WIPO Arbitration and Mediation Center

The Complainant is Jones Apparel Group, Inc of 1411 Broadway, New York, NY 10018, United States of America.

The Respondent is Jones Apparel Group.com of Prala 8, Bolivia, ch 31235, Bolivia.

The domain name at issue is:
<jonesapparelgroup.com>

and the Registrar is:
Network Solutions, Inc

The WIPO Arbitration and Mediation Center [the Center] received the Complaint on August 16, 2001, [electronic version] and on August 17, 2001 [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], 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]. The Complainant made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is August 30, 2001.

On August 20, 2001, the Center transmitted via email to Network Solutions, Inc., a request for registrar verification in connection with this case and on August 21, 2001, Network Solutions, Inc transmitted by email to the Center Network Solutions' verification Response confirming that the registrant is Jones Apparel Group.com and that the contact for both administrative and billing purposes is atte jonesapparelgroup.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on August 27, 2001 to:

postmaster@jonesapparelgroup.com;
jonesapparelgroup.com@HN.NU;
jonesapparelgroup@MG.NU; and to
jones apparelgroup.com@MG.NU

this Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by September 16, 2001. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to:

Jones Apparel Group.com
Prala 8
Bolivia, ch 31235
Bolivia

atte jonesapparelgroup
Pral 70
Bolivia, ch 31235
Bolivia

jonesapparelgroup
Ocaloyo 12
Trinidad, sc 15233
Bolivia

and to

tter jonesapparelgroup.com
Pralb/Prolb 24
Bolivia, Ch. 31235
Bolivia

No Response was received from the Respondent by the due date of September 16, 2001. On September 18, 2001, Notice of Respondent Default was sent to the Complainant and to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings. No reply by the Respondent to the Notification of the Respondent's Default was received.

On September 19, 2001, the Center received a Supplemental Complaint with exhibits A to H. This further communication was also copied by the Complainant to the Respondent using the same contact details and methods as were used by the Center for Notification of Complaint and Commencement of the Administrative Proceedings. No Response to the Supplemental Complaint has been received from the Respondent.

Should the Supplemental Complaint be submitted? Whilst there is no specific provision in the Rules for permitting a Complainant to make a supplementary filing, the Panel has a discretion and shall ensure that each Party is given a fair opportunity to present its case. Decisions in other administrative proceedings under the Policy have identified the limited circumstances in which supplemental filings should be admitted. Each case must, however, depend upon its particular facts.

In this particular case, the Complainant has filed an earlier Complaint against the same Respondent on May 31, 2001. That Case [No. D2001-0719] was rejected by the Panel for reasons which will be discussed below. Apart from the Respondent's address in Bolivia, the Panel in that case stated that nothing further was known about the Respondent, who failed to file a Response.

In relation to the Complaint in this administrative proceeding, the Complainant explains that repeated attempts to contact the Respondent in Bolivia at the postal address, email address and telephone numbers given as contact information to Network Solutions, have all been unsuccessful. Two of the three working telephone numbers listed in Bolivia were answered by individuals who claimed to be totally unaware that their number was listed as having anything to do with the Respondent. The Respondent's email address contains the extension .nu, which the Complaint explains is listed as an Internet sponsor based in Alofi Niue, a tiny island in the South Pacific. The Complaint concludes that there is no basis for assuming that the Respondent has any ties with Bolivia and that the Respondent has no interest in providing contact information to anyone.

The Supplemental Complaint is the fruit of further investigations by the Complainant from which they claim to have discovered a pattern of conduct by the Respondent of registering well-known third party trademarks as domain names so as to prevent those trademark owners from reflecting their marks in corresponding domain names. This information has been obtained by digging into other domain name registrants giving technical, billing and administrative contacts with either of the email address extensions mg.nu or hn.nu. This information goes to satisfying the requirements of paragraphs 4a(ii) and (iii) of the Policy and is of assistance to the Panel in making its Decision in this case. Therefore, in the somewhat unusual circumstances of this case, the Panel will admit the Supplemental Complaint.

In normal circumstances, the Panel would afford the Respondent additional time to address the Supplemental Complaint. However, in this case the Panel does not consider this to be necessary. The Respondent defaulted in filing a Response in Case No. D2001-0719 and it has also defaulted in this case. There is no likelihood that it will respond to the Supplemental Complaint either.

On October 2, 2001, having received on October 1, 2001, Mr. David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. David Perkins was formally appointed as the Sole Panelist. The Projected Decision Date was October 16, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Supplementary Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from the Respondent.

4.1 The Complainant's Business

The Complainant is a leading designer and marketer of branded apparel, footwear and accessories. It trades under the name Jones Apparel Group and a number of registered trademarks [see paragraph 4.2 below]. The Complainant was founded in 1970. It currently has 5 product categories, namely sportswear; suits and dresses; shoes; fashion accessories and jewellery. Apart from its own house brand JONES NEW YORK, the Complainant has other house brands including EVAN-PICONE: NINE WEST: RENA ROWAN: TODD OLDHAM: EASY SPIRIT; and ENZO ANGIOLINI. The Complainant also retails well known third party brands including LAUREN BY RALPH LAUREN: RALPH BY RALPH LAUREN: POLO JEANS and TOMMY HILFIGER.

The Complainant currently has 32 Licence Agreements under which independent licensees sell a variety of products under the JONES APPAREL mark in Canada and the United States. The Complainant also has 3 wholly owned subsidiaries in Mexico, certain of its trademarks are registered in South America and its products are sold throughout Latin America including in Bolivia.

In 1991, the Complainant became a publicly listed company on the New York Stock Exchange. The Complainant currently employs over 17,000 people worldwide. Its Year 2000 Accounts show sales in excess of US$4.1 billion and advertising for its various labels topping US$3 million.

The Complaint exhibits extensive evidence of the Complainant's use of the JONES APPAREL GROUP mark as its trading name, unsolicited Press Coverage in 1999-2000, where the JONES APPAREL GROUP name is prominently featured, and hits for JONESAPPARELGROUP on websites based in various countries appearing in languages including Russian, Spanish, French and Chinese as well as English.

4.2 The Complainant's Trade Marks

The Complainant exhibits what it refers to as its Jones Family of Marks in the United States, brief particulars of which are set out below. These are owned by the Complainant or by its wholly owned subsidiary, Jones Investment Co. Inc.

However, for the purposes of this Complaint the Complainant relies on common law trademark rights in its trading name JONES APPAREL GROUP, asserting that those rights subsist by reason of its 30 years trading under and by reference to that name and mark, the extent and knowledge of that mark being evidenced by the activities described above.

4.3 The Complainant's Domain Name

The Complainant also maintains a marketing presence on the Internet through its website at <jny.com>, which currently records some 200,000 hits per year. The name and mark JONES APPAREL GROUP features prominently at the top of the first page of that website. Further, the Complainant's products are also sold on the Internet web sites of various retailers, including Macy's and Bloomingdale's.

4.4 In the absence of a Response, little is known of the Respondent. The domain name in issue was registered on April 5, 2001. That name does not resolve to an active website and there is no evidence of its being used. However, the Complainant's additional investigations set out in the Supplemental Complaint reveal the following:

- the same telephone number as for the Billing Contact for the <jonesapparelgroup.com> domain name appears for the registrant of the <minolta-bolivia.com> domain name, where the registrant is listed as Nadine Import of Cochabamba, Bolivia,

- the same addresses as for the Registrant and the Administrative and Technical Contacts and the same telephone numbers as for the Administrative and Billing Contacts for <jonesapparelgroup.com> appear for the registrant of the <garfieldonline.com> domain name,

- the same addresses for the Registrant and the Administrative and Technical Contacts and the same telephone numbers for the Administrative and Billing Contacts for <jonesapparelgroup.com> appear for the Administrative and Billing Contacts for the registrant of the <audoboncenter.com> domain name,

- the .nu sponsoring organisation in Alohi, Niue lists an Administrative Contact in Alofi, Niue and a Technical Contact in Massachusetts.

4.5 The Vice President of Minolta Corporation has stated on affidavit that Minolta operates the <minoltausa.com> domain name and that the <minolta-bolivia.com> domain name and website is neither registered to nor authorised by Minolta despite the use of the MINOLTA trademark and logo at that site.

4.6 In NAF Case No. F97328, Paws Inc., owners of the famous GARFIELD trademark, succeeded in obtaining transfer of the <garfieldonline.com> domain name which had been registered without its knowledge or authorisation.

4.7 Nadine Import of Cochabamba, Bolivia, registrant of the <minolta-bolivia.com> domain name have stated in a letter to the Complainant dated June 12, 2001, that the telephone number listed for their Administrative and Billing Contact does belong to them but they have nothing to do with the <jonesapparelgroup.com> domain name. This is the same telephone number which is listed for the Billing Contact for the domain name in issue, the Billing Contact for <garfieldonline.com> and the Billing Contact for <audoboncenter.com>.

5.1 The Complainant

The Complainant's case is that the domain name in issue is identical to its common law trade mark rights in JONES APPAREL GROUP, that the Respondent has no rights or legitimate interests in respect of that trade mark, which it has registered and used in bad faith.

5.1.1 The Complainant's earlier case against the Respondent [WIPO Case No. D2001-0719] was rejected for the Complainant's failure even to plead the existence of common law trademark rights in the name and mark JONES APPAREL GROUP. The Panel in that case, quite rightly, found no evidence to show that the Jones Family of Marks [the US registrations are listed in paragraph 4.2 above] could give rise to confusing similarity with the domain name in issue, the only common feature between that domain name and those registered marks being the common surname, JONES.

5.1.2 The evidence summarised in paragraph 4.1 above is now sufficient to establish common law rights in the name and mark JONES APPAREL GROUP. The Complaint cites the Jeanette Winterson [WIPO Case No. D2000-0235]; the Bill Withers [WIPO Case No. D2000-1621] and the Marty Rodriguez Real Estate [WIPO Case No. D2000-1468] Decisions to demonstrate that common law trademark rights have been held to apply under the Policy where the Complainant's name is particularly well known. The obvious difference between this Case and those Decisions is that here we are dealing with common law trade mark rights asserted by a trading company, whereas the Decisions cited concerned the reputation of 3 individuals, Winterson an author, Withers a singer, and Rodriguez one of the world's top real estate agents. The principle is, however, the same and the test is as stated by the Panel in the earlier Decision [Case No. D2001-0719], namely:

In order to establish some common law interest, the Complainant must establish that it has some kind of reputation that inheres in the common law marks, or that the marks are well-known within a region, or some other indication that the common law would recognise that the Complainant has rights in the mark.

5.1.3 In the absence of a Response, there is no evidence of, for example, any of the circumstances set out in paragraph 4c of the Policy which would demonstrate a Respondent's rights or legitimate interests in the domain name. Further, the Complainant has not licensed or otherwise authorised the Respondent to use the JONES APPAREL GROUP trademark.

5.1.4 As further evidence of a lack of rights or legitimate interests in the domain name in issue, the Complainant points to the following:

- Its name and mark, JONES APPAREL GROUP, is so distinctive that the Respondent can have had no legitimate reasons to register that mark as a domain name.

- The Complainant's trade worldwide is such that the Respondent could not credibly assert ignorance of the JONES APPAREL GROUP name, which [as stated in paragraph 4.1 above] is known in Latin America, including Bolivia, by virtue of both the Complainant's trading in that geographic area and the existence of various of the Jones Family of Marks which are registered throughout Latin America.

5.1.4 The Panel relies upon a number of factors.

First, the assertion that the Respondent has no rights or legitimate interests in the domain name in issue.

Second, that the concept of a domain name being used in bad faith is not limited to positive action; inaction is within the concept [the Telstra case, WIPO Case No. D2000-0003]. Hence, the fact that the domain name in issue is not apparently used in relation to an active website can be an indicia of bad faith.

Third, the existence of the domain name in issue has prevented the Complainant from reflecting its JONES APPAREL GROUP mark in a corresponding domain name. Here, as noted in paragraph 4.3. above, the Complainant is obliged to use the <jny.com> domain name. As to pattern of conduct, the Complainant points to the evidence submitted in the Supplemental Complaint [see paragraphs 3 and 4.4. above].

Fourth, the Respondent has taken active steps to conceal its true identity by providing what appear to be false contact details in breach of its Registration Agreement with Network Solutions.

Fifth, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by infringing the Complainant's common law trademark rights, passing-off or unfair competition.

6.1 The Policy paragraph 4a provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

- that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no rights or legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

6.2 The Policy paragraph 4c sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the domain name in issue.

6.3 The Policy paragraph 4b sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraphs 4b and 4c of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognises that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

6.5 First, the issue of the Complainant's rights to the name and mark JONES APPAREL GROUP. Obviously, the individual constituents of the Complainant's mark - namely, JONES; APPAREL; and GROUP - are not themselves sufficiently distinctive to constitute a trademark. But, taken together and used over the past 30 years to the extent demonstrated by the evidence [summarised in paragraph 4.1 above] the Panel is satisfied that the Complainant succeeds in showing common law trademark rights in the composite mark JONES APPAREL GROUP. The domain name in issue is identical to that mark and the Complaint succeeds in establishing the first requirement of the Policy [paragraph 4a(i)].

6.6 In default of a Response, there is no evidence that any of the circumstances set out in paragraph 4c of the Policy could apply in this case. There is no evidence of actual use or demonstrable preparations by the Respondent to use the domain name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent has been commonly known by the domain name. Nor is there evidence of the Respondent making fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademark. Indeed, it is difficult to see what bona fide intent the Respondent could have had when registering the domain name.

6.7 The Panel, therefore, finds that the Complainant has made out its case under paragraph 4a(ii) and satisfied the second requirement of the Policy.

6.8. It is not necessary to repeat the factors relied upon by the Complainant [see paragraph 5.1.4 above]. The Panel considers that they are all well made and that, consequently, the Complaint satisfies the twin requirements of paragraph 4a(iii) of the Policy.

6.9 The Panel shares the view expressed in the Decision in Case No. D2001-0719:

There is, I think, little question that the Respondent has been an abusive registrant. While many things are possible, it strains credibility to suggest that it has a legitimate interest in such a distinctive and unusual name as <jonesapparelgroup.com>.

6.10 Re-Litigating the Complaint

6.10.1 Finally, the question arises as to whether this Complaint should be denied applying the general principle that a case should not be litigated except where certain limited conditions apply. As stated, in paragraph 5.1.1 above, the Complaint in WIPO Case No. D2001-0719 was denied for the Complainant's failure adequately to plead trademark rights in the JONES APPAREL GROUP trademark.

6.10.2 What do the cases say? Those which the Panel has considered are as follows:

- Parker Hannifin Corporation .v. East Bay Website Company [AF Case Nos. 0287 and 0587]. Here the earlier decision rejected the Complaint for failure to allege an actual bad faith use by the Respondent. The first decision stated that the rejection was without prejudice to re-filing.

- Grove Broadcasting Co Ltd. v. Telesystems Communications Limited [WIPO Case Nos. D2000-0158 and D2000-0703]. This case involved a second attempt by the Complainant to satisfy paragraph 4a(ii) of the Policy. The Panelist in the Second Case, Sir Ian Barker, referred to paragraph 15(a) of the Rules which permits Panelists to decide a Complaint in accordance with, inter alia, any rules and principles of law that it deems applicable. He then applied the common law principle that, once a party has been given a defended hearing in a Court and a decision rendered, then a case cannot be re-litigated unless either (a) the decision is overturned on appeal or (b) limited grounds for rehearing or reconsideration by the First Instance Court have been established. Such limited grounds include;

- serious misconduct by a judge, juror, witness or lawyer;

- perjured evidence being offered to the Court;

- the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; and

- a breach of natural justice / due process.

With regard to the admission of new evidence, Sir Ian referred to the English Court of Appeal case of Ladd v. Marshall [1954], 3All ER 745 as establishing the principle that;

- first, it must be shown that the evidence could not have been obtained with reasonable diligence for use at trial;

- second, that the new evidence must be such that, if given, it would probably have an important influence on the result of the case, although it need not be decisive; and

- third, the evidence must be apparently credible, although it need not be incontrovertible.

In the Grove Broadcasting case, the First Panelist went out of his way to assist the Complainant when he made an order requesting further submissions, even indicating the sort of evidence needed to prove the second criterion of the Policy [paragraph 4a(ii)]. In the Second Complaint, the Complainant sought to supply the information which the First Panelist had indicated was required but which the Complainant had failed to supply. The Complainant could not bring himself within the Ladd v. Marshall criteria, Sir Ian holding that the evidence could with reasonable diligence have been obtained for the First Complaint. The Second Complaint was, therefore, rejected as inadmissible.

6.10.3 Creo Products Inc .v. Website in Development [WIPO Case Nos. D2000-0160 and D2000-1490]. Here, the First Complaint was denied for failure to meet the requirements of paragraph 4a(iii) of the Policy. In the Second Complaint, the Complainant contended that events and additional investigations had taken place since the First Decision which disproved the Respondent's assertions in the First Complaint and established the Respondent's bad faith. The Second Panelist, Andrew Christie, quoted Sir Ina Barker's approach in the Grove Broadcasting case with approval. The issue of whether a Complaint should be permitted to be re-filed should

… be resolved by logic, by common sense and by analogy with general principles of law relating to re-litigation of cases.

He defined two classes of cases. First, refiled Complaints that concern the act which formed the basis of the original Complaint. Whilst the 4 grounds proposed by Sir Ian Barker were not exhaustive, the Panelist in the Creo Products case considered that the categories of grounds should be limited. Second, refiled Complaints that concern acts which have occurred subsequent to the decision on the original Complaint. What Andrew Christie termed as

…truly a new action under the Uniform Policy.

He then set out general principles which he considered should be applied, on a case-by-case basis, when determining the admissibility of a refiled Complaint, be it of the first or second class. They were:

- First, the burden of establishing that the refiled Complaint should be entertained under the Uniform Policy rests on the refiling Complainant.

- Secondly, that burden is high.

- Thirdly, the grounds which allegedly justify entertaining the refiled Complaint should be clearly identified by the refiling Complainant.

- Fourthly, the dispute resolution service provider with whom the refiled Complaint has been filed has responsibility for determining if, prima facie, the refiling Complainant has pleaded grounds which might justify entertaining the refiled Complaint.

- Fifthly, where the dispute resolution service provider determines that, prima facie, the refiling Complainant has pleaded grounds which might justify entertaining the refiled Complaint, the refiled Complaint should be submitted to an administrative panel for determination of whether the refiled Complaint should be entertained (and, if so, of the merits of the claim under the Uniform Policy).

In the Creo Products case, the Panel found that the refiled Complaint should be admitted because it was based both on new evidence in relation to the acts which formed the basis of the first Complaint and on acts which had occurred subsequently.

6.10.4 Furrytails Ltd. .v. Andrew Mitchell [NAF Case No. 96532] (First Complaint) and [WIPO Case No. D2001-0857] (Second Complaint). The three-member Panel, which included Philip Argy who decided the first Creo Products case and Andrew Christie who decided the refiled Creo Products case, applied the approach taken in the latter decision and that of Sir Ian Barker in the Grove Broadcasting case. On the facts, the Complainant's second bite at the cherry in Furrytails was not admitted, the Panel finding that the refiled Complaint was merely based upon subsequent acts which were either a repetition of, or substantially the same as, the acts on which the First Complaint was based.

6.10.5 Talal Abu-Ghazaleh International & Others .v. Fadi Mahassel [WIPO Case Nos. D2000-1479 and D2001-0907]. The Panelist, Prof. William Cornish, referred to and approved the principles laid down in Grove Broadcasting and Creo Products cases but held that this dispute was not, on the facts, a refiled Complaint of the types confronted on those cases.

6.10.6 How then should this Complaint be treated? First, it does not fall fair and square into any of the four limited grounds set out in Grove Broadcasting. Second, that is not the end of the matter since those grounds were not advanced as exhaustive. Third, on its facts this case falls into the category - identified by Andrew Christie in Creo Products - where the Panel considers that the Complainant has not proved that the First Complaint satisfies all the requirements of the Policy but that it is highly likely the Complainant could do so upon the submission of further arguments and/or evidence. In such a situation, Mr. Christie proposes that, rather than dismissing the First Complaint without prejudice as in the Parker Hannifin case - with which he disagreed - the better approach is to use Rule 12 and for the Panel to request further statements or documents from either or both of the parties.

6.10.7 But, that is not what happened in this case. However, in dismissing the First Complaint in this case under paragraph 4a(i) of the Policy, the Panelist made it abundantly clear that he felt the equities lay strongly with the Complainant, there being, in his mind,

…little question that the Respondent has been an abusive registrant.

Here, there is absolutely no prejudice to the Respondent in allowing this Second Complaint.

The Respondent has failed to submit a Response either to the First Complaint or to this Second Complaint. This is not a question of the Complainant refiling the Complaint in the hope of finding a more sympathetic Panel as in the Furrytails case. It is concerned with correcting an inadequately pleaded case in the First Complaint so as to establish the Complainant's trademark rights in the JONES APPAREL GROUP trademark. The Panelist in the First Complaint did not suggest the Complainant submit additional evidence pursuant to Rule 12. Instead, he gave the green light in the clearest possible way to refiling the Complaint to correct the omissions in the First Complaint.

6.10.8 Therefore, without seeking to establish a fifth ground for overcoming the res judicata barrier, the Panel in this case admits the refiled Complaint in circumstances where;

- the First Complaint failed for want of evidence that the Complainant could and should have properly submitted in relation to the threshold requirement of establishing trademark rights;

- the Panelist in the First Complaint did not invite the Complainant to rectify that omission under Rule 12;

- but at the same time indicated that but for that omission he would have found against a clearly abusive Respondent; and

- the Respondent fails to respond either to the First Complaint or to the refiled Second Complaint.

Although this does not satisfy Mr. Christie's requirement of being "… truly a new action", it is nevertheless clearly within the common sense approach he advocates to cases of this nature. The additional detective work set out in the Supplemental Complaint with the refiled Complaint only serves to emphasise the bad faith of the Respondent. Further, this Decision does not facilitate forum shopping of the Furrytails type which this Panel agrees should not be permitted.

For all the foregoing reasons, the Panel decides that the Complainant has proved each of the three elements of paragraph 4a of the Policy. Accordingly, the Panel requires that the domain name <jonesapparelgroup.com> be transferred to the Complainant.

David Perkins
Sole Panelist

Dated: October 16, 2001