ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Julie Vos Designs, LLC v. gang qin Case No. D2024-2846 1. The Parties The Complainant is Julie Vos Designs, LLC, United States of America (“United States”), represented by Tucker & Latifi, LLP, United States. The Respondent is gang qin, China. 2. The Domain Name and Registrar The disputed domain name is registered with Dynadot Inc (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2024. On July 12, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 13, 2024, 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 17, 2024, 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 17, 2024. 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 24, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2024. The Center appointed Eva Fiammenghi as the sole panelist in this matter on August 23, 2024. 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.
page 2 4. Factual Background The Complainant, Julie Vos Designs, LLC, is a New York-based limited liability company established in 2006. The Complainant operates in the jewelry design and retail sector, specializing in high-quality jewelry crafted from semi-precious gemstones and brass gilded in 24-karat gold. Over the years, the Complainant has become a well-known brand, with its products featured in prominent publications such as Marie Claire, InStyle, Martha Stewart, and Vogue.com. The Complaint is based on the following registered trademarks owned by the Complainant: - United States trademark JV JULIE VOS, Reg. No. 5,197,423, registered on May 2, 2017, in classes 14 and 35; and - International trademark JV JULIE VOS, Reg. No. 1491284, registered on August 8, 2019, in classes 14 and 35. The Complainant maintains and operates the domain name as its primary retail source on the Internet. The domain name has been in use for several years, and it plays a crucial role in the Complainant’s business operations. The disputed domain name was registered on June 20, 2024. The website associated with the disputed domain name is allegedly selling the goods with JV JULIE VOS trademark. These items are argued to be either counterfeit or non-existent by the Complainant. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant argues that the disputed domain name incorporates the Complainant’s registered trademark JV JULIE VOS, with the mere addition of the term “jewelry“, which directly relates to the products offered by the Complainant. The addition of this term does not differentiate the disputed domain name from the trademark but rather exacerbates the likelihood of confusion, as it reinforces the association with the Complainant’s business. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorized or licensed the Respondent to use the JV JULIE VOS trademarks. The Respondent is not commonly known by the disputed domain name, and the website associated with the disputed domain name appears to sell goods with JV JULIE VOS trademark, which the Complainant believes are either counterfeit or non-existent. The Complainant contends that the Respondent’s use of the disputed domain name is intended to deceive consumers into believing that the Respondent is associated with the Complainant, thereby wrongfully benefiting from the Complainant’s established reputation. The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. The disputed domain name was registered solely to create a likelihood of confusion with the Complainant’s trademark for commercial gain. The Respondent’s website is designed to appear as though it is affiliated with the Complainant by using the Complainant’s logo, images, and language. This deceptive practice not only confuses consumers but also harms the Complainant’s business by diverting potential customers to the Respondent's website under false pretenses. Therefore, the Complainant requests that the Administrative Panel order the transfer of the disputed domain name to the Complainant, as per Paragraph 4(i) of the Policy.
page 3 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that: (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 was registered and is being used in bad faith. These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The dominant part of the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms (here, “jewelry”) may bear on the assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
page 4 Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The dominant part of the Complainant's trademark JV JULIE VOS is incorporated into the disputed domain name with the addition of the term “jewelry”, which refers to the primary product associated with the Complainant’s business. The disputed domain name effectively creates an impression that it is connected to or endorsed by the Complainant. WIPO Overview 3.0, section 2.5.1. Panels have held that the use of a domain name for illegal activity, such as the sale of counterfeit goods and/or impersonation/passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Complainant has asserted that the Respondent is not authorized or licensed to use the JV JULIE VOS trademarks and is not commonly known by the disputed domain name. The Respondent’s website appears to be designed to sell counterfeit or non-existent goods with JV JULIE VOS trademark, thereby misleading Internet users and causing confusion. This deceptive use of the disputed domain name does not constitute a bona fide offering of goods or services and cannot establish rights or legitimate interests. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark. The Respondent registered the disputed domain name, which incorporates the dominant part of the Complainant’s well-known trademark JV JULIE VOS along with the term “jewelry“, directly related to the Complainant’s business. The Respondent’s use of the disputed domain name to sell goods purportedly under the JV JULIE VOS trademark - likely counterfeit or non-existent - demonstrates a clear intent to deceive consumers into believing that the website is affiliated with the Complainant. Panels have held that the use of a domain name for illegal activity, such as the sale of counterfeit goods and/or impersonation/passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Respondent’s actions meet the criteria outlined in paragraph 4(b)(iv) of the Policy, as the Respondent’s use of the disputed domain name is clearly intended to attract Internet users by creating a likelihood of confusion with the Complainant’s mark for commercial gain. This satisfies the third element of the Policy. The Panel finds that the Complainant has established the third element of the Policy.
page 5 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 name be transferred to the Complainant. /Eva Fiammenghi/ Eva Fiammenghi Sole Panelist Date: September 6, 2024
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