukyam,WIPO Case No. D2018-1245; J.Crew International, Inc. v. Lin Chengying,WIPO Case No. D2010-1884; J.Crew International, Inc. v. ,WIPO Case No. D2000-0054).
The Complainant has owned the domain name since December 16, 1994. The said domain name resolves to an active Internet website which is accessible all over the world, and logs millions of visits each year.
The disputed domain names , and were registered on November 13, 2018, November 30, 2018 and November 21, 2018, respectively.
In November 2018, the Complainant’s external legal counsel sent separate letters to the Registrar in relation to the disputed domain names and and the hosting company, demanding the cancellation of the disputed domain names. Follow up letters were sent but no responses were received from the Respondent. The Complainant first learnt of the disputed domain name on or around December 12, 2018. The Complainant asserts that by then, the Respondent would have been aware of the Complainant’s rights based on the earlier communications sent in November 2018 as well as the filing and service of the Complainant’s Amended Complaint on December 6, 2018. Due to the deadline of December 18, 2018 for the Complainant to further amend its Amended Complaint to add allegations regarding the newly-discovered disputed domain name , the Complainant did not contact the Respondent separately about this disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant cited earlier UDRP panel decisions in support of these contentions in relation to paragraph 4(a)(i) of the Policy:
1) The disputed domain names are confusingly similar to the J.CREW trade mark in which the Complainant has rights. The absence of the period between “j” and “crew” in the disputed domain names are insufficient to avoid a finding of confusing similarity. The addition of the generic terms “shops”, “en” and “vip” does not distinguish the disputed domain names from the J.CREW mark.
2) The Respondent’s use of the terms “shops”, “en” and “vip” in combination with the Complainant’s J. CREW mark is insufficient to negate the confusing similarity with the disputed domain names.
3) The generic Top-Level Domain (“gTLD”) “.com” appearing in the disputed domain names does not alter the similarity of the disputed domain names and the Complainant’s J.CREW mark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. In this regard, the Complainant argues that the Respondent’s personal name (upon information and belief) is not any of the names forming the disputed domain names. Neither is the Respondent commonly known by these names. The Respondent is not a licensee of the Complainant and has not been authorized by the Complainant to register or use the Complainant’s J.CREW trade mark. Moreover, the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names resolve to active websites allegedly selling J.CREW-branded products. The sites display direct copies of the Complainant’s distinctive and stylized lettering and includes the Complainant’s original and proprietary images. They also copy the promotional content for J.CREW products on the landing pages as well as images of J.CREW products apparently being offered for sale.
The Complainant further submits that the disputed domain names were registered and are being used in bad faith. The disputed domain names are used to redirect Internet users to websites whose content is related to the Complainant’s business. Since the disputed domain names are so similar to the J.CREW mark, Internet users are likely to be confused as to the affiliation of the Respondent’s websites with the Complainant. Presumably the Respondent profits thereby, by selling illegitimate goods.
The Respondent knew of the Complainant’s pre-existing rights when it registered the disputed domain names. This is evident from the fact that the Respondent has used copyrighted images and text from the Complainant’s website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issue: Language of the Proceeding
The Registration Agreement is in Chinese. The Complainant requested, nonetheless, for the language of the proceeding be English for these reasons:
(i) The disputed domain names comprise English words and abbreviations, namely the Complainant’s trade mark J.CREW, the term “shops”, and the well-known abbreviations “vip” and “en” (the latter standing for “English”);
(ii) The disputed domain names are in Latin characters and comprise the gTLD “.com”, which show that the targeted customers are English-speaking;
(iii) The content of the Respondent’s websites are all in English and the payment currency is US dollars; and
(iv) Requiring the Complainant to translate all the documents into Chinese would involve additional costs and a delay in the proceeding.
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.
The Panel is able to determine the language of the proceeding which should apply, having regard to all the circumstances (paragraph 11(a)). The Panel has to ensure fairness to the parties and allow for an inexpensive and expeditious way for the resolution of domain name disputes (paragraphs 10(b) and (c) of the Rules) when considering the issue of the language of the proceeding.
In this connection, the Panel refers to the following guidance notes set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, at section 4.5.1:
“[…] panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.
… . Where it appears the parties reasonably understand the nature of the proceedings, panels have also determined the language of the proceeding/decision taking account of the panel’s ability to understand the language of both the complaint and the response such that each party may submit pleadings in a language with which it is familiar.”
The Respondent did not respond on the issue of the language of the proceeding.
The disputed domain names contain the Complainant’s J.CREW trade mark in its entirety, in combination with English words and abbreviations. The content of the Respondent’s websites are all in English. These circumstances show that the Respondent is very familiar and comfortable with the English language. In the light of this, it would not be prejudicial to the Respondent if English were to be adopted as the language of the proceeding. On the other hand, the proceeding would be unduly delayed if the Complaint and evidence had to be translated into Chinese. The costs relating to such translation work would far exceed the cost of initiating the administrative proceeding.
The Panel therefore determines it appropriate for English to be the language of the proceeding. 6.2 Substantive Issues A. Identical or Confusingly Similar
The Panel finds that the Complainant has established it has trademark rights in the J.CREW mark.
The Panel is also of the view that the disputed domain names , and are confusingly similar to the Complainant’s J.CREW mark. The disputed domain names incorporate the Complainant’s mark in their entirety. They differ with the Complainant’s J.CREW mark only in the removal of the period after the letter “j”, and with the addition of descriptive terms or abbreviations, i.e., “shops”, “vip” and “en”. It has been held under the Policy that such differences do not avoid a finding of confusing similarity. The addition of the term “shops” is moreover very often used in the retail and marketing of clothing; the addition of the abbreviation “vip” suggests that the website is for VIP customers of the Complainant (assuming there is such a category) or for Internet customers looking for J.CREW apparel who would like to join a VIP-program that the Complainant may operate; and “en” suggests that the relevant websites are for English speakers. These additional terms and the omission of the period after the letter “j” in the disputed domain names do not remove the confusing similarity with the Complainant’s J.CREW trade mark.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent’s personal name is not any of the disputed domain names; the Respondent is not commonly known by the disputed domain names; the Respondent is not a licensee of the Complainant; the Respondent has not been authorized by the Complainant to use the J. CREW mark as a domain name or for any other purpose; and the Respondent is using the disputed domain names for use on websites which copy the look and feel of the Complainant’s website including proprietary content and images belonging to the Complainant.
The Respondent has failed to rebut the prima facie case established by the Complainant.
The Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
The Panel also finds that the disputed domain names were registered and are being used in bad faith. It is obvious that the Respondent knew of the Complainant’s pre-existing rights when it registered the disputed domain names, not only from the choice of the distinctive portion of the disputed domain names, but also the content of the Respondent’s respective websites.
The Respondent’s intention in registering the disputed domain names was to redirect Internet users to her websites, which would easily be perceived by Internet users to be the Complainant’s website and/or related to the Complainant’s and/or to be endorsed or permitted by the Complainant, for commercial gain.
The Respondent registered the disputed domain names long after the Complainant’s rights in the J.CREW mark were established. The Respondent’s deceptive use of the disputed domain names does not constitute good faith use. The Respondent’s continued use of the disputed domain names even after receipt of the cease and desist communications from the Complainant, her failure to respond in this proceeding, as well as the use of copyrighted images and text from the Complainant’s website are all further evidence of bad faith. The circumstances of this case are described in paragraph 4(b)(iv) of the Policy:
“by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [her] web site 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 [her[ web site or location or of a product or service on [her] web site or location.”
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 names , and be transferred to the Complainant.
Francine Tan
Sole Panelist
Date: February 4, 2019
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