Complainant is Juicy Couture, Inc. of Pacoima, California, United States of America (“US”), represented by Davis Wright Tremaine LLP., US.
Respondent is Jack Zheng of Burnaby, British Columbia, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2012. On September 21, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2012. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2012.
The Center appointed Francisco Castillo-Chacón as the sole panelist in this matter on November 6, 2012. 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
Complainant is the owner of several trademarks including but not limited to JUICY and JUICY COUTURE (the ”Trademarks”). Complainant uses both these Trademarks around the world for clothing, namely shirts, dresses, pants, skirts and jackets.
Complainant firs registered the trademark JUICY in 1999, and in 2000 obtained a registration for the trademark JUICY COUTURE. Complainant is in the fashion industry; it designs, manufactures and distributes fashion items through stores and its website “www.m” which promotes its goods throughout the world.
Complainant’s trademarks have become famous under the laws of the United States of America, and obtained the status of notorious marks under the Paris Convention. Complainant has used the Trademarks for over twelve (12) years in connection with its products. Complainant has spent millions of dollars advertising and promoting its trademarks. Complainant generates millions of dollars in sales each year. Due to its success in the United States and around the world, the trademarks have generated valuable goodwill and reputation, and have become inherently distinctive of Complainant’s products.
Respondent is apparently domiciled in Canada and registered the disputed domain name on July 20, 2010, about eleven (11) years after Complainant registered its trademark.
Respondent operates a website at the disputed domain name stating “Domain Name for Sale” and marked with a device reading “DOMAIN FOR SALE.” The disputed domain name features a form for submission of offers to purchase the disputed domain name. Respondent seems to have also registered other domain names which incorporate other famous trademarks. 5. Parties’ Contentions A. Complainant
Complainant has rights in JUICY and JUICY COUTURE by reason inter alia of its multiple registered Trademarks dating well before registration of the disputed domain name. The disputed domain name is confusingly similar to these Trademarks. The addition of the country code top-level domain ”co”. does nothing to diminish that confusion.
Complainant has been using the Trademarks around the world for a number of years, having used the Trademark since 1999 and 2000. The disputed domain name is confusingly similar to Complainant’s Trademarks JUICY and JUICY COUTURE.
Respondent registered the disputed domain name long after Complainant had well established rights in the JUICY and JUICY COUTURE Trademarks and its operating of the website “www.m’’. Respondent registered the disputed domain name on July 20, 2010 without Complainant’s authorization; the disputed domain name’s website states “Domain Name for Sale” and is marked with a device reading “DOMAIN FOR SALE.”.
Given the prominence of the JUICY and JUICY COUTURE Trademarks worldwide and on the Internet, Respondent’s registration of the disputed domain name was done in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Procedural Issues
There is a consensus that a respondent's default does not automatically result in a decision in favor of the complainant, complainant must still establish each of the three elements required by paragraph 4(a) of the “UDRP” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions (WIPO Overview 2.0), paragraph 2.2). Notwithstanding this, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel has not found any exceptional circumstances to justify Respondent’s failure to submit a Response. In short, Respondent does not expressly deny any of the facts stated by Complainant and the Panel therefore infers that Respondent does not deny the reasonable facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994.
With that being said, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that derive from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; RX America, LLC. v. Matthew Smith,WIPO Case No. D2005-0540. B. Identical or confusingly similar
Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Complainant’s trademark rights are measured as at the date when the Complaint was filed.
Respondent registered the disputed domain name well after Complainant established rights in its JUICY and JUICY COUTURE Trademarks, (see, e.g., Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent,WIPO Case No. D2009-1033). Complainant has clearly demonstrated that it had registered in the United States of America JUICY and JUICY COUTURE well before 2010 when the disputed domain name was registered. Complainant further evidenced its rights over the domain name .
Previous UDRP panels have held that when a domain name wholly incorporates a complainant's registered trademark, this is generally sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation Limited v. Barry Cheng Kwok Chu,WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd.,WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l.,WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M,WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0282. In the Panel’s view, if this is true as a general principle, it is even more so, when the disputed domain name wholly incorporates a famous and well-known trademark such as JUICY COUTOURE. The Panel has found no facts or arguments that could justify a dissent from the consensus view; therefore, in consent with previous panels, this Panel finds that the mere addition of a generic top level domain like “.co”, does not eliminate the confusing similarity between the two.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s JUICY and JUICY COURE Trademarks. C. Rights or Legitimate Interests
Complainant has made its prima facie case that Respondent lacks any rights or legitimate interests in the disputed domain name. Respondent failed to respond or to offer any evidence to demonstrate that Complainant has ever authorized them to use the JUICY and JUICY COUTURE Trademarks.
The Panel concurs with the prior UDRP decisions holding that, in circumstances similar to this, there is no bona fide offering of goods or services where the disputed domain is registered merely to offer it for sale, moreover the fact that Respondent operates similar web sites which wholly incorporate other famous or well-known trademarks is further evidence of bad faith. See Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235; Media West-GSI Inc., and Ganett Satellite Information Network Inc., v. Damian Macafeet,WIPO Case No. D2000-1032; and Fairchild Publications Inc. v. Saeid YomtobianWIPO Case No. D2000-1003.
It is the view of this Panel, that Complainant has satisfied its burden and provided the Panel with sufficient evidence to meet the prima facie requirement showing that Respondent has no rights to or legitimate interests in the disputed domain name. By defaulting the proceedings Respondent has not provided the Panel with any evidence to demonstrate rights or legitimate interests in the disputed domain name as set forth in paragraph 4(c) of the Policy. Therefore, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. This holding is consistent with WIPO Overview 2.0, paragraph 2.1., pursuant to which “once such prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
For all of these reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied by Complainant. D. Registered and Used in Bad Faith
Complainant contents that Respondent is aware of the existence of the JUICY and JUICY COUTURE Trademarks, and Respondent is offering the disputed domain name for sale, and has no legitimate interest in the disputed domain name other than selling it. Complainant also contends that Respondent registered and is using the disputed domain name in bad faith by incorporating Complainant’s registered JUICY and JUICY COUTURE trademarks primarily to sell the disputed domain name hence Respondent’s disputed domain name is in violation of the Policy.
The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, paragraph 4(b)):
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.
It is clear to this Panel that Respondent registered the disputed domain name primarily to sell it and benefit from the Trademarks fame.
Absent some exceptional justification from Respondent, it is reasonable to infer that Respondent registered the disputed domain name with the primary intention of selling it or simply benefiting from Complainant’s well established Trademarks. This Panel believes this constitutes bad faith within the meaning of paragraph 4(b)(i) of the Policy.
The Panel therefore concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name by a third party may in certain circumstances be considered as further evidence of bad faith pursuant to the Policy (see PepsiCo, Inc. v. "null", aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.WIPO Case No. D2000-0163; and Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435).
As previous panels have concluded the four criteria set forth in the Policy, paragraph 4(b) are nonexclusive (see Telstra Corporation Limited v. Nuclear Marshmallows),WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.
In this case Respondent is using the entire Trademarks owned by Complainant without a plausible good faith explanation. This Panel can also infer bad faith out of the evidence submitted by Complainant which leaves no doubt to this Panel that Respondent knew or must have known about Complainant’s Trademarks and it was out of the knowledge and the fame of Complainant’s Trademarks that it decided to register the disputed domain name. 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 Complainant.
Francisco Castillo-Chacón
Sole Panelist
Date: November 30. 2012
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