The Complainant is ABG Juicy Couture LLC, United States of America (“United States”), represented by Authentic Brands Group, United States.
The Respondent is Junping Lian, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2021. On June 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 30, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed two amendments to the Complaint on August 2, 2021.
The Center verified that the Complaint together with the amendments to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2021.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on October 11, 2021. 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 BackgroundThe Complainant is in the fashion apparel industry. The Complainant owns among others the following trademarks (Annexes 5.1 – 5.14 to the Complaint):
- United States registration No. 2,348,674 for the word mark JUICY COUTURE, registered on May 9, 2000, in class 25;
- United States registration No. 2,882,279 for the word mark JUICY COUTURE, registered on September 7, 2004, in class 28;
- United States registration No. 3,146,100 for the word mark JUICY COUTURE, registered on September 19, 2006, in classes 9, 16, 18, and 35; and
- United States registration No. 4,151,343 for the device mark JC, registered on May 29, 2012, in class 25.
The disputed domain name was registered on December 5, 2018, and presently resolves to an active online shop depicting the Complainant’s trademark and logo and what appears to be counterfeit products.
5. Parties’ Contentions A. ComplainantThe Complainant claims to be the owner of the world-famous JUICY and JUICY COUTURE lifestyle brands, founded in 1994 and presently sold in approximately 200 JUICY COUTURE stores and select department stores throughout North America, Europe, Asia, Latin America and the Middle East, as well as on its own website “www.juicycouture.com”.
According to the Complainant, the JUICY and JUICY COUTURE trademarks are supported by a vast portfolio of intellectual property rights, including a global portfolio of more than 800 trademarks covering a wide variety of goods and services for the JUICY family of marks, including JUICY, JUICY COUTURE, JC MISS JUICY, VIVA LA JUICY, JUICY GIRL, JUICY SPORT, CHOOSE JUICY and other JUICY-related marks.
Asserting to be widely known for its goods and services involving valor suits, track suits and sweat suits worn by celebrities (Annex 6), the Complainant further states to spend millions of dollars marketing its goods and services globally, using the JUICY COUTURE and JC Logo trademarks, having undertaken extensive efforts to protect its name and enforce such trademarks, also diligently pursuing infringers of the JUICY and JC logo trademarks.
Under the Complainant’s view, the disputed domain name is confusingly similar to the Complainant’s JUICY COUTURE trademark given that “jc” is a common abbreviation for the Complainant’s world-famous trademark, and the inclusion of the descriptive words “suits outlet” only enhances the likelihood of confusion between the disputed domain name and the Complainant’s trademark.
Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that:
(i) the Respondent has not been licensed, contracted or otherwise permitted by the Complainant in any way to use the JUICY COUTURE or JC trademark or to apply for any domain name incorporating said trademark, nor has the Complainant acquiesced in any way to such use or application of the JUICY COUTURE trademark by the Respondent;
(ii) the Respondent has not been commonly known by the domain name, there being no evidence that “jcsuitsoutlet” is the name of Respondent’s corporate entity, nor is there any evidence of fair use or in connection with a bona fide offering of goods or services; and
(iii) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, rather showing a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by the Complainant.
As to the registration and use of the disputed domain name in bad faith, the Complainant states that:
(i) the Respondent knew of the Complainant’s trademark when registering the disputed domain name given that it is using the disputed domain name to sell counterfeit JUICY COUTURE products at the online shop that resolves from the disputed domain name;
(ii) the Complainant sent a cease-and-desist letter to the Respondent on November 13, 2020 (Annex 7 to the Complaint) reiterated on December 2, 2020, what reaffirms the Respondent’s bad faith;
(iii) the exploitation of consumer confusion for the purpose of selling counterfeit goods, with evident knowledge of the Complainant’s rights in its trademarks, is one of the strongest examples of registration and use in bad faith; and
(iv) the Respondent’s choice to retain a privacy shield to mask its identity is a further indicative of the Respondent’s bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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 disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly SimilarThe Complainant has established rights over the JUICY COUTURE trademark and the JC device trademark.
The disputed domain name consists of the abbreviation of the Complainant’s JUICY COUTURE trademark, corresponding also to the word elements of the Complainant’s JC trademark with the terms “suits” and “outlet”. Furthermore, the use of the disputed domain name in connection with a webpage purportedly selling the Complainant’s products and reproducing the Complainant’s logo affirms a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.15.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a nonexclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed 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 disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.
In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondent that the Respondent has not been commonly known by the disputed domain name and neither has been licensed, contracted or otherwise permitted by the Complainant in any way to use the JUICY COUTURE or JC trademark or to apply for any domain name incorporating said trademark, nor has the Complainant acquiesced in any way to such use or application of the JUICY COUTURE trademark by the Respondent.
Also according to the evidence submitted by the Complainant, the use made of the disputed domain name in connection with an online shop reproducing the Complainant’s trademark and logo and selling what appears to be counterfeit goods does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name in these circumstances.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad FaithThe Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found pursuant to Policy, paragraph 4(b)(iv) in view of the reproduction of the Complainant’s trademark and logo at the online shop that is available at the webpage relating to the disputed domain name, which creates a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement thereof.
Other factors that corroborate the Panel’s finding of bad faith of the Respondent are:
a. the absence of a formal Response by the Respondent;
b. the choice to retain a privacy protection service so as to conceal the Respondent’s identity; and
c. the indication of what appears to be false or incomplete contact details provided in WhoIs information relating to the disputed domain name, communication not being delivered to it by courier.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name.
7. DecisionFor 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
Wilson Pinheiro Jabur
Sole Panelist
Date: October 25, 2021