The Complainant is J. Crew International, Inc. of New York, United States of America (“United States”) represented by Cowan, Liebowitz & Latman, PC, United States.
The Respondents are Tracey Tucker of Grays, Essex, the United Kingdom (the “First Respondent”), Eden Becky of Bridgnorth, Shropshire, the United Kingdom (the “Second Respondent”), Yue Lan Chen of London, the United Kingdom (the “Third Respondent”) (collectively the “Respondents”). 2. The Domain Names and Registrar
The disputed domain names and (“Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2019. On February 21, 2019 and February 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 21, 2019 and February 25, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondents and contact information in the Complaint. The Center sent email communications to the Complainant on February 22, 2019 and on February 27, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit amendments to the Complaint. The Complainant filed an amended Complaint on February 25, 2019 (adding an additional Domain Name) and on February 27, 2019.
The Center verified that the Complaint together with the amended Complaints (hereafter “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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on February 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2019. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 25, 2019.
The Center appointed Nicholas Smith as the sole panelist in this matter on March 28, 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 and its related entities are an apparel group trading since 1983 that has developed a reputation as a leading retailer of fashion apparel and accessories. In 2017 the value of the Complainant’s retail sales was over USD 2.3 billion, with over USD1.9 billion of those sales relating to the Complainant’s J. CREW brand. The Complainant owns the domain name which resolves to an active website where the Complainant’s products are offered to the general public.
The Complainant is the owner of numerous trademark registrations for “j. crew” (the “JCREW Mark”), including a United States trademark registered on December 11, 1984 (registration number 141308888) for various goods and services in classes 14, 18, 25 and 42, in particular for various items of apparel in class 25.
The Domain Name was registered on July 7, 2018 by the First Respondent, using a privacy service. The Domain Name was registered on September 4, 2018 by the Second Respondent using a privacy service. The Domain Name was registered on February 18, 2019 by the Third Respondent using a privacy service.
Each of the Domain Names resolves to a website (“the Respondent’s Websites”) that reproduces the JCREW Mark, both in plain form and in the same stylised form used by the Complainant (“Complainant’s logo”), and offers various items of clothing and apparel for sale under the JCREW Mark and under various third party marks. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s JCREW Mark;
(ii) that the Respondents have no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the JCREW Mark, having registered the JCREW Mark in numerous jurisdictions, including the United States. The Domain Names each reproduce the JCREW Mark (absent the “.” along with additional generic words which do not distinguish the Domain Names from the JCREW Mark.
There are no rights or legitimate interests held by the Respondents in respect of the Domain Names. The Respondents are not commonly known as the Domain Names nor do the Respondents have any authorization from the Complainant to register the Domain Names. The Respondents are not making a legitimate non-commercial fair use of the Domain Names. Rather the Respondents are using the Domain Names to create websites that purport to sell Complainant’s products and reproduce Complainant’s logo and copyrighted photos and promotional material, such use not being bona fide.
The Domain Names were registered and are being used in bad faith. By using the Domain Names for a website that reproduces the Complainant’s logo and purport to represent the Complainant, the Respondents are clearly aware of the JCREW Mark and are using it to deceive consumers as to their affiliation with the Complainant. Such conduct amounts to registration and use of the Domain Names in bad faith. B. Respondent
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Matter: Consolidation of Respondents
The named registrant of the Domain Name is the First Respondent. The named registrant of the Domain Name is the Second Respondent. The named registrant of the Domain Name is the Third Respondent.
UDRP proceedings are normally brought against a single respondent. However paragraph 10(e) of the Rules states that in certain circumstances a panel may consolidate multiple domain name disputes. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 4.11.2, states:
“Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., or ), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behaviour, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).”
Based on the information before it, the Panel is prepared to allow the consolidation of the proceedings against the named registrants on the basis that the Domain Names are under common control. The Domain Names were registered with the same Registrar using the same privacy service. Each of the Domain Names redirects to an almost identical website with a striking number of similarities. The contact details of the Respondents reveal certain similarities including in respect of email and regular mail addresses. Finally, the Panel notes that none of the Respondents has denied any association with the other or objected to the consolidation of the proceedings requested by the Complainant. The Panel finds that, on the balance of probabilities, the Domain Names are subject to common control and that the consolidation would be fair and equitable to all the Parties. As such, for the purposes of the decision going forward, the Panel will refer to the named registrants of the Domain Names as a single Respondent. 6.2. Substantive Matters A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and each Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the JCREW Mark, having registrations for JCREW as a trade mark in the United States as well as in various other jurisdictions.
Each of the Domain Names incorporates the JCREW Mark (other than the “.”) with the addition of one or more descriptive terms, such as “outlet” and “dresses”. The addition of such terms to a complainant’s mark does not prevent a finding of confusing similarity, see section 1.8 of the WIPO Overview 3.0 and Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056.
An individual viewing any of the Domain Names may be confused into thinking that each of the Domain Names would refer to a site in some way connected to the Complainant. The Panel finds that each of the Domain Names is confusingly similar to the Complainant’s JCREW Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain names. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain names.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the JCREW Mark or a mark similar to the JCREW Mark. There is no evidence that the Respondent is commonly known by any of the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a legitimate non-commercial use.
The Respondent has used the Domain Names to operate websites to sell apparel that, through the use of the JCREW Mark, purports to be legitimate JCREW products.
If the clothing products sold on the Respondent’s Websites are not genuine Complainant’s products, the Respondent’s use of the Domain Names does not grant it rights or legitimate interests since it is using the Complainant’s JCREW Mark for a site selling counterfeit products.
Even if the Respondent is offering genuine J. Crew products from the Respondent’s Websites, such use does not automatically grant it rights and legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
The WIPO Overview 3.0, section 2.8 summarizes the consensus views of UDRP panels in assessing claims of nominative (fair) use by resellers or distributors in the following manner:
“… Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.”
In this case, the Respondent’s Websites do not accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorized dealer or has any particular connection with the Complainant. Rather, its prominent display of the JCREW Mark and the Complainant’s logo give the impression that the Respondent’s Websites are official websites of the Complainant. Furthermore, each of the Respondent’s Websites offer products for sale that purport to be third party products, including from companies that compete with the Complainant. Even in the event that the Respondent is reselling genuine J. Crew products, its use of the Domain Names for the Respondent’s Websites does not grant it rights or legitimate interests in the Domain Names.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Names under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)).
The Panel finds that the Respondent was aware of the Complainant and its reputation in the JCREW Mark at the time the Domain Names were registered. The Respondent’s Websites contains numerous references to the Complainant, including reproducing the Complainant’s logo and the Complainant’s marketing material. The registration of the Domain Names in awareness of the JCREW Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.
The Respondent registered the Domain Names for the purposes of operating websites specifically to sell either the Complainant’s products or counterfeit products that compete with the Complainant’s apparel. The Respondent is using the Domain Names that are confusingly similar to the JCREW Mark to sell products, be they genuine or otherwise, in competition with the Complainant and without the Complainant’s approval and without meeting the Oki Data test. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s JCREW Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Websites.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Names in bad faith 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 Domain Names , , and be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: April 1, 2019
Full & Egal Universal Law Academy