WIPO Domain Name Decision D2021-1966 for jccrew.com, jvcrew.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION J. Crew International, Inc. v. Domain Administrator, Fundacion Privacy Services LTD Case No. D2021-1966 1. The Parties

The Complainant is J. Crew International, Inc., United States of America (“United States”), represented by Cowan, Liebowitz & Latman, P.C., United States.

The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.

2. The Domain Names and Registrar

The disputed domain names and are registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2021. On June 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 30, 2021, 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 July 6, 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 an amended Complaint on July 8, 2021.

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 July 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2021. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 12, 2021.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on September 15, 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 Background

The Complainant is a United States-based company, founded in 1983 that operates worldwide in the fashion, apparel, and accessories business.

Among others, the Complainant owns trademark registration no. 1,308,888 for J. CREW in International Classes 14, 18, 25, and 42, registered on December 11, 1984, with the United States Patent and Trademark Office (“USPTO”).

The Complainant owns the domain name since December 16, 1994.

The disputed domain names and were registered on June 21, 2013, and June 2, 2007, respectively.

The disputed domain name resolves to a parked website containing links to other websites that offer different apparel products, while the disputed domain name redirects to .

5. Parties’ Contentions A. Complainant

The Complainant asserted the following:

That it is a United States-based company, founded in 1983, that operates worldwide in the fashion, apparel, and accessories business.

That it owns several trademark registrations around the world for J. CREW.

That it has extensively advertised and promoted its goods. That as a result of the long and continuous use of its J. CREW trademark, as well as a substantial investment of time, money, and effort in advertisement, it has developed substantial public recognition and incalculable goodwill.

That previous UDRP panels have recognized the Complainant as a leading retailer of apparel and accessories.

That the Complainant’s sales figures demonstrate the popularity and success of the J. CREW trademark.

That on June 4, 2021, the Complainant’s outside counsel sent a demand communication to the Registrar. That on June 18, 2021, the Registrar responded by email, stating that “the domains are parked and we cannot see them being involved in any kind of abuse”.

That on June 5, 2021, the Complainant’s outside counsel sent a demand communication to the web hosting company of the disputed domain name . That, in such communication, the web hosting company was informed that the website and the disputed domain name were engaging in fraud, and in the exploitation and infringement of the Complainant’s trademarks and copyrights, by monetizing the traffic that is diverted by means of the disputed domain names.

That the Respondent is the owner of both disputed domain names. That, therefore, the claims should be consolidated.

I. Identical or Confusingly Similar

That the Complainant has demonstrated its rights over the J. CREW trademark.

That the disputed domain names are confusingly similar to the J. CREW trademark. That it has been held under the Policy that the suppression of punctuation marks such as hyphens or periods are not alone sufficient to avoid a finding of confusion.

II. Rights or Legitimate Interests

That the Respondent’s personal name is neither “jvcrew.com” nor “jccrew.com”, and that it is not commonly known by these names.

That the Respondent does not engage in any legitimate business or commerce under the names “jvcrew.com” or “jccrew.com”.

That the Respondent has no relationship with the Complainant, is not a licensee of the Complainant, nor has it ever been authorized by the said Complainant to register or use the J. CREW trademark, much less the disputed domain names.

That the Respondent has no rights to or legitimate interests in the disputed domain names because it is not using the disputed domain names in connection with any bona fide offering of goods or services.

That the disputed domain name redirects to the disputed domain name , which contains a series of pay-per-click links.

III. Registered or Used in Bad Faith

That the Respondent is using the disputed domain names to redirect users to a website with content that is related to the Complainant’s business. That, therefore, considering that the disputed domain names are confusingly similar to the J. CREW trademark, Internet users are likely to become confused as to the Complainant’s possible affiliation with the website to which the disputed domain names resolve.

That, presumably, the Respondent profits from the confusion created by the disputed domain names, in order to receive payments from the pay-per-click links comprised in the website to which the disputed domain names resolve.

That the Respondent initially registered and is continuing to use the disputed domain names in bad faith, despite knowing of the Complainant’s pre-existing rights in the J. CREW trademark.

That the Respondent has also registered and is using the disputed domain names in bad faith, since they are confusingly similar to the Complainant’s famous J. CREW trademark.

That, the J. CREW trademark is registered with the USPTO, and that accordingly, the Respondent is presumed to have had constructive notice of the registration of the J. CREW trademark at the time it registered the disputed domain names, which is further evidence of the Respondent’s bad faith use and registration of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met:

(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 with respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Given the Respondent’s failure to submit a Response, the Panel may decide this proceeding based on the Complainant’s undisputed factual allegations under paragraphs 5(f), 14(a), and 15(a) of the Rules (see Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487).

A. Identical or Confusingly Similar

The Complainant has provided enough evidence to prove that it is the owner of a registration for the J. CREW trademark since 1984.

A.1.

The disputed domain name is confusingly similar to the J. CREW trademark since the disputed domain name includes the J. CREW trademark entirely, with the addition of the letter “v” between the letter “j” and the word “crew”, which makes this a typical case of typosquatting, considering that it is an intentional misspelling of the Complainant’s trademark, especially taking into account that the letter “v” is adjacent to the letter “c” in the QWERTY keyboard (see section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also Schneider Electric S.A. v. Domain Whois Protect Service / Cyber Domain Services Pvt. Ltd.,WIPO Case No. D2015-2333; Rolls-Royce plc v. John Holt.,WIPO Case No. D2017-1842; Mastercard Prepaid Management Services Limited v. Cash SDSD.,WIPO Case No. D2020-1938; and ZB, N.A., a national banking association, dba Zions First National Bank v. Sharon White,WIPO Case No. D2017-1769).

A.2.

The disputed domain name is confusingly similar to the J. CREW trademark since the disputed domain name includes the J. CREW trademark entirely, with the addition of the letter “c” between the letter “j” and the word “crew”, which makes this a typical case of typosquatting, considering that it is an intentional misspelling of the Complainant’s trademark, taking into account that, when typing a domain name, it is not uncommon for the user to double type one of its letters (see section 1.9 of the WIPO Overview 3.0; see also Schneider Electric S.A. v. Domain Whois Protect Service / Cyber Domain Services Pvt. Ltd., supra; Rolls-Royce plc v. John Holt., supra; Mastercard Prepaid Management Services Limited v. Cash SDSD., supra; and ZB, N.A., a national banking association, dba Zions First National Bank v. Sharon White, supra).

The addition of the generic Top-Level Domain (“gTLD”) “.com” to the disputed domain names constitutes a technical requirement of the Domain Name System (“DNS”). Thus, it has no legal significance in assessing identity or confusing similarity in the present case (see CARACOLITO S SAS v. Nelson Brown, OXM.CO,WIPO Case No. D2020-0268; SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services,WIPO Case No. D2015-0565; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919).

In light of the above, the first element of the Policy has been met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name:

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed 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 disputed domain name, even if it did not acquire 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 mark at issue.

The Complainant has asserted that there is no relationship between the Complainant and the Respondent, that it has not granted any authorization to the Respondent to use its trademark J. CREW, and that the Respondent has not been commonly known by the disputed domain names (see Beyoncé Knowles v. Sonny Ahuja,WIPO Case No. D2010-1431; and Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272). The Respondent did not contest these allegations.

The case file contains no evidence that demonstrates that the Respondent has used or has made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services (see Valentino S.p.A. v. Qiu Yufeng, Li Lianye,WIPO Case No. D2016-1747; and Rolex Watch U.S.A., Inc. v. NCSO,WIPO Case No. D2010-0948).

The Complainant has made a prima facie case showing that the Respondent lacks rights to or legitimate interests in the disputed domain names. Therefore, the burden of production to demonstrate rights to or legitimate interests in the domain name falls on the Respondent, who in this case has failed to ascertain them (see sections 2.1 of the WIPO Overview 3.0, see also Harpo, Inc. and Oprah’s Farm, LLC v. Robert McDaniel,WIPO Case No. D2013-0585; Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009).

B.1.

The disputed domain name resolves to a parked website comprising pay-per-click links related to the Complainant’s apparel and accessories business. Paragraph 4(c) of the Policy establishes that this cannot constitute a bona fide offering, because said links capitalize on the reputation and goodwill of the Complainant’s trademark, or otherwise mislead Internet users to think that there is some sort of relationship or association between the Complainant and the Respondent (see section 2.9 of the WIPO Overview 3.0; see also ABSA Bank Limited v. Domain Administrator, See PrivacyGuardian.org / Sidoti Parmer Case No. D2020-2992; Archer-Daniels-Midland Company v. Wang De Bing,WIPO Case No. D2017-0363; Fontem Holdings 4, B.V. v. J- B-, Limestar Inc.,WIPO Case No. D2016-0344; Barceló Corporación Empresarial, S.A. v. Hello Domain,WIPO Case No. D2007-1380; and Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc.,WIPO Case No. D2017-0302).

B.2.

The disputed domain name redirects to the parked disputed domain name , which, as mentioned previously, resolves to a website that comprises pay-per-click links related to the Complainant’s apparel and accessories business.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of the registration and use in bad faith:

(i) circumstances indicating that the respondent has registered or the respondent 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s 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 trademark 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 web site 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 web site or location or of a product or service on its web site or location.

The Complainant has provided evidence showing that it holds trademark rights related to the J. CREW brand. The date of registration of the Complainant’s trademark significantly precedes the date of registration of the disputed domain names.

This Panel agrees with the determination reached in J. Crew International, Inc. v. Susanna Manukyan,WIPO Case No. D2018-1245, in that the J. CREW trademark is famous.

Considering that J. CREW is a famous trademark, it can be inferred that the Respondent knew the Complainant and its business when registering the disputed domain names, which shows opportunistic bad faith (see sections 3.1.4., and 3.2.1 of the WIPO Overview 3.0; see also L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter,WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot,WIPO Case No. D2019-0980; and Carrefour v. Jane Casares, NA,WIPO Case No. D2018-0976).

Moreover, the disputed domain name , redirects to the disputed domain name , which in turn resolves to a parked website comprising pay-per-click links related to the Complainant’s apparel and accessories business. Therefore, this Panel considers that the Respondent is trying to capitalize on the reputation and goodwill of the Complainant’s trademark by misleading Internet users, for commercial gain, to the disputed domain names by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain names, which constitutes bad faith under paragraph 4(b)(iv) of the Policy (see section 3.1.4 of the Policy, see also Fontem Holdings 4, B.V. v. J- B-, Limestar Inc.,WIPO Case No. D2016-0344; Archer-Daniels-Midland Company v. Wang De Bing,WIPO Case No. D2017-0363, and Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc.,WIPO Case No. D2017-0302).

Therefore, the third element of the Policy has been fulfilled.

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.

Kiyoshi Tsuru
Sole Panelist
Date: October 3, 2021

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