The Complainant is J. Crew International, Inc., United States of America (“U.S.”), represented by Cowan, Liebowitz & Latman, PC, United States of America.
The Respondent is Chen Jiajin, Chen Jiajin, China.
The disputed domain name <jcredacw.com> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the “Registrar”). The disputed domain name <jcrewerqcf.com> is registered with Bizcn.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2020. On August 12, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On August 13, 2020, the Registrars transmitted by email to the Center their 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 August 19, 2020 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 25, 2020.
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 August 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2020.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on October 6, 2020. 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.
The Complainant in this administrative proceeding is J. Crew International, Inc., a company incorporated in the State of Delaware in the United States of America. J. Crew International, Inc. and its predecessors and affiliated companies have been engaged in the apparel business since 1983.
The Complainant affirmed to be the owner of the J. CREW trademark through several registrations around the world and has proven to be the owner of U.S. mark J. CREW No. 1,308,888, registered on December 11, 1984.
The Complainant has owned and used the domain name <jcrew.com> for many years.
The disputed domain names, <jcredacw.com> and <jcrewerqcf.com>, were registered on July 2, 2020 and July 18, 2020 respectively. The disputed domain names resolve to websites that purport to offer the Complainant’s goods for sale at heavily discounted prices. On these websites copies of the Complainant’s J. CREW marks as well as products purporting to be J. CREW products are displayed for sale.
The Complainant claims that the disputed domain names are confusingly similar to the Complainant’s registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain names; and that the Respondent registered and is using the disputed domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
In order for the Complainant to obtain a transfer of the disputed domain names, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:
(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 in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
The Complainant has established rights in the J. CREW trademark.
The disputed domain names, <jcredacw.com> and <jcrewerqcf.com>, consist of the Complainant’s trademark J. CREW combined with the letters “dac” and “erqcf” respectively, as well as the generic Top-Level Domain (“gTLD”) “.com”.
Notwithstanding the addition of the letters “dac” and “erqcf” to the Complainant’s trademark, the latter, i.e. the J. CREW mark, is still recognizable in the disputed domain names. Therefore, these additions are insufficient to avoid a finding of confusing similarity under the first element of the UDRP.
In this sense WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Panel further notes that the content of the websites associated with the disputed domain names, which is usually disregarded when assessing confusing similarity, in the present case actually confirms confusing similarity as the Respondent’s clear intent to target the Complainant’s trademark.
In addition, both websites associated with the disputed domain names contain the Complainant’s trademark in its entirety and display similar content (i.e. products and marks purporting to be J. CREW products and marks). The Panel finds that, as explained in a previous case, the content at the corresponding website serves to affirm a finding of confusing similarity, and the registration of multiple domain names with similar content and targeting the same mark reinforce this conclusion (Bayerische Motoren Werke AG (“BMW”) v. Registration Private, Domains By Proxy, LLC / Armands Piebalg, WIPO Case No. D2017-0156.)
Therefore, the Panel finds the disputed domain names to be confusingly similar to the J. CREW trademark in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. The Respondent does not appear to be commonly known by the name J. CREW or by any similar name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain names, nor any use in connection with a bona fide offering of goods or services. In fact, it appears from the documents available that the disputed domain names resolve to active websites purportedly selling J. Crew products and displaying the Complainant’s J. CREW trademarks. Finally, the Respondent has not replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain names.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain names were registered and are being used in bad faith.
Indeed, the Complainant gives several bases for its contention that the disputed domain names were registered and are being used in bad faith.
Particularly relevant are the Complainant’s unchallenged assertions (which the Panel accepts and partially reports below) that:
The Respondent could not have been unaware of the existence of the Complainant’s trademarks when registering the disputed domain names.
In fact, the J. CREW trademark has been registered and used for several years, and it enjoys a widespread reputation and a high degree of recognition in its field.
Besides, that the Respondent knew of the Complainant’s trademark and activity is clearly shown by the Respondent’s use of the disputed domain names to resolve to active websites where products purporting to be J. CREW products are sold, and the Complainant’s trademarks as well as a copy of the Complainant’s promotional content are displayed.
The Complainant’s further claim that the disputed domain names are being used for a counterfeiting website that apparently operates for no other purpose than phishing and collecting unauthorized personal and financial information from misled users has been convincingly argued by the Complainant and has not been refuted by the Respondent.
Indeed, according to the Complainant’s assertion, although the website purports to sell J. CREW branded clothing, any efforts to order actual products from this site will yield no result, indicating that the website is designed only to lure well-intentioned customers of the Complainant into handing over their personal financial information.
In the Panel’s view all the above not only shows that the Respondent knew of the Complainant’s trademarks when the Respondent registered the disputed domain names, but it also shows that the Respondent registered them with the intent of profiting from the confusion thus created in order either to sell non-authorized goods under the J. CREW brand or to conduct phishing activities.
This is a clear inference of bad faith registration and use of the disputed domain names.
Further inference of bad faith registration and use of the disputed domain names is given by the Respondent’s use of a false or at least incorrect postal address to register the disputed domain names.
Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain names in bad faith.
Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 <jcredacw.com> and <jcrewerqcf.com> be transferred to the Complainant.
Fabrizio Bedarida
Sole Panelist
Date: October 19, 2020