The Complainant is J. Crew International, Inc., United States of America (“United States” or “U.S.”), represented by Cowan, Liebowitz & Latman, PC, United States.
The Respondent is Domain Administrator, PrivacyGuardian.org, United States / Antoine Salembier, France / Alison Hall, United Kingdom. 2. The Domain Names and Registrar
The Disputed Domain Names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2020. On June 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On June 11, 2020, 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 June 12, 2020 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 June 12, 2020. The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on June 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2020. The Center appointed Pablo A. Palazzi as the sole panelist in this matter on July 20, 2020. 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 has been engaged in the apparel business since 1983 and has developed a reputation as a leading retailer of fashion apparel and accessories. The Complainant is the owner of numerous trademark registrations for the J. CREW trademark in numerous countries around the world, including the United States. The earliest U.S. registration of the J. CREW was registered on December 11, 1984 (registration number 1308888). In addition, the Complainant has owned the domain name The Respondents registered the following Disputed Domain Names: - - The Disputed Domain Names currently do not resolve to active websites. However, the Complainant submitted evidence that the Disputed Domain Names used to resolve to websites allegedly selling J. Crew products. 5. Parties’ Contentions A. Complainant The Complainant’s contentions can be summarized as follows: Identical or confusingly similar The Complainant contends that the Disputed Domain Names are confusingly similar to the J. CREW trademark. The distinctive feature of the Disputed Domain Names is the J. CREW trademark without the period. The Complainant further states, that the use of an obvious or intentional misspelling of the trademark is still considered confusingly similar to the relevant trademark. Moreover, the addition of the generic words “shop” or “maxi dress” does not distinguish the Disputed Domain Names from the J. CREW trademark. Furthermore, the generic Top-Level Domain (“gTLD”) “.com” does not alter the similarity between the Disputed Domain Names and the Complainant’s trademark. The Complainant alleges, that the Respondents’ personal names are not “jacrewshop” or “jcrewmaxidress”, instead the Disputed Domain Names are associated with an individual named Antoine Salembier and Alison Hall, respectively. Moreover, the Complainant states that it has never authorized the Respondents to register or use the J. CREW trademark. The Complainant further submits that the Respondents have no rights or legitimate interests in the Disputed Domain Names, since they are not used in connection with a bona fide offering of goods and services. The Complainant highlights that the Disputed Domain Names resolved to websites allegedly selling J. CREW products and both of them displayed direct copies of the Complainant’s J. CREW trademark. Thus, the Complainant states that the Respondents have no rights or legitimate interests in the Disputed Domain Names. Registration and use in bad faith The Complainant contends that the Respondents are using the Disputed Domain Names to redirect Internet users to websites whose content is related to the Complainant’s business. Due to the similarity between the Disputed Domain Names and the Complainant’s J. CREW trademark, Internet users are likely to become confused as to the Complainant’s possible affiliation with the Respondents’ websites. The Complainant further states that the Respondents continue using the Disputed Domain Names in bad faith despite knowing of the Complainant’s J. CREW trademark. In addition, the Respondents registered and are using the Disputed Domain Names in bad faith since they are identical or confusingly similar to the Complainant’s famous J. CREW trademark. B. Respondent The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Matter: Consolidation of Respondents Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states the following with respect to complaints consolidated against multiple respondents: “[w]here 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.” Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. The Complainant submitted a request for the consolidation of proceedings against multiple respondents. In the present case, the evidence shows that each of the Disputed Domain Names adopted a common structure: each of them consists of the Complainant’s trademark J. CREW trademark but with different typos, and are phonetically and visually similar to the Complainant’s trademark, with the addition of a dictionary term such as “shop” and “maxi dress”, both relating to the Complainant’s business. In addition, the Disputed Domain Names share the same registrar, and the same WhoIs privacy provider. Moreover, both of the Disputed Domain Names redirected to similar websites offering products bearing the Complainant’s trademark at a big discount in the same currency (namely USD). In particular, both of them put in place the J. CREW trademark in the top left-hand corner of the page and they also offer similar material, such as a gray sweatshirt bearing the word “Brooklyn”. Accordingly, the Panel finds that the Disputed Domain Names are subject to common control for the purposes of the Policy. The Respondents have not denied these assertions, thus the Panel permits the consolidation of the proceedings and will refer hereinafter to both registrants of the Disputed Domain Names as the “Respondent”. 6.2. Substantive Matters Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Names at issue in this case: (i) the Disputed Domain Names are 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 Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Disputed Domain Names With respect to the Disputed Domain Name Thus, the Panel finds that this is a typical typosquatting case, since the Disputed Domain Names reproduce the Complainant’s trademark in its entirety but with a minor alteration of the letters, which does not change the overall impression that the Disputed Domain Names are confusingly similar to the Complainant’s trademark. WIPO Overview 3.0 states in section 1.9: “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. […] Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers.” Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Names: (i) before any notice to the Respondent of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or (iii) the Respondent is 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 at issue. There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the trademark in the Disputed Domain Names. Furthermore, there is no evidence that the Respondent is commonly known by the Disputed Domain Names. The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Names. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions. As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith. The Disputed Domain Names were registered on 2019 and 2020, while the Complainants J. CREW U.S. trademark registration was granted in 1984. Furthermore, the fact that the Respondents websites were connected to an unauthorized online shop offering J. CREW products, the Respondent cannot claim not to have knowledge of the legal rights in the trademark J.CREW at the time of the registration of the Disputed Domain Names. The fact that the Disputed Domain Names are nearly identical to the Complainant’s trademark, having a similar visual and phonetic appearance, establishes that the Respondent was well aware of the Complainant’s trademark when registering the Disputed Domain Names. Thus, the Panel concludes the Respondent registered the Disputed Domain Names in bad faith. Furthermore, it is important to highlight that the present case is a “typosquatting” case being this, a strong evidence of the Respondent’s bad faith. In the case at hand, in view of the Respondent’s registration of two domain names confusingly similar to the Complainant’s well-known trademark, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Names and its failure to respond to the Complaint, constitutes bad faith. For that reason, the Panel concludes that this conduct qualifies as bad faith under paragraph 4(b)(iv) of the Policy in that the Respondents use of the Disputed Domain Names attempts to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondents website. Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and used the Disputed Domain Names 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 Names Pablo A. Palazzi
Sole Panelist
Date: August 3, 2020
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