ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION J. Crew International, Inc. v. Blue Face and 宇 张 Case No. D2022-2012 1. The Parties The Complainant is J. Crew International, Inc., United States of America ("United States"), represented by Cowan, Liebowitz & Latman, PC, United States. The Respondents are Blue Face, United States and 宇 张, China. 2. The Domain Names and Registrar The disputed domain names and are registered with Name.com, Inc. 1API GmbH (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 2, 2022. On June 3, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 6, 2022, 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 7, 2022, 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 10, 2022. 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 Respondents of the Complaint, and the proceedings commenced on June 22, 2022. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2022. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on July 15, 2022. page 2 The Center appointed Ian Lowe as the sole panelist in this matter on July 29, 2022. 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. Preliminary issue The Complaint has been filed against two respondents. Although paragraph 4(f) of the Policy does envisage multiple disputes between a Complainant and a Respondent being consolidated, neither the Policy nor the Rules provide expressly for the filing of a single Complaint against multiple respondents. However, section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") sets out the basis on which panels have accepted that a single complaint may be filed against multiple respondents. It notes that "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 has also been an important consideration. In this case, the Panel is not satisfied that the two disputed domain names are under common control. The information provided by the Registrar discloses two entirely different registrants, one in China and one in the United States, with no common contact details. Furthermore, the Panel considers that the websites to which each of the disputed domain names resolve are not similar and give no indication that they might be operated by the same entity. Accordingly, the second Respondent 宇 张 and the corresponding disputed domain name are dismissed from this proceeding without prejudice. The Complainant shall be free to bring a subsequent action against the identified second Respondent and corresponding domain name, if it chooses to do so. 5. Factual Background The Complainant (including its predecessors and affiliated companies) has been engaged in the apparel business since 1983 and is a premier retailer of fashion apparel (including swimwear) and accessories. It has extensively advertised and promoted its goods and services under the J. CREW mark since that date. In 2018, the value of the Complainant's sales under the J. CREW brand was almost USD 1.8 billion. The Complainant is the proprietor of numerous registered trademarks in respect of J. CREW, including United States trademark number 1,308,888 J. CREW registered on December 11, 1984. The disputed domain name (the "Domain Name") was registered on April 27, 2022. It resolves to a website headed "J.CREW" purporting to offer for sale a range of different branded swimwear (the "Respondent's Website"). The Terms and Conditions on the website indicate that it is operated by "rmdfsh.store". 6. Parties' Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to its J. CREW mark (the "Mark"), that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. page 3 B. Respondent The Respondent did not reply to the Complainant's contentions. 7. Discussion and Findings For this Complaint to succeed in relation to the Domain Name the Complainant must prove that: (i) the 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 Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has uncontested rights in the Mark, both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the Mark over many years. Ignoring the generic Top-Level Domain ("gTLD") ".com", the Domain Name comprises the entirety of the Mark together with the word "swimwear". In the view of the Panel, the addition of this term does not prevent a finding of confusing similarity between the Domain Name and the Mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Respondent has used the Domain Name not in connection with a bona fide offering of goods or services, but for a website headed with the Complainant's J.CREW mark and purporting to offer a range of variously branded swimwear products. There is no suggestion that the Respondent has ever been known by the Domain Name (section 2.3 of the WIPO Overview 3.0). The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith In light of the notoriety of the Mark and the heading of the Respondent's Website with the Mark, the Panel is in no doubt that the Respondent had the Complainant and its rights in the Mark in mind when it registered the Domain Name. The Respondent has used the Domain Name for a website purporting to offer for sale a range of swimwear products of various third-party brands. In the Panel's view, the use of a domain name for such activity, clearly with a view to commercial gain, amounts to paradigm bad faith registration and use for the purposes of the Policy. Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith. page 4 8. 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 Name be transferred to the Complainant, but that the complaint in respect of the disputed domain name be dismissed, without prejudice. /Ian Lowe/ Ian Lowe Sole Panelist Date: August 12, 2022
Full & Egal Universal Law Academy