WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

J. Crew International, Inc. v. Super Privacy Service LTD c/o Dynadot / Lin Yanxiao

Case No. D2021-1566

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 Respondent is Super Privacy Service LTD c/o Dynadot, United States / Lin Yanxiao, China.

2. The Domain Name and Registrar

The disputed domain name <jcrewrewards.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2021. On May 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2021, 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 May 26, 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 May 26, 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 May 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2021.

The Center appointed Kaya Köklü as the sole panelist in this matter on July 19, 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, which roots date back to the year 1983, is a retailer of fashion apparel and accessories with its registered seat in the United States.

The Complainant is the owner of the J. CREW and J. CREW REWARDS trademarks, which are protected in numerous jurisdictions around the world. The Complainant is, among others, the owner of the United States Trademark Registration Nos. 1308888 for J. CREW (registered on December 11, 1984) and 5744918 for J. CREW REWARDS (registered on May 7, 2019), (Annex 3 to the Complaint).

The Complainant also owns and operates its official website at <jcrew.com> (Annex 5 and 6 to the Complaint).

The Respondent is an individual from China.

Screenshots, as provided by the Complainant in Annex 11 to the Complaint, show that the disputed domain name previously, among others, resolved to click through websites with partly malicious content. At the time of the decision, the disputed domain name does not resolve to an active website anymore.

Prior to initiation of the administrative proceedings, the Complainant tried in vain to solve the dispute amicably by letters sent to the Respondent (Annex 8 and 9 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

The Complainant is of the opinion that the disputed domain name is confusingly similar to its J. CREW and J. CREW REWARDS trademarks.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is rather argued that the disputed domain name falsely suggests that there is some official or authorized link between the Complainant and the Respondent.

Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly argues that the Respondent must have been well aware of the Complainant’s J. CREW and J. CREW REWARDS trademarks, when registering and using the disputed domain name.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark 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 has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.

A. Identical or Confusingly Similar

To begin with, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights in J. CREW and J. CREW REWARDS (Annex 3 to the Complaint).

The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered J. CREW and J. CREW REWARDS trademarks. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the mere suppression of punctuation marks such as hyphens or periods would not prevent a finding of confusing similarity.

In the present case, the Panel notes that disputed domain name incorporates a confusingly similar version of the Complainant’s J. CREW and J. CREW REWARDS trademarks. Beyond the omitted punctuation, the disputed domain name would be identical to the Complainant’s J. CREW REWARDS trademark.

In view of the Panel, this makes the Complainant’s J. CREW and J. CREW REWARDS trademarks still recognizable within the disputed domain name. Hence, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s J. CREW and J. CREW REWARDS trademarks.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.

While the burden of proof on this element remains with the Complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).

With its Complaint, the Complainant has provided prima facie evidence that the Respondent has no rights or legitimate interests, particularly no license to use the Complainant’s J. CREW and J. CREW REWARDS trademarks in a confusingly similar way within the disputed domain name. In this regard, the Panel acknowledges that the nature of the disputed domain name carries a risk of implied affiliation or association, as stated in section 2.5.1 of the WIPO Overview 3.0.

In the absence of a Response, the Respondent has failed to demonstrate any of the nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or provide any other evidence of a right or legitimate interest in the disputed domain name. The Panel is rather convinced that the Respondent deliberately has chosen the disputed domain name in order to cause confusion with the Complainant’s trademark among Internet users.

Bearing in mind that the Respondent used the disputed domain name to redirect users to click through websites with partly malicious content (Annex 11 to the Complaint), the Panel does not see sufficient basis for assessing any kind of bona fide offering of goods or services by the Respondent.

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

C. Registered and Used in Bad Faith

It is obvious to the Panel that at the date of registration of the disputed domain name, the Respondent was well aware of the Complainant’s J. CREW and J. CREW REWARDS trademarks.

The Panel is further convinced that the Respondent deliberately registered a domain name confusingly similar to the Complainant’s trademark in order to create confusion among Internet users for illegitimate and bad faith purposes. In fact, the Panel cannot conceive of any plausible and legitimate use of the disputed domain name that would be in good faith, except with an authorization of the Complainant.

Further, the Respondent’s failure to respond to the Complaint supports the conclusion that it has registered and is using the disputed domain name in bad faith.

Taking all circumstances of the case into consideration, the Panel is convinced that this is a typical cybersquatting case, which the UDRP was designed to stop.

The fact that the disputed domain name currently does not resolve to an active website does not change the Panel’s findings in this respect.

Hence, the Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

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 <jcrewrewards.com> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: August 2, 2021